Canadian Trademark Legislative Changes

Parliament made significant changes to Canadian Trademark laws in BILL C-31 during 2017. Although the changes have received Royal Assent, we don’t know when they will be in force. Keep checking the Canadian Trademarks Act for updates.

CIPO is making progress to modernize Canada’s intellectual property (IP) framework.

The following is an overview of the trademarks legislative work that is underway to help Canada better align itself with international best practices. Take a look at the Update to the trademarks online tools page to see which applications and forms will be adapted to better implement these changes.

Summary Canadian Trademark Legislative Changes:

Canadian Trademarks legislative changes

Participation in the international treaties will modernize Canada’s IP systems to better align with international best practices, reduce the administrative burden for innovative Canadian businesses, and draw foreign investment to Canada. It will also allow Canada to take part in discussions and influence matters related to IP on the international stage.

Three different bills with trademarks components received Royal Assent: Bill C-8, Bill C-31 (which includes accession to the Nice Agreement, the Singapore Treaty and the Madrid Protocol) and Bill C-59.  These amendments are all reflected in the modernized Trade-marks Act.

Important to know

To bring these new laws into force, we are in the process of reviewing our business procedures, office practices, policies, and informational contents. We are also working on adapting technologies such as web applications and databases and updating the Trademarks Regulations.

Read more at CIPO’s website

Amendments Relating to International Treaties on Trademarks

Amendments to the Trade-marks Act

317. The long title of the English version of the Trade-marks Act is replaced by the following:
An Act relating to trademarks and unfair competition
318. Section 1 of the English version of the Act is replaced by the following:
Short title
1. This Act may be cited as the Trademarks Act.
319. (1) The definition “distinguishing guise” in section 2 of the Act is repealed.
(2) The definitions “proposed trade-mark” and “representative for service” in section 2 of the Act are repealed.
(3) The definition “wares” in section 2 of the Act is repealed.
(4) The definitions “certification mark” and “trade-mark” in section 2 of the Act are replaced by the following:

“certification mark”
« marque de certification »

“certification mark” means a sign or combination of signs that is used or proposed to be used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard from those that are not of that defined standard, with respect to
(a) the character or quality of the goods or services,
(b) the working conditions under which the goods are produced or the services performed,
(c) the class of persons by whom the goods are produced or the services performed, or
(d) the area within which the goods are produced or the services performed;

“trademark”
« marque de commerce »

“trademark” means
(a) a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, or
(b) a certification mark;
(5) Section 2 of the Act is amended by adding the following in alphabetical order:

“Nice Classification”
« classification de Nice »

“Nice Classification” means the classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, signed at Nice on June 15, 1957, including any amendments, modifications and revisions made from time to time to which Canada is a party;

“sign”
« signe »

“sign” includes a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign;
320. The Act is amended by adding the following after section 2:

Reference to “person”

2.1 Unless the context requires otherwise, a reference to “person” in this Act, in relation to a trademark, includes two or more persons who, by agreement, do not have the right to use the trademark in Canada except on behalf of both or all of them.
321. (1) Subsections 6(2) to (4) of the Act are replaced by the following:

Confusion — trademark with other trademark

(2) The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

Confusion — trademark with trade name

(3) The use of a trademark causes confusion with a trade name if the use of both the trademark and trade name in the same area would be likely to lead to the inference that the goods or services associated with the trademark and those associated with the business carried on under the trade name are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

Confusion — trade name with trademark

(4) The use of a trade name causes confusion with a trademark if the use of both the trade name and trademark in the same area would be likely to lead to the inference that the goods or services associated with the business carried on under the trade name and those associated with the trademark are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.
(2) Paragraph 6(5)(e) of the Act is replaced by the following:
(e) the degree of resemblance between the trademarks or trade names, including in appearance or sound or in the ideas suggested by them.
322. The heading before section 7 of the Act is replaced by the following:

