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

Legal Proceedings

Marginal note:Definitions

52 In sections 53 to 53.3,

court

court means the Federal Court or the superior court of a province; (tribunal)

duties

duties has the same meaning as in the Customs Act; (droits)

Minister

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

release

release[Repealed, 2014, c. 32, s. 44]

Marginal note:Proceedings for interim custody

• 53 (1) Where a court is satisfied, on application of any interested person, that any registered trademark, any trademark that is confusing with a registered trademark or any trade name has been applied to any goods that have been imported into Canada or are about to be distributed in Canada in such a manner that the distribution of the goods would be contrary to this Act, or that any indication of a place of origin has been unlawfully applied to any goods, the court may make an order for the interim custody of the goods, pending a final determination of the legality of their importation or distribution in an action commenced within such time as is prescribed by the order.

• Marginal note:Security

  (2) Before making an order under subsection (1), the court may require the applicant to furnish security, in an amount fixed by the court, to answer any damages that may by reason of the order be sustained by the owner, importer or consignee of the goods and for any amount that may become chargeable against the goods while they remain in custody under the order.

• Marginal note:Lien for charges

  (3) Where, by the judgment in any action under this section finally determining the legality of the importation or distribution of the goods, their importation or distribution is forbidden, either absolutely or on condition, any lien for charges against them that arose prior to the date of an order made under this section has effect only so far as may be consistent with the due execution of the judgment.

• Marginal note:Prohibition of imports

  (4) Where in any action under this section the court finds that the importation is or the distribution would be contrary to this Act, it may make an order prohibiting the future importation of goods to which the trademark, trade name or indication of origin has been applied.

• Marginal note:How application made

  (5) An application referred to in subsection (1) may be made in an action or otherwise, and either on notice or ex parte.

• Marginal note:Limitation

  (6) No proceedings may be taken under subsection (1) for the interim custody of goods by the Minister if proceedings for the detention of the goods by the Minister may be taken under section 53.1.

Marginal note:Proceedings for detention by Minister

• 53.1 (1) Where a court is satisfied, on application by the owner of a registered trademark, that any goods to which the registered trademark or a trademark that is confusing with the registered trademark has been applied are about to be imported into Canada or have been imported into Canada but have not yet been released, and that the distribution of the goods in Canada would be contrary to this Act, the court may make an order

  • (a) directing the Minister to take reasonable measures, on the basis of information reasonably required by the Minister and provided by the applicant, to detain the goods;

  • (b) directing the Minister to notify the applicant and the owner or importer of the goods, forthwith after detaining them, of the detention and the reasons therefor; and

  • (c) providing for such other matters as the court considers appropriate.

• Marginal note:How application made

  (2) An application referred to in subsection (1) may be made in an action or otherwise, and either on notice or ex parte, except that it must always be made on notice to the Minister.

• Marginal note:Court may require security

  (3) Before making an order under subsection (1), the court may require the applicant to furnish security, in an amount fixed by the court,

  • (a) to cover duties, storage and handling charges, and any other amount that may become chargeable against the goods; and

  • (b) to answer any damages that may by reason of the order be sustained by the owner, importer or consignee of the goods.

• Marginal note:Application for directions

  (4) The Minister may apply to the court for directions in implementing an order made under subsection (1).

• Marginal note:Minister may allow inspection

  (5) The Minister may give the applicant or the importer of the detained goods an opportunity to inspect them for the purpose of substantiating or refuting, as the case may be, the applicant’s claim.

• Marginal note:Where applicant fails to commence an action

  (6) Unless an order made under subsection (1) provides otherwise, the Minister shall, subject to the Customs Act and to any other Act of Parliament that prohibits, controls or regulates the importation or exportation of goods, release the goods without further notice to the applicant if, two weeks after the applicant has been notified under paragraph (1)(b), the Minister has not been notified that an action has been commenced for a final determination by the court of the legality of the importation or distribution of the goods.

• Marginal note:Where court finds in plaintiff’s favour

  (7) Where, in an action commenced under this section, the court finds that the importation is or the distribution would be contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order that the goods be destroyed or exported, or that they be delivered up to the plaintiff as the plaintiff’s property absolutely.

Marginal note:Power of court to grant relief

• 53.2 (1) If a court is satisfied, on application of any interested person, that any act has been done contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits, for punitive damages and for the destruction or other disposition of any offending goods, packaging, labels and advertising material and of any equipment used to produce the goods, packaging, labels or advertising material.

• Marginal note:Exception

  (1.1) If, within a period of three years beginning on the date of registration of a trademark, the owner of the registered trademark makes an application claiming that an act has been done contrary to section 19, 20 or 22, the owner is not entitled to relief unless the trademark was in use in Canada at any time during that period or special circumstances exist that excuse the absence of use in Canada during that period.

• Marginal note:Notice to interested persons

  (2) Before making an order for destruction or other disposition, the court shall direct that notice be given to any person who has an interest or right in the item to be destroyed or otherwise disposed of, unless the court is of the opinion that the interests of justice do not require that notice be given.

