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

Marginal note:Use of trademark by related companies

• 51 (1) Where a company and the owner of a trademark that is used in Canada by that owner in association with a pharmaceutical preparation are related companies, the use by the company of the trademark, or a trademark confusing therewith, in association with a pharmaceutical preparation that at the time of that use or at any time thereafter,

  • (a) is acquired by a person directly or indirectly from the company, and

  • (b) is sold, distributed or advertised for sale in Canada in a package bearing the name of the company and the name of that person as the distributor thereof,

  has the same effect, for all purposes of this Act, as a use of the trademark or the confusing trademark, as the case may be, by that owner.

• Marginal note:Where difference in composition

  (2) Subsection (1) does not apply to any use of a trademark or a confusing trademark by a company referred to in that subsection in association with a pharmaceutical preparation after such time, if any, as that pharmaceutical preparation is declared by the Minister of Health, by notice published in the Canada Gazette, to be sufficiently different in its composition from the pharmaceutical preparation in association with which the trademark is used in Canada by the owner referred to in subsection (1) as to be likely to result in a hazard to health.

• Definition of pharmaceutical preparation

  (3) In this section, pharmaceutical preparation includes

  • (a) any substance or mixture of substances manufactured, sold or represented for use in

    • (i) the diagnosis, treatment, mitigation or prevention of a disease, disorder or abnormal physical state, or the symptoms thereof, in humans or animals, or

    • (ii) restoring, correcting or modifying organic functions in humans or animals, and

  • (b) any substance to be used in the preparation or production of any substance or mixture of substances described in paragraph (a),

  but does not include any such substance or mixture of substances that is the same or substantially the same as a substance or mixture of substances that is a proprietary medicine within the meaning from time to time assigned to that expression by regulations made pursuant to the Food and Drugs Act.

Offences and Punishment

Marginal note:Sale, etc., of goods

• 51.01 (1) Every person commits an offence who sells or offers for sale, or distributes on a commercial scale, any goods in association with a trademark, if that sale or distribution is or would be contrary to section 19 or 20 and the person knows that

  • (a) the trademark is identical to, or cannot be distinguished in its essential aspects from, a trademark registered for such goods; and

  • (b) the owner of that registered trademark has not consented to the sale, offering for sale, or distribution of the goods in association with the trademark.

  • (c) [Deleted]

• Marginal note:Manufacture, etc., of goods

  (2) Every person commits an offence who manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods, for the purpose of their sale or of their distribution on a commercial scale, if that sale or distribution would be contrary to section 19 or 20 and the person knows that

  • (a) the goods bear a trademark that is identical to, or that cannot be distinguished in its essential aspects from, a trademark registered for such goods; and

  • (b) the owner of that registered trademark has not consented to having the goods bear the trademark.

  • (c) [Deleted]

• Marginal note:Services

  (3) Every person commits an offence who sells or advertises services in association with a trademark, if that sale or advertisement is contrary to section 19 or 20 and the person knows that

  • (a) the trademark is identical to, or cannot be distinguished in its essential aspects from, a registered trademark registered for such services; and

  • (b) the owner of the registered trademark has not consented to the sale or advertisement in association with the trademark.

  • (c) [Deleted]

• Marginal note:Labels or packaging

  (4) Every person commits an offence who manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, for the purpose of its sale or of its distribution on a commercial scale or for the purpose of the sale, distribution on a commercial scale or advertisement of goods or services in association with it, if that sale, distribution or advertisement would be contrary to section 19 or 20 and the person knows that

  • (a) the label or packaging bears a trademark that is identical to, or that cannot be distinguished in its essential aspects from, a registered trademark;

  • (b) the label or packaging is intended to be associated with goods or services for which that registered trademark is registered; and

  • (c) the owner of that registered trademark has not consented to having the label or packaging bear the trademark.

  • (d) [Deleted]

• Marginal note:Trafficking in labels or packaging

  (5) Every person commits an offence who sells or offers for sale, or distributes on a commercial scale, any label or packaging, in any form, if the sale, distribution or advertisement of goods or services in association with the label or packaging would be contrary to section 19 or 20 and the person knows that

  • (a) the label or packaging bears a trademark that is identical to, or that cannot be distinguished in its essential aspects from, a registered trademark;

  • (b) the label or packaging is intended to be associated with goods or services for which that registered trademark is registered;

  • (c) the owner of that registered trademark has not consented to having the label or packaging bear the trademark.

• Marginal note:Registration of trademark

  (5.1) In a prosecution for an offence under any of subsections (1) to (5), it is not necessary for the prosecutor to prove that the accused knew that the trademark was registered.

• Marginal note:Punishment

  (6) Every person who commits an offence under any of subsections (1) to (5) is liable

  • (a) on conviction on indictment, to a fine of not more than $1,000,000 or to imprisonment for a term of not more than five years or to both; or

  • (b) on summary conviction, to a fine of not more than $25,000 or to imprisonment for a term of not more than six months or to both.