UNFAIR COMPETITION AND PROHIBITED SIGNS

323. (1) Paragraph 9(1)(d) of the French version of the Act is replaced by the following:
d un mot ou symbole susceptible de porter à croire que les produits ou services en liaison avec lesquels il est employé ont reçu l’approbation royale, vice-royale ou gouvernementale, ou que leur production, leur vente ou leur exécution a lieu sous le patronage ou sur l’autorité royale, vice-royale ou gouvernementale;
1994, c. 47, s. 191(2)
(2) Paragraph 9(1)(i.3) of the Act is replaced by the following:
(i.3) any armorial bearing, flag or other emblem, or the name or any abbreviation of the name, of an international intergovernmental organization, if the armorial bearing, flag, emblem, name or abbreviation is on a list communicated under article 6ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article, and the Registrar gives public notice of the communication;
1993, c. 15, s. 58(4)
(3) Paragraph 9(2)(b)(ii) is replaced by the following:
(ii) an armorial bearing, flag, emblem, name or abbreviation mentioned in paragraph (1)(i.3), unless the use of the mark is likely to mislead the public as to a connection between the user and the organization.
324. Section 10 of the Act is replaced by the following:

Further prohibitions

10. If any sign or combination of signs has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any goods or services, no person shall adopt it as a trademark in association with the goods or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any sign or combination of signs so nearly resembling that sign or combination as to be likely to be mistaken for it.
325. Section 11 of the Act is replaced by the following:

Further prohibitions

11. No person shall use in connection with a business, as a trademark or otherwise, any sign or combination of signs adopted contrary to section 9 or 10.
326. (1) The portion of subsection 12(1) of the Act before paragraph (a) is replaced by the following:

When trademark registrable

12. (1) Subject to subsection (2), a trademark is registrable if it is not
1993, c. 15, s. 59(F)
(2) Paragraph 12(1)(b) of the French version of the Act is replaced by the following:
b qu’elle soit sous forme graphique, écrite ou sonore, elle donne une description claire ou donne une description fausse et trompeuse, en langue française ou anglaise, de la nature ou de la qualité des produits ou services en liaison avec lesquels elle est employée, ou en liaison avec lesquels on projette de l’employer, ou des conditions de leur production, ou des personnes qui les produisent, ou de leur lieu d’origine;
(3) Paragraph 12(1)(e) of the Act is replaced by the following:
(e) a sign or combination of signs whose adoption is prohibited by section 9 or 10;
(4) Subsection 12(2) of the Act is replaced by the following:

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.

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, having regard to all the circumstances of the case including the length of time during which it has been used.
327. Section 13 of the Act is repealed.
1994, c. 47, s. 194
328. Sections 14 and 15 of the Act are replaced by the following:

Registration of confusing trademarks

15. Despite section 12, confusing trademarks are registrable if the applicant is the owner of all of the confusing trademarks.
329. The heading before section 16 of the French version of the Act is replaced by the following:

PERSONNES AYANT DROIT À L’ENREGISTREMENT D’UNE MARQUE DE COMMERCE

330. (1) The portion of subsection 16(1) of the Act before paragraph (a) is replaced by the following:

Entitlement to registration

16. (1) Any applicant who has filed an application in accordance with subsec-tion 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
1994, c. 47, s. 195
(2) Subsections 16(2) to (5) of the Act are replaced by the following:
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).
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).
331. The Act is amended by adding the following after section 18:
Not to limit art or industry
18.1 The registration of a trademark may be expunged by the Federal Court on the application of any person interested if the Court decides that the registration is likely to unreasonably limit the development of any art or industry.
332. Section 20 of the Act is amended by adding the following after subsection (1):

Exception — utilitarian feature

(1.1) The registration of a trademark does not prevent a person from using any utilitarian feature embodied in the trademark.
333. Subsection 21(1) of the English version of the Act is replaced by the following:

Concurrent use of confusing marks

21. (1) If, in any proceedings respecting a registered trademark the registration of which is entitled to the protection of subsection 17(2), it is made to appear to the Federal Court that one of the parties to the proceedings, other than the registered owner of the trademark, had in good faith used a confusing trademark or trade name in Canada before the filing date of the application for that registration, and the Court considers that it is not contrary to the public interest that the continued use of the confusing trademark or trade name should be permitted in a defined territorial area concurrently with the use of the registered trademark, the Court may, subject to any terms that it considers just, order that the other party may continue to use the confusing trademark or trade name within that area with an adequate specified distinction from the registered trademark.
334. (1) Subsections 23(1) to (3) of the Act are replaced by the following:

Registration of certification marks

23. (1) A certification mark may be adopted and registered only by a person who is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used.
Licence
(2) The owner of a certification mark may license others to use it in association with goods or services that meet the defined standard, and the use of the certification mark accordingly is deemed to be use by the owner.

Unauthorized use

(3) The owner of a registered certification mark may prevent its use by unlicensed persons or in association with any goods or services in respect of which it is registered but to which the licence does not extend.
(2) Subsection 23(4) of the English version of the Act is replaced by the following:

Action by unincorporated body

(4) If the owner of a registered certification mark is an unincorporated body, any action or proceeding to prevent unauthorized use of the certification mark may be brought by any member of that body on behalf of themselves and all other members.
335. Section 24 of the French version of the Act is replaced by the following:

Enregistrement d’une marque de commerce créant de la confusion avec la marque de certification

24. Avec le consentement du propriétaire d’une marque de certification, une marque de commerce créant de la confusion avec la marque de certification peut, si elle présente une différence caractéristique, être déposée par toute autre personne en vue d’indiquer que les produits en liaison avec lesquels elle est employée ont été fabriqués, vendus, donnés à bail ou loués, et que les services en liaison avec lesquels elle est employée ont été exécutés par elle comme étant une des personnes ayant droit d’employer la marque de certification, mais l’enregistrement de cette marque de commerce est radié par le registraire sur le retrait du consentement du propriétaire de la marque de certification, ou sur annulation de l’enregistrement de la marque de certification.
336. Section 25 of the Act is replaced by the following:

Descriptive certification mark

25. A certification mark that is descriptive of the place of origin of goods or services, and not confusing with any registered trademark, is registrable if the applicant is the administrative authority of a country, state, province or municipality that includes or forms part of the area indicated by the certification mark, or is a commercial association that has an office or representative in that area, but the owner of any certification mark registered under this section shall permit its use in association with any goods or services produced or performed in the area of which it is descriptive.
337. Subsection 26(2) of the Act is amended by striking out “and” at the end of paragraph (e) and by adding the following after that paragraph:
(e.1) the names of the goods or services in respect of which the trademark is registered, grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification; and
1993, c. 15, s. 62
338. Section 28 of the Act is replaced by the following:

List of trademark agents

28. There shall be kept under the supervision of the Registrar a list of trademark agents, which shall include the names of all persons and firms entitled to represent applicants and others, including the registered owner of a trademark and parties to the proceedings under sections 38 and 45, in all business before the Office of the Registrar of Trademarks.
1993, c. 15, s. 64; 1994, c. 47, s. 198
339. Sections 30 to 33 of the Act are replaced by the following:

Requirements for application

30. (1) A person may file with the Registrar an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services.
Contents of application
(2) The application shall contain
(a) a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used;
(b) in the case of a certification mark, particulars of the defined standard that the use of the certification mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used;
(c) a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements; and
(d) any prescribed information or statement.
Nice Classification
(3) The goods or services referred to in paragraph (2)(a) are to be grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification.
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.

Standard characters

31. An applicant who seeks to register a trademark that consists only of letters, numerals, punctuation marks, diacritics or typographical symbols, or of any combination of them, without limiting the trademark to any particular font, size or colour shall
(a) file a representation under paragraph 30(2)(c) that consists only of characters for which the Registrar has adopted standard characters;
(b) include in their application a statement to the effect that they wish the trademark to be registered in standard characters; and
(c) comply with any prescribed requirements.

