TABLE OF CONTENTS BINDER 1. Trade-Marks Act Annotated

Transcription

1 TABLE OF CONTENTS 1 BINDER 1 Foreword... i Preface... v Note from the Editor-in-Chief... vii Table of Contents... 1 Table of Cases Index Table of Concordance Trade-Marks Act Annotated SHORT TITLE Section 1 Short title INTERPRETATION 2 Definitions When deemed to be adopted (1) When deemed to be used (2) Idem (3) Use by export When deemed to be made known (1) When mark or name confusing (2) Idem (3) Idem (4) Idem (5) What to be considered BINDER 2 Trade-Marks Act Annotated, Cont d UNFAIR COMPETITION AND PROHIBITED MARKS 7 Prohibitions Warranty of lawful use

2 2 9 (1) Prohibited marks (2) Consent to use Further prohibitions Further Prohibitions Further prohibitions Further Prohibitions Definitions (1) List (2) Statement of Minister (3) Information (4) Removal from list (1) Statement of objection (2) Ground (3) Content (4) Counter statement (5) Evidence and hearing (6) Withdrawal of objection (7) Decision (1) Prohibited adoption of indication for wines (2) Prohibited use (1) Prohibited adoption of indication for spirits (2) Prohibited use (1) Exception for personal names (2) Exception for comparative advertising (3) Exception not applicable to packaging (1) Continued use (2) Definition of Canadian (1) Exception for disuse (2) Exceptions for customary names (3) Exceptions for generic names for wines (4) Exceptions for generic names for spirits (5) Governor in Council amendment (1) Exceptions for failure to take proceedings (2) Idem Transitional REGISTRABLE TRADE-MARKS 12 (1) When trade-mark registrable (2) Idem (1) When distinguishing guises registrable (2) Effect of registration (3) Not to limit art or industry (1) Registration of marks registered abroad (2) Trade-marks regarded as registered abroad (1) Registration of confusing marks (2) Record (3) Amendment October 2013 Trade Marks

3 3 PERSONS ENTITLED TO REGISTRATION OF TRADE-MARKS 16 (1) Registration of marks used or made known in Canada 16-1 (2) Marks registered and used abroad (3) Proposed marks (4) Where application for confusing mark pending (5) Previous use or making known VALIDITY AND EFFECT OF REGISTRATION 17 (1) Effect of registration in relation to previous use, etc (2) When registration incontestable (1) When registration invalid (2) Exception BINDER 3 Trade-Marks Act Annotated, Cont d 19 Rights conferred by registration (1) Infringement (2) Exception (1) Concurrent use of confusing marks (2) Registration of order (1) Depreciation of goodwill (2) Action in respect thereof CERTIFICATION MARKS 23 (1) Registration of certification marks (2) Licence (3) Unauthorized use (4) Action by unincorporated body Registration of trade-mark confusing with certification mark Descriptive certification mark REGISTER OF TRADE-MARKS 26 (1) Register (2) Information to be shown (1) Register under Unfair Competition Act (2) Trade-marks registered before Unfair Competition Act 27-1

4 4 (3) Trade-marks registered under Unfair Competition Act (1) Indexes List of trade-mark agents (1) Inspection (2) Register of registered users APPLICATIONS FOR REGISTRATION OF TRADE-MARKS 30 Contents of application (1) Applications based on registration abroad (2) Evidence required in certain cases (1) Further information in certain cases (2) Registration to be restricted Applications by trade unions, etc (1) Date of application abroad deemed date of application in Canada (2) Evidence requests (3) How and when evidence must be furnished Disclaimer Abandonment (1) When applications to be refused (2) Notice to applicant (3) Doubtful cases (1) Statement of opposition (2) Grounds (3) Content (4) Frivolous opposition (5) Substantial issue (6) Counter statement (7) Evidence and hearing (7.1) Withdrawal of opposition (7.2) Abandonment of application (8) Decision (1) When application to be allowed (2) No extension of time (3) Exception REGISTRATION OF TRADE-MARKS 40 (1) Registration of trade-marks (2) Proposed trade-mark (3) Abandonment of application (4) Form and effect (5) Section 34 does not apply AMENDMENT OF THE REGISTER 41 (1) Amendments to register (2) Conditions October 2013 Trade Marks

5 42 (1) Representative for service (2) Change of address Additional representations (1) Notice for information (2) Amendments to register (3) Failure to give information (1) Registrar may request evidence of user (2) Form of evidence (3) Effect of non-user (4) Notice to owner (5) Action by Registrar RENEWAL OF REGISTRATIONS 46 (1) Renewal (2) Notice to renew (3) Failure to renew (4) Effective date of renewal EXTENSIONS OF TIME 47 (1) Extensions of time (2) Conditions BINDER 4 Trade-Marks Act Annotated, Cont d TRANSFER 48 (1) Trade-mark transferable (2) Where two or more persons interested (3) Registration of transfer CHANGE OF PURPOSE IN USE OF MARK 49 Change of purpose LICENCES 50 (1) Licence to use trade-mark (2) Idem (3) Owner may be required to take proceedings (1) Use of trade-marks by related companies

6 6 (2) Where difference in composition (3) Definition of pharmaceutical preparation [Former section 51, R.S.C. 1970, c. T-10] When trade-mark not to be held invalid LEGAL PROCEEDINGS 52 Definitions (1) Proceedings for interim custody (2) Security (3) Lien for charges (4) Prohibition of imports (5) How application made (6) Limitation (1) Proceedings for detention by Minister (2) How application made (3) Court may require security (4) Application for directions (5) Minister may allow inspection (6) Where applicant fails to commence an action (7) Where court finds in plaintiff s favour Power of court to grant relief Re-exportation of wares (1) Evidence (2) Idem (3) Idem (4) Idem Jurisdiction of Federal Court (1) Appeal (2) Procedure (3) Notice to owner (4) Public notice (5) Additional evidence (1) Exclusive jurisdiction of Federal Court (2) Restriction How proceedings instituted (1) Notice to set out grounds (2) Reply (3) Hearing (1) Registrar to transmit documents (2) Register of registered users Judgments to be filed GENERAL 62 Administration (1) Registrar October 2013 Trade Marks

7 (2) Acting registrar (3) Assistants (4) Appeal Publication of registrations Regulations (1) Time limit deemed extended (2) When Trade-marks Office closed for business (3) Publication NEWFOUNDLAND 67 (1) Registration of trade-mark before April 1, (2) Applications for trade-marks pending April 1, Use of trade-mark or trade-name before April 1, TRANSITIONAL PROVISION 69 Prior applications for registration Trade-Marks Act Canadian Trade-marks Act Trade-Marks Regulations Trade-Marks Regulations Practice Notices Practice Notices A-1 Trade-Marks Examination Manual and Amendments Trade-Marks Examination Manual B-1 Trade-Marks Forms Trade-Marks Forms C-1

8 8 CIPO CIPO D-1 Unfair Competition Act Unfair Competition Act Paris Convention Convention of the Union of Paris Contracting Parties of Treaties by WIPO Contracting Parties of Treaties by WIPO BINDER 5 Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks A-1 Related Legislation Related Legislation Trade-Marks and the Internet Trade-Marks and the Internet Procedural Summaries Procedural Summaries October 2013 Trade Marks

9 9 Quantum Table Quantum Table Words & Phrases Words & Phrases... WP-1 BINDER 6 U.S.P.T.O. U.S. Trademark Law... USTL-1