STATUS OF NEWFOUNDLAND TRADE MARKS UNDER THE CANADIAN TRADE-MARKS ACT LAURENT CARRIÈRE* ROBIC, LLP LAWYERS, PATENT & TRADEMARK AGENTS

Text of section 1.0 Related Sections 2.0 Related Regulations 3.0 Corresponding Sections in Prior Legislation 3.1 S.C. 1949, c. 6, s. 26. 3.2 R.S.C. 1952, c. 274, s. 61. 3.3 S.C. 1953, c. 49, s. 65 & 66. 3.4 S.C. 1970, c. T-10, s. 67 & 68. 4.0 Purpose 5.0 Commentary 5.1 History 5.2 Rights arising 5.3 Prior Newfoundland Legislation 5.4 5.5 Editorial Comment 5.6 Saving Clause 5.7 Second Editorial Comment 6.0 Case Law 6.1 Newfounland 6.2 Canada 7.0 List of Cases 7.1 Newfoundland 7.2 Canada 8.0 Authors 8.1 Canada 8.2 Varia 9.0 Varia 9.1 Of Trade Marks and the Registration thereof

© CIPS, 2003. * Lawyer and trade-mark agent, Laurent Carrière is a partner with ROBIC, LLP, a multidisciplinary firm of lawyers, patent and trademark agents. This text is part of a comment on sections 67 and 68 of the Trade-marks Act published in Robic-Leger's Canadian Trade-marks Act Annotated (Toronto, Carswell, 1984), as up-dated. Publication 303. ROBIC, LLP www.robic.ca [email protected]

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NEWFOUNDLAND

TERRE -NEUVE

REGISTRATION OF TRADE-MARK BEFORE APRIL 1, 1949

ENREGISTREMENT D’UNE MARQUE DE COMMERCE - TERRE-NEUVE

67. (1) The registration of a trade mark under the laws of Newfoundland before April 1, 1949 has the same force and effect in the Province of Newfoundland as if Newfoundland had not become part of Canada, and all rights and privileges acquired under or by virtue of those laws may continue to be exercised or enjoyed in the Province of Newfoundland as if Newfoundland had not become part of Canada.

67. (1) L’enregistrement d’une marque de commerce sous le régime des lois de Terre-Neuve, dans leur version du 31 mars 1949, a le même effet que si Terre-Neuve n’était pas devenue une province du Canada, les droits et privilèges en découlant pouvant continuer d’y être exercés.

APPLICATIONS FOR TRADE-MARKS PENDING APRIL 1, 1949

DEMANDE D’ENREGISTREMENT EN SUSPENS LE 1er AVRIL 1949

(2) The laws of Newfoundland as they existed immediately before April 1, 1949 continue to apply in respect of applications for the registration of trade marks under the laws of Newfoundland pending at that time and any trade marks registered under those applications shall, for the purposes of this section, be deemed to have been registered under the laws of Newfoundland before April 1, 1949.

(2) Les lois de Terre-Neuve, dans leur version du 31 mars 1949, continuent de régir les demandes d’enregistrement de marques de commerce alors en suspens. Les marques de commerce enregistrées en conséquence sont réputées, pour l’application du présent article, l’avoir été aux termes de ces lois.

USE OF TRADE-MARK OR TRADENAME BEFORE APRIL 1, 1949

EMPLOI D’UNE MARQUE COMMERCE - TERRE-NEUVE

For the purposes of this Act, the use or making known of a trade mark or the use of a trade-name in Newfoundland before April 1, 1949 shall not be deemed to be a use or making known of such trade mark or a use of such trade-name in Canada before that date.

Pour l’application de la présente loi, l’emploi ou la révélation d’une marque de commerce ou l’emploi d’un nom commercial, à Terre-Neuve, avant le 1er avril 1949, n’est pas censé constituer un emploi ou une révélation de cette marque ou un emploi de ce nom, avant cette date, au Canada.

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S.C. 1993, c. 15, s. 71

§1.0

Related Sections

Section 2 Definitions: “trade mark”, “trade name”; section 4 When deemed to be used; section 5 When deemed to be made known; section 16 Registration of marks used or made known in Canada; section 17 Effect of registration; section 19 Rights conferred by registration; section 31 Application based on registration abroad; section 68 Use of Trade-Mark or Trade-name before April 1, 1949.

§2.0

Related Regulations

None.

§3.0

Corresponding Sections in Prior Legislation

§3.1

S.C. 1949, c. 6, s. 26.

60A. (1) The registration of a trade mark under the laws of Newfoundland prior to the first day of April, nineteen hundred and forty-nine, shall have the same force and effect in the Province of Newfoundland as if Newfoundland had not become part of Canada, and all rights and privileges acquired under or by virtue thereof may continue to be exercised or enjoyed in the Province of Newfoundland as if Newfoundland had not become part of Canada.

60A. (1) L’enregistrement d’une marque de commerce aux termes des lois de Terre-Neuve antérieurement au premier avril mil neuf cent quarante-neuf aura la même vigueur et le même effet dans la province de Terre-Neuve que si TerreNeuve n’était pas devenue partie du Canada, et l’exercice ou la jouissance de tous les droits et privilèges acquis sous le régime ou en vertu d’un tel enregistrement seront maintenus dans la province de Terre-Neuve, comme si Terre-Neuve n’était pas devenue partie du Canada.

(2) The laws of Newfoundland as they existed immediately prior to the expiration of the thirty-first day of March, nineteen hundred and forty-nine, shall continue to apply in respect of applications for the registration of trade marks under the laws of Newfoundland pending at that time and

(2) Les lois de Terre-Neuve, telles qu’elles existaient immédiatement avant l’expiration du trente et unième jour de mars mil neuf cent quarante-neuf, continueront de s’appliquer aux demandes d’enregistrement de marques de commerce, sous le régime des lois de

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any trade marks registered under such applications shall, for the purposes of this section, be deemed to have been registered under the laws of Newfoundland prior to the first day of April, nineteen hundred and forty-nine.

§3.2

Terre-Neuve, en instance à cette date et toutes marques de commerce enregistrées aux termes de semblables demandes seront, pour l’application du présent article, censées avoir été enregistrées en conformité des lois de Terre-Neuve antérieurement au premier avril mil neuf cent quarante-neuf.

R.S.C. 1952, c. 274, s. 61.

