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

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Act current to 2019-06-20 and last amended on 2019-06-18. Previous Versions

Legal Proceedings (continued)

Marginal note:Jurisdiction of Federal Court

 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.

  • R.S., 1985, c. T-13, s. 55
  • 2014, c. 32, s. 46

Marginal note:Appeal

  •  (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) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.

  • R.S., 1985, c. T-13, s. 56
  • 2014, c. 20, s. 361(E)

Marginal note:Exclusive jurisdiction of Federal Court

  •  (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.

  • R.S., 1985, c. T-13, s. 57
  • 2014, c. 20, s. 354

Marginal note:How proceedings instituted

 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.

  • R.S., 1985, c. T-13, s. 58
  • 2014, c. 20, s. 361(E)

Marginal note:Notice to set out grounds

  •  (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.

  • R.S., c. T-10, s. 59

Marginal note:Registrar to transmit documents

 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.

  • R.S., 1985, c. T-13, s. 60
  • 1993, c. 44, s. 238
  • 2014, c. 32, s. 48

Marginal note:Judgments

  •  (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.

  • R.S., 1985, c. T-13, s. 61
  • 2002, c. 8, s. 177
  • 2014, c. 20, ss. 355, 361(E)
  • 2017, c. 6, s. 74

General

Marginal note:Administration

 This Act shall be administered by the Minister of Industry.

  • R.S., 1985, c. T-13, s. 62
  • 1992, c. 1, s. 145(F)
  • 1995, c. 1, s. 62

Marginal note:Registrar

  •  (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.

  • R.S., 1985, c. T-13, s. 63
  • 1992, c. 1, s. 145(F)
  • 1995, c. 1, s. 62
  • 2014, c. 20, ss. 361(E), 370

Marginal note:Electronic form and means

  •  (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.

  • R.S., 1985, c. T-13, s. 64
  • 2014, c. 20, s. 356

Marginal note:Regulations

 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) respecting the maintenance of the list of trademark agents and the entry and removal of the names of persons and firms on the list, including the qualifications that must be met and the conditions that must be fulfilled to have a name entered on the list and to maintain the name on the list;

  • (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; and

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

  • R.S., 1985, c. T-13, s. 65
  • 1993, c. 15, s. 70
  • 1994, c. 47, s. 201
  • 2014, c. 20, s. 357, c. 32, s. 50
  • 2015, c. 36, s. 67, 2018, c. 27, s. 262
 
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