Further evidence in certain cases

32. (1) An applicant shall furnish the Registrar with any evidence that the Registrar may require establishing that the trademark is distinctive at the filing date of the application for its registration if any of the following apply:
(a) the applicant claims that their trademark is registrable under subsection 12(3);
(b) the Registrar’s preliminary view is that the trademark is not inherently distinctive;
(c) the trademark consists exclusively of a single colour or of a combination of colours without delineated contours;
(d) the trademark consists exclusively or primarily of one or more of the following signs:
(i) the three-dimensional shape of any of the goods specified in the application, or of an integral part or the packaging of any of those goods,
(ii) a mode of packaging goods,
(iii) a sound,
(iv) a scent,
(v) a taste,
(vi) a texture,
(vii) any other prescribed sign.
Registration to be restricted
(2) The Registrar shall, having regard to the evidence adduced, restrict the registration to the goods or services in association with which, and to the defined territorial area in Canada in which, the trademark is shown to be distinctive.

Filing date

33. (1) The filing date of an application for the registration of a trademark in Canada is the day on which the Registrar has received all of the following:
(a) an explicit or implicit indication that the registration of the trademark is sought;
(b) information allowing the identity of the applicant to be established;
(c) information allowing the Registrar to contact the applicant;
(d) a representation or description of the trademark;
(e) a list of the goods or services for which registration of the trademark is sought;
(f) any prescribed fees.

Outstanding items

(2) The Registrar shall notify the applicant whose application does not contain all the items set out in subsection (1) of the items that are outstanding and require that the applicant submit them within two months of the date of the notice. Despite section 47, that period cannot be extended.
Application deemed never filed
(3) If the Registrar does not receive the outstanding items within those two months, the application is deemed never to have been filed. However, any fees paid in respect of the application shall not be refunded to the applicant.
1994, c. 47, s. 199
340. (1) Subsection 34(1) of the Act is replaced by the following:

Date of application abroad deemed date of application in Canada

34. (1) Despite subsection 33(1), when an applicant files an application for the registration of a trademark in Canada after the applicant or the applicant’s predecessor in title has applied, in or for any country of the Union other than Canada, for the registration of the same or substantially the same trademark in association with the same kind of goods or services, the filing date of the application in or for the other country is deemed to be the filing date of the application in Canada and the applicant is entitled to priority in Canada accordingly despite any intervening use in Canada or making known in Canada or any intervening application or registration, if
(a) the filing date of the application in Canada is within a period of six months after the date on which the earliest application was filed in or for any country of the Union for the registration of the same or substantially the same trademark in association with the same kind of goods or services;
(b) the applicant files a request for priority in the prescribed time and manner and informs the Registrar of the filing date and country or office of filing of the application on which the request is based;
(c) the applicant, at the filing date of the application in Canada, is a citizen or national of or domiciled in a country of the Union or has a real and effective industrial or commercial establishment in a country of the Union; and
(d) the applicant furnishes, in accordance with any request under subsections (2) and (3), evidence necessary to fully establish the applicant’s right to priority.
(2) Subsection 34(2) is replaced by the following:

Evidence requests

(2) The Registrar may request the evidence before the day on which the trademark is registered under section 40.
(3) Section 34 of the Act is amended by adding the following after subsection (3):

Withdrawal of request

(4) An applicant may, in the prescribed time and manner, withdraw a request for priority.
Extension
(5) An applicant is not permitted to apply under section 47 for an extension of the six-month period referred to in paragraph (1)(a) until that period has ended, and the Registrar is not permitted to extend the period by more than seven days.
341. Section 36 of the Act is replaced by the following:

Abandonment

36. If, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act, the Registrar may, after giving notice to the applicant of the default, treat the application as abandoned unless the default is remedied within the prescribed time.
342. (1) Paragraph 37(1)(a) of the Act is replaced by the following:
(a) the application does not conform to the requirements of subsection 30(2);
(2) Subsection 37(1) of the Act is amended by striking out “or” at the end of paragraph (b), by adding “or” at the end of paragraph (c) and by replacing the portion after paragraph (c) with the following:
(d) the trademark is not distinctive.
If the Registrar is not so satisfied, the Registrar shall cause the application to be advertised in the prescribed manner.
(3) Section 37 of the Act is amended by adding the following after subsection (3):
Withdrawal of advertisement
(4) If, after the application has been advertised but before the trademark is registered, the Registrar is satisfied that the application should not have been advertised or was incorrectly advertised and the Registrar considers it reasonable to do so, the Registrar may withdraw the advertisement. If the Registrar withdraws the advertisement, the application is deemed never to have been advertised.
343. (1) Paragraph 38(2)(a) of the Act is replaced by the following:
(a) that the application does not conform to the requirements of subsection 30(2), without taking into account if it meets the requirement in subsection 30(3);
(2) Subsection 38(2) of the Act is amended by striking out “or” at the end of paragraph (c) and by adding the following after paragraph (d):
(e) that, at the filing date of the application in Canada, the applicant was not using and did not propose to use the trademark in Canada in association with the goods or services specified in the application; or
(f) that, at the filing date of the application in Canada, the applicant was not entitled to use the trademark in Canada in association with those goods or services.
1993, c. 15, s. 66(2)
(3) Subsections 38(6) to (8) of the Act are replaced by the following:

Power to strike

(6) At the applicant’s request, the Registrar may — at any time before the day on which the applicant files a counter statement — strike all or part of the statement of opposition if the statement or part of it
(a) is not based on any of the grounds set out in subsection (2); or
(b) does not set out a ground of opposition in sufficient detail to enable the applicant to reply to it.

Counter statement

(7) The applicant shall file a counter statement with the Registrar and serve a copy on the opponent in the prescribed manner and within the prescribed time after a copy of the statement of opposition has been forwarded to the applicant. The counter statement need only state that the applicant intends to respond to the opposition.
Evidence and hearing
(8) Both the opponent and the applicant shall be given an opportunity, in the prescribed manner and within the prescribed time, to submit evidence and to make representations to the Registrar unless
(a) the opposition is withdrawn or deemed under subsection (10) to have been withdrawn; or
(b) the application is abandoned or deemed under subsection (11) to have been abandoned.
Service
(9) The opponent and the applicant shall, in the prescribed manner and within the prescribed time, serve on each other any evidence and written representations that they submit to the Registrar.
Deemed withdrawal of opposition
(10) The opposition is deemed to have been withdrawn if, in the prescribed circumstances, the opponent does not submit and serve either evidence under subsection (8) or a statement that the opponent does not wish to submit evidence.
Deemed abandonment of application
(11) The application is deemed to have been abandoned if the applicant does not file and serve a counter statement within the time referred to in subsection (7) or if, in the prescribed circumstances, the applicant does not submit and serve either evidence under subsection (8) or a statement that the applicant does not wish to submit evidence.
Decision
(12) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application, reject the opposition, or refuse the application with respect to one or more of the goods or services specified in it and reject the opposition with respect to the others. He or she shall notify the parties of the decision and the reasons for it.
1993, c. 15, s. 67
344. Section 39 of the Act is replaced by the following:

Divisional application

39. (1) After having filed an application for the registration of a trademark, an applicant may limit the original application to one or more of the goods or services that were within its scope and file a divisional application for the registration of the same trademark in association with any other goods or services that were
(a) within the scope of the original application on its filing date; and
(b) within the scope of the original application as advertised, if the divisional application is filed on or after the day on which the application is advertised under subsection 37(1).
Identification
(2) A divisional application shall indicate that it is a divisional application and shall, in the prescribed manner, identify the corresponding original application.
Separate application
(3) A divisional application is a separate application, including with respect to the payment of any fees.
Filing date
(4) A divisional application’s filing date is deemed to be the original application’s filing date.
Division of divisional application
(5) A divisional application may itself be divided under subsection (1), in which case this section applies as if that divisional application were an original application.
1993, c. 15, s. 68, c. 44, ss. 231(2) and (3); 1999, c. 31, s. 210(F)
345. Section 40 of the Act is replaced by the following:

Registration of trademarks

40. When an application for the registration of a trademark either has not been opposed and the time for the filing of a statement of opposition has expired, or has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall register the trademark in the name of the applicant and issue a certificate of its registration or, if an appeal is taken, shall act in accordance with the final judgment given in the appeal.
346. (1) The portion of subsection 41(1) of the Act before paragraph (b) is replaced by the following:

Amendments to register

41. (1) The Registrar may, on application by the registered owner of a trademark made in the prescribed manner and on payment of the prescribed fee, make any of the following amendments to the register:
(a) correct any error or enter any change in the name, address or description of the registered owner;
(2) Subsection 41(1) of the Act is amended by striking out “or” at the end of paragraph (d), by adding “or” at the end of paragraph (e) and by adding the following after paragraph (e):
(f) subject to the regulations, merge registrations of the trademark that stem, under section 39, from the same original application.
(3) Section 41 of the Act is amended by adding the following after subsection (2):

Obvious error

(3) The Registrar may, within six months after an entry in the register is made, correct any error in the entry that is obvious from the documents relating to the registered trademark in question that are, at the time that the entry is made, on file in the Registrar’s office.
Removal of registration
(4) The Registrar may, within three months after the registration of a trademark, remove the registration from the register if the Registrar registered the trademark without considering a previously filed request for an extension of time to file a statement of opposition.
347. Section 42 of the Act is repealed.
348. The Act is amended by adding the following after section 44:

Registrar may require amendment

44.1 (1) The Registrar may give notice to the registered owner of a trademark requiring the owner to furnish the Registrar, in the prescribed time and manner, with a statement of the goods or services in respect of which the trademark is registered, in which those goods or services are grouped in the manner described in subsection 30(3).
Amendments to register
(2) The Registrar may amend the register in accordance with the statement furnished under subsection (1).
Failure to furnish statement
(3) If the statement required by subsection (1) is not furnished, the Registrar shall by a further notice fix a reasonable time after which, if the statement is not furnished, the Registrar may expunge the registration of the trademark or refuse to renew it.
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.
1994, c. 47, s. 200(1)
349. Subsections 45(1) and (2) of the Act are replaced by the following:

Registrar may request evidence of use

45. (1) After three years beginning on the day on which a trademark is registered, unless the Registrar sees good reason to the contrary, the Registrar shall, at the written request of any person who pays the prescribed fee — or may, on his or her own initiative — give notice to the registered owner of the trademark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to all the goods or services specified in the registration or to those that may be specified in the notice, whether the trademark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.

Form of evidence

(2) The Registrar shall not receive any evidence other than the affidavit or statutory declaration, but may receive representations made in the prescribed manner and within the prescribed time by the registered owner of the trademark or by the person at whose request the notice was given.

Service

(2.1) The registered owner of the trademark shall, in the prescribed manner and within the prescribed time, serve on the person at whose request the notice was given any evidence that the registered owner submits to the Registrar. Those parties shall, in the prescribed manner and within the prescribed time, serve on each other any written representations that they submit to the Registrar.

Failure to serve

(2.2) The Registrar is not required to consider any evidence or written representations that was not served in accordance with subsection (2.1).
1992, c. 1, s. 135(1)
350. Section 46 of the Act is replaced by the following:

Term

46. (1) Subject to any other provision of this Act, the registration of a trademark is on the register for an initial period of 10 years beginning on the day of the registration and for subsequent renewal periods of 10 years if, for each renewal, the prescribed renewal fee is paid within the prescribed period.