61. (1) The registration of a trade mark under the laws of Newfoundland prior to the 1st day of April, 1949, shall have the same force and effect in the Province of Newfoundland as if Newfoundland had not become part of Canada, and all rights and privileges acquired under or by virtue thereof may continue to be exercised or enjoyed in the Province of Newfoundland as if Newfoundland had not become part of Canada.

61. (1) L’enregistrement d’une marque de commerce aux termes des lois de TerreNeuve antérieurement au 1 er avril 1949 aura la même vigueur et le même effet dans la province de Terre-Neuve que si Terre-Neuve n’était pas devenue partie du Canada, et l’exercice ou la jouissance de tous les droits et privilèges acquis sous le régime ou en vertu d’un tel enregistrement peuvent être maintenus dans la province de Terre-Neuve, comme si Terre-Neuve n’était pas devenue partie du Canada.

(2) The laws of Newfoundland as they existed immediately prior to the expiration of the 31st day of March, 1949, shall continue to apply in respect of applications for the registration of trade marks under the laws of Newfoundland pending at that time and any trade marks registered under such applications shall, for the purposes of this section, be deemed to have been registered under the laws of Newfoundland prior to the 1st day of April, 1949. 1949, c. 6, s. 26.

(2) Les lois de Terre-Neuve, telles qu’elles existaient immédiatement avant l’expiration du 31 mars 1949, doivent continuer de s’appliquer aux demandes d’enregistrement de marques de commerce, sous le régime des lois de Terre-Neuve, en instance à cette date et toutes marques de commerce enregistrées aux termes de semblables demandes seront, pour l’application du présent article, censées avoir été enregistrées en conformité des lois de Terre-Neuve antérieurement au 1er avril 1949. 1949, c. 6, art. 26.

62. Any application for the registration of a trade mark received by the Registrar at any time before the 1st day of October, 1932, shall be dealt with in accordance

62. (1) Toute demande d’enregistrement d’une marque de commerce reçue par le registraire à quelque époque avant le 1er octobre 1932 doit être traitée

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with the provisions of the Trade Mark and Design Act, and registrations made pursuant to such applications shall for the purposes of this Act be deemed to have been on the register on the 1st day of September, 1932. 1932, c. 38, s. 61.

§3.3

conformément aux dispositions de la Loi des marques de commerce et dessins de fabrique, et les enregistrements faits en conformité de ces demandes sont censés, pour les fins de la présente loi, avoir été sur le registre le 1er septembre 1932. 1932, c. 38, art. 61.

S.C. 1953, c. 49, s. 65 & 66.

65. (1) The registration of a trade mark under the laws of Newfoundland prior to the 1st day of April 1949, has the same force and effect in the Province of Newfoundland as if Newfoundland had not become part of Canada, and all rights and privileges acquired under or by virtue thereof may continue to be exercised or enjoyed in the Province of Newfoundland as if Newfoundland had not become part of Canada.

65. (1) L’enregistrement d’une marque de commerce selon les lois de Terre-Neuve avant le 1er avril 1949 a la même vigueur et le même effet dans la province de Terre-Neuve que si cette province n’était pas devenue une partie du Canada, et l’exercice ou la jouissance de tous droits et privilèges acquis aux termes ou en vertu de cet enregistrement peuvent être maintenus dans la province de TerreNeuve comme si Terre-Neuve ne faisait pas partie du Canada.

(2) The laws of Newfoundland as they existed immediately prior to the expiration of the 31st day of March, 1949, continue to apply in respect of applications for the registration of trade marks under the laws of Newfoundland pending at that time and any trade marks registered under such applications shall, for the purposes of this section, be deemed to have been registered under the laws of Newfoundland prior to the 1st day of April, 1949.

(2) Les lois de Terre-Neuve, telles qu’elles existaient immédiatement avant l’expiration du 31 mars 1949, continueront de s’appliquer à l’égard des demandes d’enregistrement de marques de commerce, sous le régime des lois de Terre-Neuve, alors en instance, et toutes marques de commerce déposées suivant telles demandes seront considérées, aux fins du présent article, comme ayant été déposées en vertu des lois de TerreNeuve avant le 1er avril 1949.

66. For the purposes of this Act the use or making known of a trade mark or the use of a trade name in Newfoundland before the 1st day of April, 1949, shall not be deemed to be a use or making known of such trade mark or a use of such trade name in Canada before such date.

66. Aux fins de la présente loi, l’emploi ou la révélation d’une marque de commerce ou l’emploi d’un nom commercial, à Terre-Neuve, avant le 1er avril 1949, n’est pas censé un emploi ou une révélation de cette marque ou un emploi de ce nom au Canada avant ladite date.

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§3.4

S.C. 1970, c. T-10, s. 67 & 68.

67. (1) The registration of a trade mark under the laws of Newfoundland prior to the 1st day of April 1949 has the same force and effect in the Province of Newfoundland as if Newfoundland had not become part of Canada, and all rights and privileges acquired under or by virtue thereof may continue to be exercised or enjoyed in the Province of Newfoundland as if Newfoundland had not become part of Canada.

67. (1) L’enregistrement d’une marque de commerce selon les lois de Terre-Neuve avant le 1er avril 1949 a la même vigueur et le même effet dans la province de Terre-Neuve que si cette province n’était pas devenue une partie du Canada, et l’exercice ou la jouissance de tous droits et privilèges acquis aux termes ou en vertu de cet enregistrement peuvent être maintenus dans la province de TerreNeuve comme si Terre-Neuve ne faisait pas partie du Canada.

(2) The laws of Newfoundland as they existed immediately prior to the expiration of the 31st day of March 1949 continue to apply in respect of applications for the registration of trade marks under the laws of Newfoundland pending at that time and any trade marks registered under such applications shall, for the purposes of this section, be deemed to have been registered under the laws of Newfoundland prior to the 1st day of April 1949. 1952-53, c. 49, s. 65.

(2) Les lois de Terre-Neuve, telles qu’elles existaient immédiatement avant l’expiration du 31 mars 1949, continueront de s’appliquer à l’égard des demandes d’enregistrement de marques de commerce, sous le régime des lois de Terre-Neuve, alors en instance, et toutes marques de commerce déposées suivant telles demandes seront considérées, aux fins du présent article, comme ayant été déposées en vertu des lois de TerreNeuve avant le 1 er avril 1949. 1952-53, c. 49, art. 65.

