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

Marginal note:Removal from the list

• 11.21 (1) On the application of any person interested, the Federal Court has exclusive jurisdiction to order the Registrar to remove an indication or a translation from the list of geographical indications kept under subsection 11.12(1) on any of the grounds set out in subsection (2) or (3), as the case may be.

• Marginal note:Grounds — indication

  (2) The grounds for the removal of an indication are

  • (a) that, on the day on which the application is made, the indication is not a geographical indication;

  • (b) that, on the day on which the application is made, the indication is identical to a term customary in common language in Canada as the common name for the wine or spirit or the agricultural product or food;

  • (c) that, except in the case of an indication identifying a wine or spirit or an agricultural product or food as originating in Canada, when the statement by the Minister in respect of the indication is published or on the day on which the application is made, the indication is not protected by the law applicable to the territory in which the wine or spirit or the agricultural product or food is identified as originating;

  • (d) in the case of an indication identifying an agricultural product or food, that, when the statement by the Minister is published, the indication is confusing with

    • (i) a registered trademark, or

    • (ii) a trademark that was previously used in Canada and that has not been abandoned; or

  • (e) in the case of an indication identifying an agricultural product or food, that

    • (i) when the statement by the Minister is published, the indication is confusing with a trademark in respect of which an application for registration was previously filed in Canada, and

    • (ii) on the day on which the application is made, that application for registration remains pending or the trademark is registered.

• Marginal note:Grounds — translation

  (3) The grounds for the removal of a translation are

  • (a) that, on the day on which the application is made, the translation is identical to a term customary in common language in Canada as the common name for the agricultural product or food;

  • (b) that, when the statement by the Minister in respect of the translation is published, the translation is confusing with

    • (i) a registered trademark, or

    • (ii) a trademark that was previously used in Canada and that has not been abandoned;

  • (c) that

    • (i) when the statement by the Minister in respect of the translation is published, the translation is confusing with a trademark in respect of which an application for registration was previously filed in Canada, and

    • (ii) on the day on which the application is made, that application for registration remains pending or the trademark is registered; or

  • (d) that, when the statement by the Minister in respect of the translation is published, the translation is not a faithful translation of the indication.

• Marginal note:How application is made

  (4) An application shall be made by the filing of an originating notice of motion, by counter-claim in an action for an act contrary to section 11.14 or 11.15, or by statement of claim in an action claiming additional relief under this Act.

• Marginal note:Summary proceedings

  (5) The proceedings on an application shall be heard and determined summarily on evidence adduced by affidavit unless the Federal Court directs otherwise.

• Marginal note:Effect of order on translation

  (6) If the Federal Court orders the removal of an indication identifying an agricultural product or food from the list, the Registrar shall remove any translation of that indication from the list.

Marginal note:CETA indications

11.22 Paragraph 11.18(2)(a) and section 11.21 do not apply with respect to a protected geographical indication that is listed in Part A of Annex 20-A, as amended from time to time, of Chapter Twenty of the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States, done at Brussels on October 30, 2016.

Marginal note:Canada — Korea indications

11.23 Paragraphs 11.18(2)(a) and (c) and section 11.21 do not apply with respect to an indication that is a protected geographical indication and that is included in the following list:

• (a) GoryeoHongsam;

• (b) GoryeoBaeksam;

• (c) GoryeoSusam;

• (d) IcheonSsal;

• (e) ginseng rouge de Corée;

• (f) ginseng blanc de Corée;

• (g) ginseng frais de Corée;

• (h) riz Icheon;

• (i) Korean Red Ginseng;

• (j) Korean White Ginseng;

• (k) Korean Fresh Ginseng;

• (l) Icheon Rice.

Marginal note:Powers of Governor in Council

11.24 The Governor in Council may, by order, amend the schedule by adding or deleting a category of agricultural product or food.

