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

Marginal note:Continued use — wines or spirits

• 11.17 (1) Section 11.14 does not apply to the continued and similar use of a protected geographical indication identifying a wine or spirit, or any translation of it in any language, by a Canadian who has used it in a continuous manner in relation to any business or commercial activity in respect of goods or services

  • (a) in good faith before April 15, 1994; or

  • (b) for at least 10 years before that date.

• Marginal note:Definition of Canadian

  (2) For the purposes of subsection (1), Canadian means

  • (a) a Canadian citizen;

  • (b) a permanent resident as defined in subsection 2(1) of the Immigration and Refugee Protection Act who has been ordinarily resident in Canada for not more than one year after the day on which they first became eligible to apply for Canadian citizenship; and

  • (c) an entity that carries on business in Canada.

• Marginal note:Use — certain cheeses

  (3) Section 11.15 does not apply to the use, in connection with a business, of any of the indications “Asiago”, “Feta”, “Φέτα” (Feta), “Fontina”, “Gorgonzola” or “Munster”, or any translation of them in any language, by a person if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of cheeses, as set out in the schedule, before October 18, 2013.

• Marginal note:Use with qualifying term

  (4) Section 11.15 does not apply to the use, in connection with a business, of any of the indications “Asiago”, “Feta”, “Φέτα” (Feta), “Fontina”, “Gorgonzola” or “Munster”, or any translation of them in any language, in respect of an agricultural product or food of the category of cheeses, as set out in the schedule, if

  • (a) a qualifying term such as “kind”, “type”, “style” or “imitation” is used in connection with the indication or the translation; and

  • (b) the geographical origin of the cheese is clearly displayed on the cheese or on the packaging in which it is distributed, or is in any other manner associated with the cheese so that notice of the cheese’s origin is given to the person to whom the cheese is transferred.

• Marginal note:Use of the indication “Beaufort”

  (5) Section 11.15 does not apply to the use, in connection with a business, of the indication “Beaufort”, or any translation of it in any language, by a person if

  • (a) the person or their predecessor in title used the indication or the translation for at least 10 years before October 18, 2013 in relation to any business or commercial activity in respect of an agricultural product or food of the category of cheeses, as set out in the schedule; or

  • (b) the person uses the indication or the translation in relation to any business or commercial activity in respect of a cheese product that was produced in the proximity of the Beaufort Range on Vancouver Island in British Columbia.

• Marginal note:Use of the indication “Nürnberger Bratwürste”

  (6) Section 11.15 does not apply to the use, in connection with a business, of the indication “Nürnberger Bratwürste”, or any translation of it in any language, by a person, if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of fresh, frozen and processed meats, as set out in the schedule, for at least five years before October 18, 2013.

• Marginal note:Use of the indication “Jambon de Bayonne”

  (7) Section 11.15 does not apply to the use, in connection with a business, of the indication “Jambon de Bayonne”, or any translation of it in any language, by a person, if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of dry-cured meats, as set out in the schedule, for at least 10 years before October 18, 2013.

• Marginal note:Restriction

  (8) For the purposes of subsections (3) and (5) to (7), no person is a predecessor in title if they only transferred the right to use the indication or the translation, or both.

Marginal note:Exception for disuse

• 11.18 (1) Sections 11.14 and 11.15 and paragraphs 12(1)(g) to (h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of a protected geographical indication, or any translation of it in any language, if the indication has ceased to be protected by the law applicable to the territory in which the wine or spirit or the agricultural product or food is identified as originating, or has fallen into disuse in that territory.

• Marginal note:Exceptions for customary names

  (2) Sections 11.14 and 11.15 and paragraphs 12(1)(g) to (h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of a protected geographical indication that is identical to

  • (a) a term customary in common language in Canada as the common name for the wine or spirit or the agricultural product or food;

  • (b) a customary name of a grape variety existing in Canada on or before the day on which the WTO Agreement comes into force; or

  • (c) a customary name of a plant variety or an animal breed existing in Canada on or before the day on which the indication is entered on the list kept under subsection 11.12(1).

• Marginal note:Exception for translation — customary term

  (2.1) Sections 11.14 and 11.15 and paragraphs 12(1)(g) to (h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of a translation of a protected geographical indication that is identical to a term customary in common language in Canada as the common name for a wine or spirit or an agricultural product or food.