Marginal note:Unaltered state — exportation, sale or distribution

• 53.3 (1) A court is not permitted, in any proceeding under section 53.1 or 53.2, to make an order under that section requiring or permitting the goods to be exported, sold or distributed in an unaltered state, except in a manner that does not affect the legitimate interests of the owner of the registered trademark or except in exceptional circumstances, if the court finds that

  • (a) goods bearing the registered trademark have been imported into Canada in such a manner that the distribution of the goods in Canada would be contrary to this Act; and

  • (b) the registered trademark has, without the consent of the owner, been applied to those goods with the intent of counterfeiting or imitating the trademark, or of deceiving the public and inducing them to believe that the goods were made with the consent of the owner.

• Marginal note:Removal of trademark

  (2) Subsection (1) also applies with respect to goods for which the only alteration is the removal of the trademark.

Marginal note:Evidence

• 54 (1) Evidence of any document in the official custody of the Registrar or of any extract therefrom may be given by the production of a copy thereof purporting to be certified to be true by the Registrar.

• Marginal note:Idem

  (2) A copy of any entry in the register purporting to be certified to be true by the Registrar is evidence of the facts set out therein.

• Marginal note:Idem

  (3) A copy of the record of the registration of a trademark purporting to be certified to be true by the Registrar is evidence of the facts set out therein and that the person named therein as owner is the registered owner of the trademark for the purposes and within the territorial area therein defined.

• Marginal note:Idem

  (4) A copy of any entry made or documents filed under the authority of any Act in force before July 1, 1954 relating to trademarks, certified under the authority of that Act, is admissible in evidence and has the same probative force as a copy certified by the Registrar under this Act as provided in this section.

Marginal note:Jurisdiction of Federal Court

55 The Federal Court has jurisdiction to entertain any action or proceeding, other than a proceeding under section 51.01, for the enforcement of any of the provisions of this Act or of any right or remedy conferred or defined by this Act.

Marginal note:Appeal

• 56 (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.

• Marginal note:Procedure

  (2) An appeal under subsection (1) shall be made by way of notice of appeal filed with the Registrar and in the Federal Court.

• Marginal note:Notice to owner

  (3) The appellant shall, within the time limited or allowed by subsection (1), send a copy of the notice by registered mail to the registered owner of any trademark that has been referred to by the Registrar in the decision complained of and to every other person who was entitled to notice of the decision.

• Marginal note:Public notice

  (4) The Federal Court may direct that public notice of the hearing of an appeal under subsection (1) and of the matters at issue therein be given in such manner as it deems proper.

• Marginal note:Additional evidence

  (5) If, on an appeal under subsection (1), the Federal Court grants leave to adduce evidence in addition to that adduced before the Registrar, the Court may exercise, with respect to that additional evidence, any discretion vested in the Registrar.

Marginal note:Exclusive jurisdiction of Federal Court

• 57 (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the trademark.

• Marginal note:Restriction

  (2) No person is entitled to institute under this section any proceeding calling into question any decision given by the Registrar of which that person had express notice and from which he had a right to appeal.

Marginal note:How proceedings instituted

58 An application under section 57 shall be made either by the filing of an originating notice of motion, by counter-claim in an action for the infringement of the trademark, or by statement of claim in an action claiming additional relief under this Act.

Marginal note:Notice to set out grounds

• 59 (1) Where an appeal is taken under section 56 by the filing of a notice of appeal, or an application is made under section 57 by the filing of an originating notice of motion, the notice shall set out full particulars of the grounds on which relief is sought.

• Marginal note:Reply

  (2) Any person on whom a copy of the notice described in subsection (1) has been served and who intends to contest the appeal or application, as the case may be, shall file and serve within the prescribed time or such further time as the court may allow a reply setting out full particulars of the grounds on which he relies.

• Marginal note:Hearing

  (3) The proceedings on an appeal or application shall be heard and determined summarily on evidence adduced by affidavit unless the court otherwise directs, in which event it may order that any procedure permitted by its rules and practice be made available to the parties, including the introduction of oral evidence generally or in respect of one or more issues specified in the order.

Marginal note:Registrar to transmit documents

60 When any appeal or application has been made to the Federal Court under any of the provisions of this Act, the Registrar shall, at the request of any of the parties to the proceedings and on the payment of the prescribed fee, transmit to the Court all documents on file in the Registrar’s office relating to the matters in question in those proceedings, or copies of those documents certified by the Registrar.

Marginal note:Judgments

• 61 (1) An officer of the Registry of the Federal Court shall file with the Registrar a certified copy of every judgment or order made by the Federal Court, the Federal Court of Appeal or the Supreme Court of Canada relating to any trademark on the register or to any protected geographical indication.

• Marginal note:Judgment sent by parties

  (2) A person who makes a request to the Registrar relating to a judgment or order made by the Federal Court, the Federal Court of Appeal or the Supreme Court of Canada in a proceeding to which they were a party shall, at the request of the Registrar, send a copy of that judgment or order to the Registrar.