Trademarks Act (R.S.C., 1985, c. T-13)

Short Title

Marginal note:Short title

1 This Act may be cited as the Trademarks Act.

Interpretation

Marginal note:Definitions

2 In this Act,

certification mark

certification mark means a sign or combination of signs that is used or proposed to be used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard from those that are not of that defined standard, with respect to

• (a) the character or quality of the goods or services,

• (b) the working conditions under which the goods are produced or the services performed,

• (c) the class of persons by whom the goods are produced or the services performed, or

• (d) the area within which the goods are produced or the services performed; (marque de certification)

confusing

confusing, when applied as an adjective to a trademark or trade name, means, except in sections 11.13 and 11.21, a trademark or trade name the use of which would cause confusion in the manner and circumstances described in section 6; (créant de la confusion)

Convention

Convention means the Convention of the Union of Paris made on March 20, 1883 and any amendments and revisions thereof made before or after July 1, 1954 to which Canada is party; (Convention)

country of origin

country of origin means

• (a) the country of the Union in which the applicant for registration of a trademark had at the date of the application a real and effective industrial or commercial establishment, or

• (b) if the applicant for registration of a trademark did not at the date of the application have in a country of the Union an establishment as described in paragraph (a), the country of the Union where he on that date had his domicile, or

• (c) if the applicant for registration of a trademark did not at the date of the application have in a country of the Union an establishment as described in paragraph (a) or a domicile as described in paragraph (b), the country of the Union of which he was on that date a citizen or national; (pays d’origine)

country of the Union

country of the Union means

• (a) any country that is a member of the Union for the Protection of Industrial Property constituted under the Convention, or

• (b) any WTO Member; (pays de l’Union)

distinctive

distinctive, in relation to a trademark, describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them; (distinctive)

distinguishing guise

distinguishing guise[Repealed, 2014, c. 20, s. 319]

geographical indication

geographical indication means an indication that identifies a wine or spirit, or an agricultural product or food of a category set out in the schedule, as originating in the territory of a WTO Member, or a region or locality of that territory, if a quality, reputation or other characteristic of the wine or spirit or the agricultural product or food is essentially attributable to its geographical origin; (indication géographique)

Nice Classification

Nice Classification means the classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, signed at Nice on June 15, 1957, including any amendments, modifications and revisions made from time to time to which Canada is a party; (classification de Nice)

owner

owner, in relation to a certification mark, means the person by whom the defined standard has been established; (propriétaire)

package

package[Repealed, 2014, c. 32, s. 7]

person

person includes any lawful trade union and any lawful association engaged in trade or business or the promotion thereof, and the administrative authority of any country, state, province, municipality or other organized administrative area; (personne)

person interested

person interested includes any person who is affected or reasonably apprehends that he may be affected by any entry in the register, or by any act or omission or contemplated act or omission under or contrary to this Act, and includes the Attorney General of Canada; (personne intéressée)

prescribed

prescribed means prescribed by or under the regulations; (prescrit)

proposed trade-mark

proposed trade-mark[Repealed, 2014, c. 20, s. 319]

protected geographical indication

protected geographical indication means a geographical indication that is on the list kept pursuant to subsection 11.12(1); (indication géographique protégée)

register

register means the register kept under section 26; (registre)

registered trademark

registered trademark means a trademark that is on the register; (marque de commerce déposée)

registered user

registered user[Repealed, 1993, c. 15, s. 57]

Registrar

Registrar means the Registrar of Trademarks who is described in subsection 63(1); (registraire)

related companies

related companies means companies that are members of a group of two or more companies one of which, directly or indirectly, owns or controls a majority of the issued voting stock of the others; (compagnies connexes)

release

release has the same meaning as in subsection 2(1) of the Customs Act; (dédouanement)

representative for service

representative for service[Repealed, 2014, c. 20, s. 319]

sign

sign includes a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign; (signe)

trademark

trademark means

• (a) a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, or

• (b) a certification mark; (marque de commerce)

trade name

trade name means the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual; (nom commercial)

use

use, in relation to a trademark, means any use that by section 4 is deemed to be a use in association with goods or services; (emploi ou usage)

wares

wares[Repealed, 2014, c. 32, s. 7]

WTO Agreement

WTO Agreement has the meaning given to the word Agreement by subsection 2(1) of the World Trade Organization Agreement Implementation Act; (Accord sur l’OMC)

WTO Member

WTO Member means a Member of the World Trade Organization established by Article I of the WTO Agreement. (membre de l’OMC)

Reference to person

2.1 Unless the context requires otherwise, a reference to person in this Act, in relation to a trademark, includes two or more persons who, by agreement, do not have the right to use the trademark in Canada except on behalf of both or all of them.

Marginal note:When deemed to be adopted

3 A trademark is deemed to have been adopted by a person when that person or his predecessor in title commenced to use it in Canada or to make it known in Canada or, if that person or his predecessor had not previously so used it or made it known, when that person or his predecessor filed an application for its registration in Canada.

Marginal note:When deemed to be used

• 4 (1) A trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.

• Marginal note:Idem

  (2) A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

• Marginal note:Use by export

  (3) A trademark that is marked in Canada on goods or on the packages in which they are contained is, when the goods are exported from Canada, deemed to be used in Canada in association with those goods.

Marginal note:When deemed to be made known

5 A trademark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with goods or services, and

• (a) the goods are distributed in association with it in Canada, or

• (b) the goods or services are advertised in association with it in

  • (i) any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or users of the goods or services, or

  • (ii) radio broadcasts ordinarily received in Canada by potential dealers in or users of the goods or services,

and it has become well known in Canada by reason of the distribution or advertising.

Marginal note:When mark or name confusing

• 6 (1) For the purposes of this Act, a trademark or trade name is confusing with another trademark or trade name if the use of the first mentioned trademark or trade name would cause confusion with the last mentioned trademark or trade name in the manner and circumstances described in this section.

• Marginal note:Confusion — trademark with other trademark

  (2) The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

• Marginal note:Confusion — trademark with trade name

  (3) The use of a trademark causes confusion with a trade name if the use of both the trademark and trade name in the same area would be likely to lead to the inference that the goods or services associated with the trademark and those associated with the business carried on under the trade name are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

• Marginal note:Confusion — trade name with trademark

  (4) The use of a trade name causes confusion with a trademark if the use of both the trade name and trademark in the same area would be likely to lead to the inference that the goods or services associated with the business carried on under the trade name and those associated with the trademark are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

• Marginal note:What to be considered

  (5) In determining whether trademarks or trade names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including

  • (a) the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;

  • (b) the length of time the trademarks or trade names have been in use;

  • (c) the nature of the goods, services or business;

  • (d) the nature of the trade; and

  • (e) the degree of resemblance between the trademarks or trade names, including in appearance or sound or in the ideas suggested by them.