68. For the purposes of this Act the use or making known of a trade mark or the use of a trade name in Newfoundland before the 1st day of April 1949 shall not be deemed to be a use or making known of such trade mark or a use of such trade name in Canada before that date. 195253, c. 49, s. 66.

68. Aux fins de la présente loi, l’emploi ou la révélation d’une marque de commerce ou l’emploi d’un nom commercial, à Terre-Neuve, avant le 1er avril 1949, n’est pas censé un emploi ou une révélation de cette marque ou un emploi de ce nom au Canada avant ladite date. 1952-53, c. 49, art. 66.

§4.0

Purpose

The purpose of section 67 is to preserve, in the Province of Newfoundland [now Newfoundland and Labrador], the rights and privileges existing under or by virtue of the ROBIC, LLP www.robic.ca [email protected]

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registration of a trade mark under the laws of that province prior to April 1, 1949. See Aladdin Industries Inc. v. Canadian Thermos Products Ltd. and Registrar of Trade Marks, [1969] 2 Ex. C.R. 80.

§5.0

Commentary

§5.1

History

The implementation of the Terms of Union of Newfoundland with Canada, as regard to trade marks, has been described as follows by Kerr J. in Aladdin Industries, Inc. v. Canadian Thermos Products Ltd., [1969] 2 Ex. C.R. 80 at pp. 122-123: [91] Section 65 [now s. 67] carried into the Trade Marks Act Term 21 of the Agreement containing Terms of Union between Canada and Newfoundland which was approved by the Parliament of Canada in Acts of 1949, Chapter 1 [13 Geo. VI, S.C. 1949, c. 1], and confirmed by the British North America Act, 1949 [12-13 Geo. VI, c. 22 (U.K.), now the Newfoundland Act]. Term 21 is as follows: 21. (1) Canada will provide that the registration of a trade mark under the laws of Newfoundland prior to the date of Union shall have the same force and effect in the Province of Newfoundland as if the Union had not been made, and all rights and privileges acquired under or by virtue thereof may continue to be exercised or enjoyed in the Province of Newfoundland as if the Union had not been made. (3) The laws of Newfoundland existing at the date of Union shall continue to apply in respect of applications for the registration of trade marks under the laws of Newfoundland pending at the date of Union and any trade marks registered upon such applications shall, for the purposes of this Term, be deemed to have been registered under the laws of Newfoundland prior to the date of Union. [92] Appendix II to Volume V of the 1949 Consolidation of Statutory Orders and Regulations provides an accurate summary in respect of the Terms of Union, and for convenience I will repeat it here, as follows: APPENDIX II NEWFOUNDLAND The Agreement containing the Terms of Union of Newfoundland with Canada was approved by chapter 1 of the Statutes of Canada, 1949, ROBIC, LLP www.robic.ca [email protected]

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and confirmed by The British North America Act, 1949. By paragraph (1) of Term 18 all laws in force in Newfoundland at or immediately prior to the date of Union continue therein as if the Union had not been made, subject nevertheless to be repealed, abolished or altered by the Parliament of Canada or by the Legislature of the Province of Newfoundland according to the authority of the Parliament or of the Legislature under the British North America Acts, 1867 to 1946. Paragraph (2) of Term 18 provides that Statutes of the Parliament of Canada in force at the date of Union, or any part thereof, shall come into force in the Province of Newfoundland on a day or days to be fixed by Act of the Parliament of Canada or by proclamation of the Governor General in Council issued from time to time. Paragraph (2) of Term 18 provides further that any such proclamation may provide for the repeal of any of the laws of Newfoundland that a)

are of general application;

b)

relate to the same subject-matter as the statute or part thereof so proclaimed; and

c)

could be repealed by the Parliament of Canada under paragraph (1) of Term 18.

Proclamations of the Governor General in Council bringing certain statutes of the Parliament of Canada into force in the Province of Newfoundland and repealing certain statutes of Newfoundland were issued on April 1, 1949 and September 13, 1949. For convenience the schedules to these proclamations, listing the statutes brought into force and the statutes repealed, are set forth hereunder. [93] The First Schedule, namely, Statutes of the Parliament of Canada to come into force in the Province of Newfoundland on April 1, 1949, includes the Exchequer Court Act, the Trade Mark and Design Act, and The Unfair Competition Act, 1932. [94] The Second Schedule, Statutes of Newfoundland to be repealed on April 1, 1949, includes Chapter 154, Consolidated Statutes of Newfoundland (Third Series), Of Trade Marks and the Registration Thereof, and Act No. 39 of 1948 amending chapter 154. [at 122-123] This last enumeration made by Mr. Justice Kerr should be supplemented by adding The Trade Marks (Amendment) Act, 1943, also included in the aforesaid Second Schedule as The Act No. 27 of 1943.

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With the 1985 revision of the Statutes of Canada, sections 67 and 68 have not been reproduced. This was an error which was remedied by the reintroduction of these sections through the Intellectual Property Law Improvement Act (S.C. 1993, c. 15).

§5.2

Rights arising

Within the territory of Newfoundland, the owner of a trade mark registered in that province prior to the 1st day of April, 1949, or deemed to have been registered before that date, continues to be vested with the same rights and privileges which the laws of Newfoundland afforded at the time that Newfoundland became part of Canada. It follows that where there has been registration of a trade mark in Canada prior to the 1st of April, 1949, the owner would not be able to assert a right of concurrent use in Newfoundland where there is a pre-existing Newfoundland registration regardless of whether obtained before or after the Canadian one. It seems, however, that the situation may be different in the case of an unregistered Newfoundland trade mark in use or having been used prior to the Union. As a second consequence, it follows that using or making known a trade mark in Newfoundland prior to April 1st 1949 will not constitute proper ground to obtain registration of this trade mark under the Canadian Act: however, use of this trade mark since that date should be sufficient basis to obtain registration under the Act. Any trade mark registered after the 31st day of March, 1949, based upon a Newfoundland trade mark application pending on the 31st day of March, 1949, is deemed to have been registered prior to the 1st day of April, 1949, and is governed by the laws of Newfoundland as they existed prior to the 1st day of April, 1949. On the other hand, all subsequent trade mark applications must be made under the Trade Marks Act. It is also to be noted that claiming the benefit of paragraph 14(1) or 12(2) of the Trademarks Act will not overcome such a constitutional territorial restriction. The restriction, however, could be limited to some of the wares but not the others. §5.3 Prior Newfoundland Legislation The Statutes of Newfoundland expressing the trade marks law in force until April 1st, 1949 were chapter 154 of the Newfoundland Consolidated Statutes, 1916 (3rd series) entitled “Of Trade Marks and Registration Thereof” which was amended by the Trade Marks and Registration Thereof (Amendment) Act, Statutes of Newfoundland 1943, no. 27 which added thereto sections 32 to 35 and by the Trade Marks and Registration Thereof (Amendment) Act, Statutes of Newfoundland 1948, no. 39 which substituted a new section 20(1)e and added sections 36 and 37. ROBIC, LLP www.robic.ca [email protected]