Notice to renew

(2) If the initial period or a renewal period expires and the prescribed renewal fee has not been paid, the Registrar shall send a notice to the registered owner stating that if the fee is not paid within the prescribed period, the registration will be expunged.

Failure to renew

(3) If the prescribed renewal fee is not paid within the prescribed period, the Registrar shall expunge the registration. The registration is deemed to have been expunged at the expiry of the initial period or the last renewal period.
Renewal
(4) If the prescribed renewal fee is paid within the prescribed period, the renewal period begins at the expiry of the initial period or the last renewal period.
Extension
(5) A registered owner is not permitted to apply under section 47 for an extension of the prescribed period until that period has expired, and the Registrar is not permitted to extend the period by more than seven days.

Prescribed period

(6) For the purposes of this section, the prescribed period begins at least six months before the expiry of the initial period or the renewal period and ends no earlier than six months after the expiry of that period.
351. The Act is amended by adding the following after section 47:

Proceeding under section 45

47.1 (1) The Registrar shall grant an extension of any time limit fixed under this Act in the context of a proceeding commenced by the Registrar, on his or her own initiative, under section 45, if the extension is requested after the expiry of the time limit and within two months after its expiry.

One time extension

(2) No extension under subsection (1) shall be granted more than once.
352. Subsection 48(3) of the Act is replaced by the following:

Transfer of application

(3) The Registrar shall, subject to the regulations, record the transfer of an application for the registration of a trademark on the request of the applicant or, on receipt of evidence satisfactory to the Registrar of the transfer, on the request of a transferee of the application.

Transfer of trademark

(4) The Registrar shall, subject to the regulations, register the transfer of any registered trademark on the request of the registered owner or, on receipt of evidence satisfactory to the Registrar of the transfer, on the request of a transferee of the trademark.

Removal of recording or registration

(5) The Registrar shall remove the recording or the registration of the transfer referred to in subsection (3) or (4) on receipt of evidence satisfactory to the Registrar that the transfer should not have been recorded or registered.
353. Section 49 of the Act and the heading before it are replaced by the following:

CHANGE OF PURPOSE IN USE OF TRADEMARK

Change of purpose

49. If a sign or combination of signs is used by a person as a trademark for any of the purposes or in any of the manners mentioned in the definition “certification mark” or “trademark” in section 2, no application for the registration of the trademark shall be refused and no registration of the trademark shall be expunged, amended or held invalid merely on the ground that the person or a predecessor in title uses the trademark or has used it for any other of those purposes or in any other of those manners.
354. Subsection 57(1) of the Act is replaced by the following:

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.
355. Section 61 of the Act is renumbered as subsection 61(1) and is amended by adding the following:

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.
356. Section 64 of the Act is replaced by the following:

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.
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.

Definition

(3) In this section, “electronic”, in reference to a form or means, includes optical, magnetic and other similar forms or means.
357. Section 65 of the Act is replaced by the following:

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) 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 and the amount of those fees;
(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 correspondence 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.
358. The Act is amended by adding the following after section 65:

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.
1993, c. 15, s. 71
359. Section 69 of the Act and the heading before it are replaced by the following:

TRANSITIONAL PROVISIONS

Application not advertised

69. 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.

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 and 40; and
(b) the definition “Nice Classification” in section 2, subsections 6(2) to (4), sections 28 and 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.

Regulations

(2) For greater certainty, a regulation made under section 65, as enacted by section 357 of the Economic Action Plan 2014 Act, No. 1, applies to an application referred to in subsection (1), unless the regulation provides otherwise.

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.

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.

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.

Registered trademarks — applications filed before coming into force

72. Any matter arising on or after the day on which section 345 of the Economic Action Plan 2014 Act, No. 1 comes into force, in respect of a trademark registered on or after that day on the basis of an application filed before that day, shall be dealt with and disposed of in accord-ance with the provisions of this Act.
Registered trademarks
73. (1) Subject to subsections (2) to (4), any matter arising on or after the day on which section 345 of the Economic Action Plan 2014 Act, No. 1 comes into force, in respect of a trademark registered before that day, shall be dealt with and disposed of in accordance with the provisions of this Act.

