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

General

Marginal note:Administration

62 This Act shall be administered by the Minister of Industry.

Marginal note:Registrar

• 63 (1) There shall be a Registrar of Trademarks, who shall be the Commissioner of Patents appointed under subsection 4(1) of the Patent Act. The Registrar shall be responsible to the Deputy Minister of Industry.

• Marginal note:Acting registrar

  (2) When the Registrar is absent or unable to act or when the office of Registrar is vacant, his powers shall be exercised and his duties and functions performed in the capacity of acting registrar by such other officer as may be designated by the Minister of Industry.

• Marginal note:Assistants

  (3) The Registrar may, after consultation with the Minister, delegate to any person he deems qualified any of his powers, duties and functions under this Act, except the power to delegate under this subsection.

• Marginal note:Appeal

  (4) Any decision under this Act of a person authorized to make the decision pursuant to subsection (3) may be appealed in the like manner and subject to the like conditions as a decision of the Registrar under this Act.

Marginal note:Electronic form and means

• 64 (1) Subject to the regulations, any document, information or fee that is provided to the Registrar under this Act may be provided in any electronic form, and by any electronic means, that is specified by the Registrar.

• Marginal note:Collection, storage, etc.

  (2) Subject to the regulations, the Registrar may use electronic means to create, collect, receive, store, transfer, distribute, publish, certify or otherwise deal with documents or information.

• Marginal note:Definition

  (3) In this section, electronic, in reference to a form or means, includes optical, magnetic and other similar forms or means.

Marginal note:Regulations

65 The Governor in Council may make regulations for carrying into effect the purposes and provisions of this Act and, in particular, may make regulations

• (a) respecting the form of the register to be kept under this Act, and of the entries to be made in it;

• (b) respecting applications to the Registrar and the processing of those applications;

• (c) respecting the manner in which the goods or services referred to in paragraph 30(2)(a) are to be described;

• (d) respecting the merger of registrations under paragraph 41(1)(f), including, for the purpose of renewal under section 46, the deemed day of registration or last renewal;

• (e) respecting the recording or registration of transfers, licences, disclaimers, judgments or other documents relating to any trademark;

• (f) [Repealed, 2018, c. 27, s. 258]

• (g) respecting certificates of registration;

• (h) respecting the procedure by and form in which an application may be made to the Minister, as defined in section 11.11, requesting the Minister to publish a statement referred to in subsection 11.12(2);

• (i) respecting proceedings under sections 38 and 45, including documents relating to those proceedings;

• (j) respecting the payment of fees to the Registrar, the amount of those fees and the circumstances in which any fees previously paid may be refunded in whole or in part;

• (j.1) authorizing the Registrar to waive, subject to any prescribed terms and conditions, the payment of a fee if the Registrar is satisfied that the circumstances justify it;

• (k) respecting the provision of documents and information to the Registrar, including the time at which they are deemed to be received by the Registrar;

• (l) respecting communications between the Registrar and any other person;

• (m) respecting the grouping of goods or services according to the classes of the Nice Classification and the numbering of those classes;

• (n) respecting the awarding of costs under subsections 11.13(9), 38.1(1) and 45(4.1);

• (o) respecting requests made under subsection 45.1(1); and

• (p) prescribing anything that by this Act is to be prescribed.

Marginal note:Regulations — Madrid Protocol and Singapore Treaty

65.1 The Governor in Council may make regulations for carrying into effect

• (a) despite anything in this Act, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989, including any amendments, modifications and revisions made from time to time to which Canada is a party; and

• (b) the Singapore Treaty on the Law of Trademarks, done at Singapore on March 27, 2006, including any amendments and revisions made from time to time to which Canada is a party.

Marginal note:Regulations

65.2 The Governor in Council may make regulations

• (a) respecting the list to be kept under subsection 11.12(1), including information relating to the listed geographical indications and translations to be included on the list; and

• (b) respecting proceedings under section 11.13, including documents relating to those proceedings.

Marginal note:Case management

• 65.3 (1) For greater certainty, the Governor in Council may make regulations under paragraphs 65(i) and 65.2(b) respecting the case management by the Registrar of proceedings referred to in those paragraphs.

• Marginal note:Time or manner

  (2) The Governor in Council may make regulations authorizing the Registrar to fix, despite any time or manner that is provided for under this Act with respect to any of the proceedings referred to in subsection (1), the time by which or the manner in which any step in a case-managed proceeding is to be completed and, in that case, the provisions of this Act and the regulations apply with respect to the proceeding with any modifications that the circumstances require.

Marginal note:Time period extended

• 66 (1) If a time period fixed under this Act for doing anything ends on a prescribed day or a day that is designated by the Registrar, that time period is extended to the next day that is not a prescribed day or a designated day.