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Initially, the Newfounland trade-mark legislation was a mere duplication of the British Merchandise Marks Act, 1887. The Newfoundland Of Trade Marks and Registration Thereof statute, as in force on 1949-03-31, is reproduced under §9.1. Some provisions of interest contained in these statutes are • • • • • • • •

Once registered a trade-mark is to endure without limitation A trade-mark duly registered shall be assignable in law [most probably with the goodwill associated with the business] Right of action for infringement are penal in nature No provision for associated trade-marks No provision for licensing No provision for the recordal of license or security interest No provision for representative for service No provision for continuous user of the trade-mark.

It is to be noted that subsection 20(1) of the Newfoundland Act defined the five essential particulars, one of which a trade mark must possess in order to secure registration, but did not call for any prerequisite of use of a trade mark to obtain its registration. By the same token, there is no provision in the Newfoundland Trade Marks Act subjecting the maintenance of a Newfoundland registration to any current use of the trade mark. As stated by Professor Mitches (1969), [15 McGill L.J., at 433-434]: It is inconsistent that Newfoundland registrations are not required to be actively used in order to remain on the register especially in view of the use provisions under the Trade Marks Act. Under the terms of Union, term 18(1) provides that the laws of Newfoundland in force immediately prior to the date of the Union shall continue therein as if the Union had not been made, subject nevertheless to be repealed, abolished or altered by the Parliament of Canada. Whether this term in fact overrides term 21 which permits the status quo to remain vis-à-vis Newfoundland Trade Mark registrations made before the date of Union, even though Newfoundland is now part of the Dominion of Canada is one for discussion by constitutional authorities. Nevertheless, it would appear that by the combined effect of term 21 and the fact that trade marks are in the exclusive jurisdiction of the Dominion, the Parliament of Canada has the authority and the power to alter the Newfoundland trade mark law. If the Newfoundland Act were altered to require a use of a registered trade mark, the major inconsistencies between the Newfoundland Trade Marks Act and the Trade Marks Act would be circumvented. A Newfoundland trade mark registration is not subject to renewal under section 46 of the Canadian Trade-marks Act since under the laws of Newfoundland a registration is to last without limitation. ROBIC, LLP www.robic.ca [email protected]

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In view of the wording of section 26 of the Canadian Trade Marks Act, one may seriously question whether the Newfoundland register as existing on March 31, 1949, in fact forms part of the Canadian register. Indeed, s. 26 does not explicitly mention the Newfoundland register. It may follow that a trade mark registered in Newfoundland is not a “registered trade mark” within the meaning of section 2, namely a trade mark that is on the register kept under section 26. A contrary view has been taken, however, by Kerr J. in Aladdin Industries, Inc. v. Canadian Thermos Products Ltd., [1969] 2 Ex. C.R. 80 (Ex. Ct.), at 125-126. It would seem that this view was only an obiter dictum, as stated in the judgment. Therefore, it would further seem that the de facto administration of the patriated Newfoundland trade mark register by the Registrar is only a matter of convenience, not yet judicially challenged.

§5.4

Editorial Comment

Subsections 67(1) and (2) raise some questions of law which the courts have not yet answered: Is a trade mark registered in Newfoundland a trade mark within the meaning of section 2 of the Trade Marks Act? Should the words “trade mark” as used in section 67 have the meaning given to them under the laws of Newfoundland as they existed before the 1st day of April, 1949? Does a Newfoundland provincial court have jurisdiction to expunge or vary a Newfoundland registration? Does the Registrar have the jurisdiction to require from an applicant under the Trade Marks Act a territorial disclaimer due to the existence of a Newfoundland registration? The Trade Marks Office currently requires such a disclaimer based on section 67(1). The wording required by the Canadian Trade-marks Office with respect to such a territorial restriction is not constant. Some times it falls under the heading "RESTRICTION FOR USE/RESTRICTION D'EMPLOI", some times under the heading "AUTHORIZATION FOR USE/AUTORISATION D'EMPLOI" and sometimes under the heading: "CLAIMS/REVENDICATIONS". Here is a sampling of the wording found on Canadian trade-mark registrations: CLAIMS/REVENDICATIONS: Reconnue pour enregistrable en vertu de l'article 12(2) de la Loi sur les marques de commerce. Cet enregistrement est sujet aux dispositions de l'article 67(1) de la Loi sur ROBIC, LLP www.robic.ca [email protected]

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les marques de commerce, vu l'enregistrement No NFLD1301 selon les lois de Terre-neuve. ATLAS, LMC 301931. Cet enregistrement est sujet aux dispositions de l'article 67(1) de la Loi sur les marques de commerce, vu l'enregistrement No NFLD2484 selon les lois de Terre-neuve. Reconnue pour enregistrable en vertu de l'article 12(2) de la Loi sur les marques de commerce. LALMAN, LMC 283479. Reconnue pour enregistrable en vertu de l'article 14 de la Loi sur les marques de commerce. Cet enregistrement est sujet aux dispositions de l'article 65(1) de la Loi sur les Marques de Commerce en vue des enregistrements nos. 161, 162 et 163 de Terre-Neuve. MARTELL, LMC 131906. Cet enregistrement est sujet aux dispositions de l'article 65(1) de la Loi sur les Marques de Commerce en vue des enregistrements nos. 161, 162 et 163 de Terre-Neuve. MARTELL, LMC 131906. AUTHORIZATION FOR USE/AUTORISATION D'EMPLOI: Cet enregistrement est sujet aux dispositions de l'article 67(1) de la loi sur les marques de commerce (statuts révisés du Canada, 1970, chapitre T10) vu l'enregistrement No. 1036 selon les lois de Terre-Neuve. SABLES, LMC 354814. Cet enregistrement est sujet aux dispositions de l'article 65(1) de la Loi sur les marques de commerce vu l'enregistrement numéro 171 selon les lois de Terre-Neuve GITANE, LMC 147105. RESTRICTION FOR USE/RESTRICTION D'EMPLOI: Cet enregistrement est sujet aux dispositions de l'article 60-A de la présente loi en vue de l'enregistrement de Terre-Neuve No. 1-415 VALDA, LCD 39782. CET ENREGISTREMENT EST SUJET AUX DISPOSITIONS DE L'ARTICLE 61 DE LA PRESENTE LOI EN VUE DE L'ENREGISTREMENT DE TERRE-NEUVE NO.180. PAULA, LCD 50870. Le requérant demande un enregistrement restreint excluant la province de Terre-Neuve. INSPECTEUR MYSTO, LMC 571573. Cet enregistrement est restreint en excluant la province de TerreNeuve. VAKTRAK, LMC 495498.