Application of paragraph 26(2)(e.1)

(2) Paragraph 26(2)(e.1) does not apply to a trademark referred to in subsection (1) unless the register is amended under section 44.1.
Amending register
(3) The Registrar may amend the register kept under section 26 to reflect the amendments to this Act that are made by the Economic Action Plan 2014 Act, No. 1.

Subsection 46(1)

(4) Subsection 46(1), as it read immediately before the day on which section 350 of the Economic Action Plan 2014 Act, No. 1 comes into force, continues to apply to a registration that is on the register on the day before the day on which that section comes into force until the registration is renewed.

Replacement of “wares”

360. The Act is amended by replacing “wares”, wherever it occurs, with “goods”.

Replacement of “trade-mark”

361. The English version of the Act is amended by replacing “trade-mark”, “trade-marks”, “Trade-mark” and “Trade-marks” with “trademark”, “trademarks”, “Trademark” and “Trademarks”, respectively.

Replacement of “trade-name”

362. The English version of the Act is amended by replacing “trade-name”, wherever it occurs, with “trade name”.
Replacement of “utiliser”, etc.
363. The French version of the Act is amended by replacing “utiliser”, “utilisé”, “utilisée” and “utilisation” with “employer”, “employé”, “employée” and “emploi”, respectively, with any grammatical changes that the circumstances require, in the following provisions:
(a) the portion of paragraph 7(d) before subparagraph (i);
(b) paragraph 9(1)(f);
(c) section 11.1;
(d) the portion of subsection 11.14(2) before paragraph (a);
(e) the portion of subsection 11.15(2) before paragraph (a);
(f) subsections 11.16(1) and (2);
(g) the portion of subsection 11.17(1) before paragraph (a);
(h) subsections 11.18(1) to (4);
(i) subsection 11.19(1);
(j) the portion of section 11.2 before paragraph (a);
(k) subsection 17(2); and
(l) paragraph 20(1)(a) and subsection 20(2).

Consequential Amendments

2007, c. 25

Olympic and Paralympic Marks Act

364. Paragraphs 5(1)(a) and (b) of the Olympic and Paralympic Marks Act are replaced by the following:
(a) of any offending goods, packaging, labels and advertising material; and
(b) of any equipment used to apply to those goods, packaging, labels or advertising material a mark whose adoption or use is prohibited under section 3.
Replacement of “wares”
365. The Act is amended by replacing “wares”, wherever it occurs, with “goods”.

Terminology

Replacement of “trade-mark” in other Acts

366. (1) Unless the context requires otherwise, “trade-mark”, “trade-marks”, “Trade-mark”, “Trade-marks”, “trade mark” and “trade marks” are replaced by “trademark”, “trademarks”, “Trademark” or “Trademarks”, as the case may be, in the English version of any Act of Parliament, other than this Act and the Trademarks Act.

Bills before Parliament

(2) Subsection (1) also applies to the provisions of any bill introduced in the 2nd session of the 41st Parliament that receives royal assent.
Replacement of “trade-mark” in regulations
(3) Unless the context requires otherwise, “trade-mark”, “trade-marks”, “Trade-mark”, “Trade-marks”, “trade mark” and “trade marks”, are replaced by “trademark”, “trademarks”, “Trademark” or “Trademarks”, as the case may be, in the English version of any regulation, as defined in subsection 2(1) of the Statutory Instruments Act.

David Michaels

David Michaels, J.D., B.Eng., CHRM is a trained attorney who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993. David is a legal blogger, brand consultant, an eCommerce entrepreneur, and an aeronautical engineer. http://ca.linkedin.com/in/davidtmichaels/ Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author's notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.