• Marginal note:Limitation Period

  (7) Proceedings by way of summary conviction for an offence under this section may be instituted no later than two years after the day on which the subject-matter of the proceedings arose.

• Marginal note:Disposition order

  (8) The court before which any proceedings for an offence under this section are taken may, on a finding of guilt, order that any goods, labels, or packaging in respect of which the offence was committed, any advertising materials relating to those goods and any equipment used to manufacture those goods, labels or packaging be destroyed or otherwise disposed of.

• Marginal note:Notice

  (9) Before making an order for the destruction or other disposition of equipment under subsection (8), the court shall require that notice be given to the owner of the equipment and to any other person who, in the opinion of the court, appears to have a right or interest in the equipment, unless the court is of the opinion that the interests of justice do not require that the notice be given.

Importation and Exportation

Interpretation

Marginal note:Definitions

51.02 The following definitions apply in sections 51.03 to 51.12.

customs officer

customs officer has the meaning assigned by the definition officer in subsection 2(1) of the Customs Act. (agent des douanes)

Minister

Minister means the Minister of Public Safety and Emergency Preparedness. (ministre)

owner

owner, with respect to a protected geographical indication identifying a wine or spirit or agricultural product or food, means the responsible authority, as defined in section 11.11, for the wine or spirit or agricultural product or food identified by the indication. (propriétaire)

protected mark

protected mark means a registered trademark or a protected geographical indication. (marque protégée)

relevant protected mark

relevant protected mark means

• (a) a trademark registered for goods that is identical to, or cannot be distinguished in its essential aspects from, a trademark on such goods, including their labels or packaging, that are detained by a customs officer; or

• (b) a protected geographical indication identifying, as the case may be, a wine or spirit, or an agricultural product or food of a category set out in the schedule, that is identical to, or cannot be distinguished in its essential aspects from, an indication on such a wine or spirit or such an agricultural product or food, or on their labels or packaging, that is detained by a customs officer. (marque protégée en cause)

working day

working day means a day other than a Saturday or a holiday. (jour ouvrable)

Prohibition

Marginal note:No importation or exportation

• 51.03 (1) Goods shall not be imported or exported if the goods or their labels or packaging bear — without the consent of the owner of a registered trademark for such goods — a trademark that is identical to, or that cannot be distinguished in its essential aspects from, that registered trademark.

• Marginal note:Exception

  (2) Subsection (1) does not apply if

  • (a) the trademark was applied with the consent of the owner of the trademark in the country where it was applied;

  • (b) the sale or distribution of the goods or, in the case where the trademark is on the goods’ labels or packaging, of the goods in association with the labels or packaging would not be contrary to this Act;

  • (c) the goods are imported or exported by an individual in their possession or baggage and the circumstances, including the number of goods, indicate that the goods are intended only for their personal use.

  • (d) [Repealed, 2020, c. 1, s. 109]

• Marginal note:Wine or spirits

  (2.1) Wine or spirits shall not be imported or exported if they, or their labels or packaging, bear a protected geographical indication and the wine or spirits

  • (a) do not originate in the territory indicated by the indication; or

  • (b) do originate in the territory indicated by the indication but were not produced or manufactured in accordance with the law applicable to that territory.

• Marginal note:Agricultural products or food

  (2.2) An agricultural product or food of a category set out in the schedule shall not be imported or exported if it, or its label or packaging, bears a protected geographical indication and the agricultural product or food

  • (a) does not originate in the territory indicated by the indication; or

  • (b) does originate in the territory indicated by the indication, but was not produced or manufactured in accordance with the law applicable to that territory.

• Marginal note:Exception

  (2.3) Subsections (2.1) and (2.2) do not apply if

  • (a) the sale or distribution of the wine or spirit or the agricultural product or food — or, if the label or packaging of that wine, spirit or agricultural product or food bears a protected geographical indication and the sale or distribution of that wine, spirit or agricultural product or food in association with that label or packaging — would not be contrary to this Act;

  • (b) the wine or spirit or the agricultural product or food is imported or exported by an individual in their possession or baggage and the circumstances, including the number of such goods, indicate that they are intended only for the individual’s personal use.

  • (c) [Repealed, 2020, c. 1, s. 109]

• Marginal note:Customs transit or transhipment control

  (2.4) For the purposes of subsections (1), (2.1) and (2.2), goods — including wine, spirits, agricultural products or food — that, while being shipped from one place outside Canada to another, are in customs transit control or customs transhipment control in Canada are considered to have been imported for the purpose of release.

• Marginal note:Restriction

  (3) The contravention of subsection (1), (2.1) or (2.2) does not give rise to a remedy under section 53.2.