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THIS REGISTRATION IS SUBJECT TO THE PROVISIONS OF SECTON 60-A OF THE TRADE MARKS ACT, IN VIEW OF NEWFOUNDLAND REGISTRATION NO. 3147 in respect of wares (1). CABOT, UCA421 63. Registration is subject to the provisions of SECTION 65(1) of the Trade Mark Act in view of Newfoundland Registration No. 748 in respect of wares (2)(3)(4)(5)(6)(7)(8). CHIX, UCA40541. The applicant respectfully requests that its registration be restricted to exclude the Province of Newfoundland. ANLAC, TMO 1020435. Restricted registration whereby the Province of Newfoundland is excluded. ARCTIC, TMA 542470. CLAIMS/REVENDICATIONS: Registration will be subject to the provisions of Section 67(1) of the Trade-marks Act, in view of Newfoundland Registration No. 0849. ARROW, TMO 1045512 RESTRICTION FOR USE/RESTRICTION D'EMPLOI: The applicant is agreeable to the condition that the registration to issue is subject to the provisions of Section 67(1) of the Trade- marks Act in view of Newfoundland registration No. NFLD0849. ARROW, TMO 1045512 This registration is subject to the provisions of Section 65(1) of Trade Marks Act in view of Newfoundland Registration No. 2671. AVERT, TMA1 52192. Registrability Recognized under Section 12(2) of the Trade-marks Act on wares (2). Registration is subject to the provisions of Section 67(1) of the Trade-marks Act, in view of Newfoundland Registration No. NFLD0164 on wares (2). BARCLAY'S, UCA12752. The application is for a restricted registration whereby the Province of Newfoundland is excluded. BASS BROS, BEERHOUSE & GRILL, TMO 1122582. Restricted registration whereby the Province of Newfoundland is excluded. BELL FLAVORS & FRAGRANCES CANADA, TMA 548120. Applicant excludes the Province of Newfoundland. BLACK SWAN, TMO 1134109. The applicant wishes to restrict its application to exclude the Province of Newfoundland. CHERRY BLOSSOM, TMO 1141066.

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Restriction registration is requested with respect to Newfoundland registration no. 2482. CLEAN-IT, TMA 543995. Registration is subject to the provisions of SECTIONS 60 (A) in respect of wares (18) and SECTION 65 (1) in respect of wares (29) to (46) inclusive, of the TRADE MARKS ACT in view of NEWFOUNDLAND REGISTRATION NO. 2121. CO-OP, UCA 26592. Registrations is subject to the provisions of Section 67(1) of the Trade Marks Act (Revised Statutes of Canada, 1970 - Chapter T-10) in view of Newfoundland Registration No. NFLD. 2477. DON JUANE, TMO 491899. Restricted registration whereby the province of Newfoundland is excluded pursuant to Section 67(1). GIPSY, TMA 538444. The applicant excludes the province of Newfoundland and Labrador from this application. KEYSTONE, TMO 1133253. The applicant restricts its rights in the subject trade-mark to exclude the province of Newfoundland. VIC-PLUS, TMO 1043406. This registration does not extend to the province of Newfoundland. LABEL, UCA 35846 RESTRICTION FOR USE/RESTRICTION D'EM PLOI: Newfoundland restriction. LINCOLN. TRAVEL WELL, TMO 1132958. Registration is subject to the provisions of Section 67(1) of the Trademarks Act, in view of Newfoundland Registration Nos. Nos. 151 and 1588. LISTEREX, TMA 190937. This registration is subject to the provisions of Section 67(1) of the Trade Marks Act (Revised Statutes of Canada, 1970-Chapter T-10) in view of Newfoundland Registration No(s). 0580, 0595 and 0599. MELROSE COFFEE, TMA 160246. CLAIMS/REVENDICATIONS: Registration will be subject to the provisions of Section 67(1) of the Trade-marks Act, in view of Newfoundland Registration No. NFLD0228. MGM GRAND, TMO 696896. RESTRICTION FOR USE/RESTRICTION D'EMPLOI: The applicant claims rights to registration of the trade mark throughout Canada, with the exception of the province of Newfoundland. MGM GRAND, TMO 696896.

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CLAIMS/REVENDICATIONS: RESTRICTION FOR USE/RESTRICTION D'EMPLOI: This registration is subject to Section 65(1) of the Trade Marks Act in view of Newfoundland Registration Nos. 1430 and 2998. MILKY WAY, TMA 161443. Registration is subject to the provisions of Section 67(1) of the Trade Marks (Revised Statutes of Canada, 1970-chapter T-1 0) in view of Newfoundland Registration Nos. 312 and 3230. NEWMAN'S A PORT, TMA 198755. RESTRICTION FOR USE/RESTRICTION D'EMPLOI: Restricted registration whereby the province of Newfoundland is excluded. PALACE, TMA 568095. THIS REGISTRATION IS SUBJECT TO THE PROVISIONS OF SECTION 61 OF THE UNFAIR COMPETITION ACT, IN VIEW OF NEWFOUNDLAND REGISTRATION NO. 3167. PATON, UCA 50845. Registrationis [sic] subject to the provisions of Section 67(1) of the trade- marks Act in view of Newfoundland Registration [sic] No. 001,114 on wares. SUNRISE, TMO 825715. THIS REGISTRATION DATED 22 MAY/MAI 1952 IS SUBJECT TO THE PROVISIONS OF SECTION 60-A OF THE ACT, IN VIEW OF NEWFOUNDLAND REGISTRATION NO. 4-2901. WHIRLPOOL, TMDA 42533. THIS REGISTRATION DOES NOT EXTEND TO THE PROVINCE OF NEWFOUNDLAND. WHITE LABEL, UCA 35847. In the case of a trade mark application rejected because of the existence of a Newfoundland trade mark registration, the applicant currently has three options to follow in order to overcome the rejection: (1) the applicant may specifically exclude from his application the territory of Newfoundland while maintaining his or her application for the rest of Canada; (2) the applicant may, with the consent of the registered owner of the Newfoundland registration, obtain the expungement of the Newfoundland registration on request to the Registrar (who is currently replacing the Newfoundland Commissioner for Home Affairs and Education who replaced the Newfoundland Colonial Secretary); or