Registrable Trademarks

Marginal note:When trademark registrable

• 12 (1) Subject to subsection (2), a trademark is registrable if it is not

  • (a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;

  • (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;

  • (c) the name in any language of any of the goods or services in connection with which it is used or proposed to be used;

  • (d) confusing with a registered trademark;

  • (e) a sign or combination of signs whose adoption is prohibited by section 9 or 10;

  • (f) a denomination the adoption of which is prohibited by section 10.1;

  • (g) in whole or in part a protected geographical indication identifying a wine, where the trademark is to be registered in association with a wine not originating in a territory indicated by the geographical indication;

  • (h) in whole or in part a protected geographical indication identifying a spirit, where the trademark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication;

  • (h.1) in whole or in part a protected geographical indication, and the trademark is to be registered in association with an agricultural product or food — belonging to the same category, as set out in the schedule, as the agricultural product or food identified by the protected geographical indication — not originating in a territory indicated by the geographical indication; and

  • (i) subject to subsection 3(3) and paragraph 3(4)(a) of the Olympic and Paralympic Marks Act, a mark the adoption of which is prohibited by subsection 3(1) of that Act.

• Marginal note:Utilitarian function

  (2) A trademark is not registrable if, in relation to the goods or services in association with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function.

• Marginal note:Registrable if distinctive

  (3) A trademark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it is distinctive at the filing date of an application for its registration, determined without taking into account subsection 34(1), having regard to all the circumstances of the case including the length of time during which it has been used.

13 [Repealed, 2014, c. 20, s. 327]

14 [Repealed, 2014, c. 20, s. 328]

Marginal note:Registration of confusing trademarks

15 Despite section 12, confusing trademarks are registrable if the applicant is the owner of all of the confusing trademarks.

Persons Entitled to Registration of Trademarks

Marginal note:Entitlement to registration

• 16 (1) Any applicant who has filed an application in accordance with subsection 30(2) for the registration of a registrable trademark is entitled, subject to section 38, to secure its registration in respect of the goods or services specified in the application, unless at the filing date of the application or the date of first use of the trademark in Canada, whichever is earlier, it was confusing with

  • (a) a trademark that had been previously used in Canada or made known in Canada by any other person;

  • (b) a trademark in respect of which an application for registration had been previously filed in Canada by any other person; or

  • (c) a trade name that had been previously used in Canada by any other person.

• Marginal note:Pending application

  (2) The right of an applicant to secure registration of a registrable trademark is not affected by the previous filing of an application for registration of a confusing trademark by another person, unless the application for registration of the confusing trademark was pending on the day on which the applicant’s application is advertised under subsection 37(1).

• Marginal note:Previous use or making known

  (3) The right of an applicant to secure registration of a registrable trademark is not affected by the previous use or making known of a confusing trademark or trade name by another person, if the confusing trademark or trade name was abandoned on the day on which the applicant’s application is advertised under subsection 37(1).

• (4) [Repealed, 2014, c. 20, s. 330]

• (5) [Repealed, 2014, c. 20, s. 330]

Validity and Effect of Registration

Marginal note:Effect of registration in relation to previous use, etc.

• 17 (1) No application for registration of a trademark that has been advertised in accordance with section 37 shall be refused and no registration of a trademark shall be expunged or amended or held invalid on the ground of any previous use or making known of a confusing trademark or trade name by a person other than the applicant for that registration or his predecessor in title, except at the instance of that other person or his successor in title, and the burden lies on that other person or his successor to establish that he had not abandoned the confusing trademark or trade name at the date of advertisement of the applicant’s application.

• Marginal note:When registration incontestable

  (2) In proceedings commenced after the expiration of five years from the date of registration of a trademark or from July 1, 1954, whichever is the later, no registration shall be expunged or amended or held invalid on the ground of the previous use or making known referred to in subsection (1), unless it is established that the person who adopted the registered trademark in Canada did so with knowledge of that previous use or making known.

Marginal note:When registration invalid

• 18 (1) The registration of a trademark is invalid if

  • (a) the trademark was not registrable at the date of registration;

  • (b) the trademark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;

  • (c) the trademark has been abandoned;

  • (d) subject to section 17, the applicant for registration was not the person entitled to secure the registration; or

  • (e) the application for registration was filed in bad faith.

• Marginal note:Exception

  (2) No registration of a trademark that had been so used in Canada by the registrant or his predecessor in title as to have become distinctive at the date of registration shall be held invalid merely on the ground that evidence of the distinctiveness was not submitted to the competent authority or tribunal before the grant of the registration.