• Marginal note:Power to designate day

  (2) The Registrar may, on account of unforeseen circumstances and if the Registrar is satisfied that it is in the public interest to do so, designate any day for the purposes of subsection (1). If a day is designated, the Registrar shall inform the public of that fact on the website of the Canadian Intellectual Property Office.

Newfoundland

Marginal note:Registration of trademark before April 1, 1949

• 67 (1) The registration of a trademark under the laws of Newfoundland before April 1, 1949 has the same force and effect in the Province of Newfoundland as if Newfoundland had not become part of Canada, and all rights and privileges acquired under or by virtue of those laws may continue to be exercised or enjoyed in the Province of Newfoundland as if Newfoundland had not become part of Canada.

• Marginal note:Applications for trademarks pending April 1, 1949

  (2) The laws of Newfoundland as they existed immediately before April 1, 1949 continue to apply in respect of applications for the registration of trademarks under the laws of Newfoundland pending at that time and any trademarks registered under those applications shall, for the purposes of this section, be deemed to have been registered under the laws of Newfoundland before April 1, 1949.

Marginal note:Use of trademark or trade name before April 1, 1949

68 For the purposes of this Act, the use or making known of a trademark or the use of a trade name in Newfoundland before April 1, 1949 shall not be deemed to be a use or making known of such trademark or a use of such trade name in Canada before that date.

Transitional Provisions

Marginal note:Use of the indication “Beaufort”

• 68.1 (1) During the period that begins on the day on which this subsection comes into force and ends on the fifth anniversary of that day, 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 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, for less than 10 years before October 18, 2013.

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

  (2) During the period that begins on the day on which this subsection comes into force and ends on the fifth anniversary of that day, 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 less than five years before October 18, 2013.

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

  (3) During the period that begins on the day on which this subsection comes into force and ends on the fifth anniversary of that day, 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 less than 10 years before October 18, 2013.

• Marginal note:Restriction

  (4) For the purposes of subsections 68.1(1) to (3), no person is a predecessor in title if they only transferred the right to use the indication or the translation, or both.

Marginal note:Non-application of paragraph 38(2)(a.1)

68.2 No person shall oppose an application for registration of a trademark on the ground set out in paragraph 38(2)(a.1) if the application was advertised under subsection 37(1) before the day on which that paragraph comes into force.

69 [Repealed, 2014, c. 20, s. 358.2]

Marginal note:Application not advertised

69.1 An application for registration in respect of which all of the items set out in subsection 33(1), as enacted by section 339 of the Economic Action Plan 2014 Act, No. 1, have been received by the Registrar before the day on which that section 339 comes into force, and that has not been advertised under subsection 37(1) before that day shall be dealt with and disposed of in accordance with

• (a) the provisions of this Act other than section 31, subsection 33(1) and section 34, as enacted or amended by the Economic Action Plan 2014 Act, No. 1; and

• (b) section 34, as it read immediately before the day on which section 339 of the Economic Action Plan 2014 Act, No. 1 comes into force.

Marginal note:Application advertised

• 70 (1) An application for registration that has been advertised under subsection 37(1) before the day on which section 342 of the Economic Action Plan 2014 Act, No. 1 comes into force shall be dealt with and disposed of in accordance with

  • (a) the provisions of this Act as they read immediately before the day on which section 342 of the Economic Action Plan 2014 Act, No. 1 comes into force, other than subsections 6(2) to (4), sections 28 and 36, subsections 38(6) to (8) and sections 39, 40 and 66;

  • (b) the definition Nice Classification in section 2, subsections 6(2) to (4), section 36, subsections 38(6) to (12), sections 39 and 40 and subsections 48(3) and (5), as enacted by the Economic Action Plan 2014 Act, No. 1;

  • (c) section 66, as enacted by the Economic Action Plan 2015 Act, No. 1; and

  • (d) subsections 9(3) and (4), sections 36.1, 38.1 and 45.1, and subsection 56(5), as enacted by the Budget Implementation Act, 2018, No. 2.

• Marginal note:Regulations

  (2) For greater certainty, a regulation made under this Act applies to an application referred to in subsection (1), unless the regulation provides otherwise.

• Marginal note:Nice Classification

  (3) Despite subsection (1), the Registrar may require an applicant to amend the statement of goods or services contained in an application referred to in subsection (1) so that the goods or services are grouped in the manner described in subsection 30(3), as enacted by section 339 of the Economic Action Plan 2014 Act, No. 1.

• Marginal note:Disagreement

  (4) Any question arising as to the class within which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal.

Marginal note:Declaration of use

71 For greater certainty, an applicant is not required to submit a declaration of use referred to in subsection 40(2), as that subsection read immediately before the day on which section 345 of the Economic Action Plan 2014 Act, No. 1 comes into force, in order for the Registrar to register the trademark and issue a certificate of registration.