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(3) the applicant may proceed before the Trial Division of the Federal Court of Canada requesting that the Federal Court order the expungement of the Newfoundland registration in accordance with the laws of Newfoundland as they existed prior to April 1, 1949. See section 57, supra.

§5.5

Saving Clause

Section 68 defines the effect of the use or making known of a trade mark or the use of a trade name in Newfoundland before the 1st day of April, 1949, under the Trade Marks Act. Use of trade-mark or trade-name before Emploi d'une marque de commerce – Terre- Neuve April 1, 1949 68. For the purposes of this Act, the use or making known of a trade-mark or the use of a trade-name in Newfoundland before April 1, 1949 shall not be deemed to be a use or making known of such trade-mark or a use of such trade-name in Canada before that date.

68. Pour l'application de la présente loi, l'emploi ou la révélation d'une marque de commerce ou l'emploi d'un nom commercial, à Terre-Neuve, avant le 1er avril 1949, n'est pas censé constituer un emploi ou une révélation de cette marque ou un emploi de ce nom, avant cette date, au Canada.

Section 68 applies to trade marks, whether registered or not, and to trade names. No one can rely on the use of a trade mark or a trade name or the making known of a trade mark in Newfoundland prior to April 1, 1949, for any purposes under the Trade Marks Act, save possibly the provisions of the Trade Marks Act relating to the registration of trade marks which are registered and used abroad.

§5.6

Second Editorial Comment

The words “trade mark”, “use”, “trade name”, and “making known” in section 68 should be given the meaning attributed to them under the Trade Marks Act, rather than the meaning they might have had under the laws of Newfoundland as they existed before April 1, 1949.

§6.0

Case Law

§6.1

Newfoundland

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1.

Imperial Tobacco Company (Newfoundland), Limited v. Duffy, [1918] A.C. 181 (J.C.P.C.) Wrenbury L.J. The Newfoundland statute [of Trade Marks] is undoubtedly illexpressed ... [at 183]. It is strange, but it is the fact, that the Newfoundland Statute contains no provisions for rectification of the register. Under these circumstances the defendant cannot, of course, be blamed for not taking proceedings for rectification. But it might be a defence to an action for infringement that the plaintiffs are not duly on the register. [at 184]

2.

Orange Crush Co. v. Gaden Aerated Water Works Ltd. (1923), 11 Nf ld R. 299 (Nfld C.A.) Kent J. at 309: The first four of these classes specify what a trade mark may consist of; the last what it may not consist of. It may not consist of a word or words having reference to the quality or character of the goods. In other words, a trader may indicate his connection or dealing with goods by adopting any of the particulars falling within classes (a) to (d) which are neutral as to the character of the goods themselves, but he may not by adopting words having reference to the character or quality of the goods and thereby monopolize the use of words descriptive of the goods in question. [at 308.] Our Statute contains no provisions for rectification of the register, and the only way in which in an action for an infringement the question of the validity of a registered trade mark or its component parts may be questioned is by setting up that it is not duly registered. It was common ground on the argument before me that, having regard to the provisions of the Newfoundland statute and section 65 of the Trade Marks Act, any lack of distinctiveness of the Newfoundland trade mark when these proceedings were commenced does not afford a good ground for finding it invalid. The question is whether it was registrable when it was registered in 1908. The evidence respecting the situation in Newfoundland at and before that date is even more scanty than the evidence respecting the situation in Canada when the trade mark was registered [page125] at Ottawa in 1907. If any doubt exists as to registrability, it must be resolved in favour of the trade mark. The applicant has not acquitted itself of the onus of showing that the trade mark was not duly registered in Newfoundland in 1908. The application to expunge the Newfoundland registration is therefore dismissed. [at 309.]

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1.

Aladdin Industries, Incorporated v. Canadian Thermos Products Limited, [1969] 2 Ex. C.R. 80 (Ex. Ct.) Kerr J.: It was common ground on the argument before me that, having regard to the provisions of the Newfoundland statute and section 65 [now s. 67] of the Trade Marks Act, any lack of distinctiveness of the Newfoundland trade mark when these proceedings were commenced does not afford a good ground for finding it invalid. The question is whether it was registrable when it was registered in 1908. [at 124] As I construe section 65 [now s. 67], its purpose and effects is to preserve in the Province of Newfoundland the rights and privileges acquired under or by virtue of the registration of a trade mark under the laws of Newfoundland prior to April 1, 1949. It is not a section dealing with the jurisdiction of the courts. [at 125] In my opinion, this court [i.e. the Exchequer Court, now the Federal Court] has jurisdiction to expunge the Newfoundland registration on a showing of sufficient cause to expunge it. [at 126]

2.

Labatt Brewing Co. Ltd. v. Carling O’Keefe Breweries of Canada Ltd. (1985), 4 C.P.R. (3d) Nfld S.C.-T.D.) Goodridge J.: The exclusive right of a Canadian trade mark owner contained in s. 67 is limited by s. 19. [at 40] The question of abandonment gives no right to “trespass”. If the defendant contends that mark is abandoned, it may apply under s. 44 to expunge the mark. [obiter at 40]

3.

