Trade-marks Act
The Trade-marks Act governs the registration and protection of trade-marks in Canada. A trade-mark is a sign (word, design, sound, smell, colour, or combination) used to distinguish the goods or services of one person from those of others. Registration provides the exclusive right to use the trade-mark across Canada for 10 years (renewable indefinitely). The Act establishes the application and examination process, grounds for opposition, infringement provisions, and remedies. Canada adopted the Nice Classification system and acceded to the Madrid Protocol, the Singapore Treaty, and other international IP agreements through the 2019 amendments (Bill C-31, the Budget Implementation Act).
Legal area: Intellectual property law protects creations of the mind, including copyright, patents, trade-marks, and industrial designs.
Year enacted: 1985
Full text: https://laws-lois.justice.gc.ca/eng/acts/T-13/
Key Provisions
- Section 2: Definition of trade-mark (sign distinguishing goods/services)
- Section 12: Registrable marks (distinctiveness requirement)
- Section 16: Entitlement to registration
- Section 19: Rights conferred by registration (exclusive use across Canada)
- Section 20: Infringement of registered trade-mark (likelihood of confusion)
- Section 22: Depreciation of goodwill (passing off and dilution)
- Section 38: Opposition proceedings
- Section 45: Summary expungement (non-use proceedings)
Significance
The Trade-marks Act is essential for brand protection in Canada. The 2019 amendments (implementing the Canada-EU Comprehensive Economic and Trade Agreement) fundamentally reformed the Act: eliminating the requirement to declare intention to use, adopting the Nice Classification system, and acceding to the Madrid Protocol. The distinctiveness requirement (section 12) has been extensively litigated. The Act’s confusion test assesses the likelihood of confusion in the mind of the average consumer.