• Marginal note:Exception for common names for wines

  (3) Subsections 11.14(1) to (3) and paragraph 12(1)(g) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of the following indications in respect of wines:

• Marginal note:Exception for common names for spirits

  (4) Subsections 11.14(4) to (6) and paragraph 12(1)(h) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of the following indications in respect of spirits:

  • (a) [Repealed, SOR/2004-85]

  • (b) Marc;

  • (c) [Repealed, SOR/2004-85]

  • (d) Sambuca;

  • (e) Geneva Gin;

  • (f) Genièvre;

  • (g) Hollands Gin;

  • (h) London Gin;

  • (i) Schnapps;

  • (j) Malt Whiskey;

  • (k) Eau-de-vie;

  • (l) Bitters;

  • (m) Anisette;

  • (n) Curacao; and

  • (o) Curaçao.

• Marginal note:Exception for common names for agricultural products or food

  (4.1) Section 11.15 and paragraph 12(1)(h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of the following indications in respect of an agricultural product or food:

  • (a) Valencia Orange;

  • (b) Orange Valencia;

  • (c) Valencia;

  • (d) Black Forest Ham;

  • (e) Jambon Forêt Noire;

  • (f) Tiroler Bacon;

  • (g) Bacon Tiroler;

  • (h) Parmesan;

  • (i) St. George Cheese;

  • (j) Fromage St-George; and

  • (k) Fromage St-Georges.

• Marginal note:Spelling variations

  (4.2) For purposes of subsection (4.1), the indications set out in paragraphs (f) and (g) include spelling variations of those indications in English and French.

• Marginal note:Exception — “county”

  (4.3) Section 11.15 and paragraph 12(1)(h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of the term “county”, or any translation of it in any language, in association with an agricultural product or food if that term is used to refer to the name of a territorial division or an administrative division of a territory.

• Marginal note:Powers of Governor in Council

  (5) The Governor in Council may, by order, amend any of subsections (3) to (4.1) by adding or deleting an indication in respect of a wine or spirit or an agricultural product or food, as the case may be.

Marginal note:Exception for failure to take proceedings

• 11.19 (1) Sections 11.14 and 11.15 do not apply to the adoption or use of a trademark by a person if no proceedings are taken to enforce those sections in respect of that person’s use or adoption of the trademark within five years after use of the trademark by that person or that person’s predecessor-in-title has become generally known in Canada or the trademark has been registered by that person in Canada, unless it is established that that person or that person’s predecessor-in-title first used or adopted the trademark with knowledge that such use or adoption was contrary to section 11.14 or 11.15, as the case may be.

• Marginal note:Proceedings after five years

  (2) In proceedings respecting a registered trademark commenced after the expiry of five years from the earlier of the date of registration of the trademark in Canada and the date on which use of the trademark by the person who filed the application for registration of the trademark or that person’s predecessor in title has become generally known in Canada, the registration must not be expunged or amended or held invalid on the basis of any of paragraphs 12(1)(g) to (h.1) unless it is established that the person who filed the application for registration of the trademark did so with knowledge that the trademark was in whole or in part a protected geographical indication.

Marginal note:Acquired rights — wines

• 11.2 (1) Section 11.14 and paragraph 12(1)(g) do not prevent the adoption, use or registration as a trademark in association with a wine of a protected geographical indication, or any translation of it in any language, by a person if they have, in good faith, before the later of January 1, 1996 and the day on which protection of the indication in the territory indicated by the indication begins,

  • (a) filed an application in accordance with section 30 for, or secured the registration of, the trademark in association with a wine; or

  • (b) acquired rights through use to the trademark in respect of a wine.

• Marginal note:Acquired rights — spirits

  (2) Section 11.14 and paragraph 12(1)(h) do not prevent the adoption, use or registration as a trademark in association with a spirit of a protected geographical indication, or any translation of it in any language, by a person if they have, in good faith, before the later of January 1, 1996 and the day on which protection of the indication in the territory indicated by the indication begins,

  • (a) filed an application in accordance with section 30 for, or secured the registration of, the trademark in association with a spirit; or

  • (b) acquired rights through use to the trademark in respect of a spirit.

• Marginal note:Acquired rights — agricultural products and food

  (3) Section 11.15 and paragraph 12(1)(h.1) do not prevent the adoption, use or registration as a trademark in association with an agricultural product or food of a category set out in the schedule of a protected geographical indication, or any translation of it in any language, by a person if they have, in good faith, before the day on which a statement by the Minister is published under subsection 11.12(2) or (2.1) in respect of the indication or translation,

  • (a) filed an application in accordance with section 30 for, or secured the registration of, the trademark in association with an agricultural product or food belonging to the same category; or

  • (b) acquired rights through use to the trademark in respect of an agricultural product or food belonging to the same category.