Carling O’Keefe Breweries Canada Ltd. v. Labatt Brewing Co. Ltd. (1985) 5 C.P.R. (3d) 273 (Nfld S.C.-C.A.) Gushue J.: Carling O’Keefe is the registered owner under the Trade Marks Act, R.S.C. 1970, T-10, of the trade mark BLACK LABEL for use in association with the sale of beer in Canada. That right has existed since 1937. The predecessor in title to the respondent company (“Labatts”) was, at the time of Confederation of Newfoundland with Canada, the registered owner of the same trade mark in connection with the sale of beer in Newfoundland, which right was obtained under the provisions of the Trade Marks and Registration Act, C.S. Nfld. 1916, c. 154. Section 21(1) of the Terms of Union of Newfoundland with Canada (the Newfoundland Act, 1949 (U.K.), c. 22, continued all rights and privileges arising out of such registration within Newfoundland as if there had been no Union, as follows: 21 (1) Canada will provide that the registration of a trade mark under the laws of Newfoundland prior to the date of Union shall

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have the same force and effect in the Province of Newfoundland as if the Union had not been made, and all rights and privileges acquired under or by virtue thereof may continue to be exercised or enjoyed in the Province of Newfoundland as if the Union had not been made. That section is substantially repeated in s. 67(1) of the federal Trade Marks Act. [at 274-275] The respondent Labatts without question holds the legal rights to the trade mark BLACK LABEL in the Province of Newfoundland. The appellant Carling O’Keefe, without bothering to take any steps for the possible expunging of that trade mark, has in effect taken the law into its own hands and encroached upon that right. [at 276]

§7.0

List of Cases

§7.1

Newfoundland

1.

Imperial Tobacco Company (Newfoundland), Limited v. Duffy, (1917), 87 L.J. 50; [1918] A.C. 181 (J.C.P.C.).

2.

Orange Crush Co. v. Gaden Aerated Water Works Ltd. (1923), 11 Nfld R. 299 (Nfld S.C.-C.A.).

§7.2

Canada

1.

Aladdin Industries, Inc. v. Canadian Thermos Products Ltd., [1969] 2 Ex. C.R. 80; (1969), 57 C.P.R. 230; (1969), 41 Fox Pat. C. 26 (Ex. Ct.; 1969-03-11); aff’d 6 C.P.R. (2d) 1, [1974] S.C.R. 845 (S.C.C.; 1972-03-20).

2.

Crown Industrial Products Co. v. Crown Distributors Ltd. (1971), 1 C.P.R. (2d) 248 (Registrar; 197 1-02-17).

3.

John Haig & Co. Ltd. v. Haig Brewereis Ltd. (1974), 21 C.P.R. (2d) 271 (Registrar; 1974-12-30); rev’d (1975), 24 C.P.R. (2d) 66 (F.C.T.D.; 1975-09-30).

4.

Canada Packers Ltd. v. J.M. Schneider Ltd. 39 C.P.R. (2d) 130 (Registrar; 1978-02-17).

5.

Labatt Brewing Co. Ltd. v. Carling O’Keefe Breweries of Canada Ltd. 4 C.P.R. (3d) 34; (1985), 5 C.I.P.R. 237; (1985), 53 Nfld & P.E.I.R. 66; (1985), 156 A.P.R. 66 (Nfld S.C.-T.D.; 1985-03-2 1); (1985), 4 C.P.R. (3d) 42; (1985), 5 C.I.P.R. 246 (Nfld S.C.-T.D.); 5 C.P.R. (3d) 273; (1985), 6 C.I.P.R. 1 (Nfld S.C.C.A.; 1985-07-24).

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6.

Molson Breweries, A Partnership v. Swan Brewery Co., (1994), 58 C.P.R. (3d) 303 (T.M. Opp. Bd.; 1994-10-31).

7.

Unitel Communications Inc. v. Bell Canada (1995), 61 C.P.R. (3d) 12 (F.C.T.D.; 1995-04-24).

8.

Empire of Carolina Inc. v. Ault Foods Ltd., (1995), 63 C.P.R. (3d) 420 (T.M.O.B.; 1995-06-22).

§8.0

Authors

§8.1

Authors - Canada

1.

FOX (Harold G.), The Canadian Law of Trade Marks and Unfair Competition, 2nd ed. (Toronto, Carswell, 1956), at 28.

2.

FOX (Harold G.), The Canadian Law of Trade Marks and Unfair Competition, 3rd ed. (Toronto, Carswell, 1972), 12-13.

3.

GILL (Kelly) et al., Tort On Canadian Law of Trade-Marks and Unfair Competition, 4th ed. (Toronto, Carswell, 2002), at § 1.6.

4.

HUGHES (Roger T.) et al., Hughes on Trade Marks (Toronto, Butterworth & Co. (Canada) Ltd., 1984) at 513.

5.

MITCHES (Philip), Trade Mark Expungement under Canadian Law (1958), 58 Trademark Reporter 521.

6.

MITCHES (Philip), Trade Mark Expungement under Canadian Law (1960), 59 Canadian Patent Reporter 137, at 167-169.

7.

MITCHES (Philip), Trade Mark Expungement under Canadian Law (1969), 15 McGill Law Journal 392, at 432.

8.

Terms of Union of Newfoundland with Canada in relation to Patents and Trade Marks (1949), 9 Canadian Patent Reporter. 6.

9.

Union of Canada with Newfoundland (1949), 9 Canadian Patent Reporter 65.

§8.2

Authors - Variaa

LLOYD (R.G.) et al. Kerly's Law of Trade Marks and Trade Names, 7th Ed. (London, Sweet & Maxwell, 1951), at pp. 244, 259-260, 250 and 705. ROBIC, LLP www.robic.ca [email protected]

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RAVENSCROFT (Byfleet G.), International trade Mark Law and Practice, (New York, Trade Mark Law Publishing, 1925), at pp. 372-375 SINGER (B.), Trade Mark Laws of The World and Unfair Competition (Chicago, 1913, at pp. 355-357.

§9.0

Varia

§9.1

Of Trade Marks and the Registration thereof.

(Consolidated Statutes of Newfoundland (Thrid Series), No. 154, as amended by Act No. 27 of 1943 An Act to Amend Chapter 154 of the Consolidated Statutes (Third Series) Entitled "Of Trade Marks and the Registration thereof” and by Act No. 39 of 1948 An Act to further Amend Chapter 154 of the Consolidated Statutes (Third Series) Entitled " Of Trade Marks and the Registration thereof” SECTION 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12. 13. 14. 15. 16. 17. 18. 19. 20. 21. 22. 23. 24. 25. 26.

