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

Marginal note:When deemed to be adopted

3. A trade-mark is deemed to have been adopted by a person when that person or his predecessor in title commenced to use it in Canada or to make it known in Canada or, if that person or his predecessor had not previously so used it or made it known, when that person or his predecessor filed an application for its registration in Canada.

Marginal note:When deemed to be used

• 4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.

• Marginal note:Idem

  (2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

• Marginal note:Use by export

  (3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.

Marginal note:When deemed to be made known

5. A trade-mark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with wares or services, and

• (a) the wares are distributed in association with it in Canada, or

• (b) the wares or services are advertised in association with it in

  • (i) any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or users of the wares or services, or

  • (ii) radio broadcasts ordinarily received in Canada by potential dealers in or users of the wares or services,

and it has become well known in Canada by reason of the distribution or advertising.

Marginal note:When mark or name confusing

• 6. (1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.

• Marginal note:Idem

  (2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.

• Marginal note:Idem

  (3) The use of a trade-mark causes confusion with a trade-name if the use of both the trade-mark and trade-name in the same area would be likely to lead to the inference that the wares or services associated with the trade-mark 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 wares or services are of the same general class.

• Marginal note:Idem

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

• Marginal note:What to be considered

  (5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including

  • (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;

  • (b) the length of time the trade-marks or trade-names have been in use;

  • (c) the nature of the wares, services or business;

  • (d) the nature of the trade; and

  • (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.