— Offences in relation to trade marks, Penalties, procedure, & c. — Meaning of expressions and application of provisions of chapter. — What to be deemed forging a trade mark. — What to be deemed applying a trade mark. — What shall be considered a defence. — Relating to watches. — Statements in indictments. — Evidence. — Accessories. — Search warrants, forfeiture, destruction of articles forfeited. — Application of Imperial Act 22 & 23 Vic., Cap. 17. — Costs. — Commencement of prosecutions. — Prohibiting importation of goods liable to forfeiture. — Vendor of goods deemed to warrant trade mark genuine. — Where trade description applied to goods of particular class. — This chapter not to exempt from the suit or proceeding. — False representation as to royal warrant, or service Penalty. — Register of trade marks. — Essentials of application for registration. — Essentials of application for registration. — Essentials of application for registration. — Rules and regulations to be made by Colonial Secretary. — Essentials of application for registration. — Fees on registration. — Colonial Secretary may object to register in certain cases.

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— On compliance with requirements of chapter, registration to take place. — Trade mark registered to endure without limitation. — Trade marks assignable. — Fraudulent use of trade mark, Penalty. — Action for infringement. — Rectification of register. — Concurrent user. — Registration to be conclusive after seven years. — Notice of application for trade marks to be published in the Newfoundland Gazette, etc. 36. — Correction of register 37. — Non-completion of registration 27. 28. 29. 30. 31. 32. 33. 34. 35.

Offences in relation to trade marks, Penalties, procedure, & c §1. (1) Every person who— Forges any trade mark; or

(a)

(b) Falsely applies to goods any trade mark, or any mark so nearly resembling a trade mark as to be calculated to deceive; or (c) Makes any die, block, machine or other instrument for the purpose of forging, or of being used for forging, a trade mark; or

Applies any false trade description to goods; or

(d)

(e) Disposes or has in his possession, any die, block, machine, or other instrument for the purpose of forging a trade mark; or

Causes any of the things above in this section mentioned to be done,

(f)

shall, subject to the provisions of this Chapter, and unless he proves that he acted without intent to defraud, be guilty of an offence against this Chapter.

(2) Every person who sells, or exposes for sale, or has in his possession for sale, or for any purpose of trade or manufacture, any goods or things to which any forged trade mark or false trade description is applied, or to which any trade mark, or mark so nearly resembling a trade mark as to be calculated to deceive, is falsely applied, as the case may be, shall be guilty of any offence against this Chapter, unless he proves— (a) That having taken all reasonable precautions against committing an offence against this Chapter, he had at the time of the commission of the alleged offence, no reason to suspect the genuineness of the trade mark, mark, or trade description; and (b)

That on demand made by or on behalf of the prosecutor, he gave all

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information in his power with respect to the persons from whom he obtained such goods or things; or (c)

That otherwise he had acted innocently.

(3) Every person guilty of an offence against this Chapter shall be liable— On conviction, on indictment, to imprisonment, with or without hard labour, for a term not exceeding two years, or to fine, or to both imprisonment and fine; and (a)

On summary conviction, to imprisonment, with or without hard labour, for a term not exceeding four months, or to a fine not exceeding one hundred dollars; and in the case of a second or subsequent conviction, to imprisonment, with or without hard labour, for a term not exceeding six months, or to a fine not exceeding two hundred dollars, and (b)

In any case, to forfeit to His Majesty every chattel, article, instrument, or thing, by means of or in relation to which the offence has been committed. (c)

(d) The Court before which any person is convicted under this section may order any forfeited articles to be destroyed, or otherwise disposed of, as the Court thinks fit. (e) If any person feels aggrieved by any conviction made by a Court of summary jurisdiction, he may appeal therefrom to the Supreme Court. (f) Any offence for which a person is, under this Chapter, liable to punishment, on summary conviction, may be prosecuted, and any articles liable to be forfeited under this Chapter by a Court of summary jurisdiction, may be forfeited: Provided that a person charged before a Court of summary jurisdiction with an offence under this section, shall, on appearing before the Court, and before the charge is gone into, be informed of his right to be tried on indictment, and if he requires, be tried accordingly.

Meaning of expressions and application of provisions of chapter. §2. (1) For the purpose of this Chapter— The expression “trade mark” means a trade mark registered in the register of trade marks kept under the provisions of this Chapter and includes any trade mark which, either with or without registration, is protected by law in any British possession or foreign state, to which the provisions of the one hundred and third section of the Imperial “Patents, Designs and Trade Marks’ Act, 1883,” or of the ninety-first section of the Imperial “Patents and Designs Act, 1907,” are under order in Council for the time being applicable.

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The expression “trade description” means any description, statement or other indication, direct or indirect. (a)

As to the number, quantity, measure, gauge or weight of any goods; or

(b)

As to the place or country in which any goods were made or produced; or

(c)

As to the mode of manufacturing or producing any goods; or

(d)

As to the material of which any goods are composed; or

(e)

As to any goods being the subject of an existing patent privilege or copyright,

and the use of any figure, word, or mark which, according to the custom of the trade, is commonly taken to be an indication of any of the above matters, shall be deemed to be a trade description within the meaning of this Chapter. The expression “false trade description,” means a trade description which is false in a material respect as regards the goods to which it is applied, and includes every alteration of a trade description, whether by way of addition, effacement, or otherwise, where that alteration makes the description false in a material respect, and the fact that a trade description is a trade mark, or part of a trade mark, shall not prevent such trade description being a false trade description within the meaning of this Chapter. The expression “goods,” means anything which is the subject of trade, manufacture, or merchandise; The expressions “person,” “manufacturer,” “dealer,” or “trader,” and “proprietor,” include any body of persons whether corporate or not; The expression “name,” includes any abbreviation of a name. (2) The provisions of this Chapter, respecting the application of a false trade description to goods, shall extend to the application to goods of any such figures, words, or marks, or arrangement, or combination thereof, whether including a trade mark or not, as are reasonably calculated to lead persons to believe that the goods are the manufacture or merchandise of some person other than the person whose manufacture or merchandise they really are. (3) The provisions of this Chapter, respecting the application of a false trade description to goods, or respecting goods to which a false trade description is applied, shall extend to the application to goods of any false name or initials of a person, and to goods with the false name or initials of a person applied, in like manner as if such name or initials were a trade description, and for the purpose of this enactment the expression false name or initials means, as applied to any goods, any name or initials of a person which— ROBIC, LLP www.robic.ca [email protected]

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(a)

Are not a trade mark, or part of a trade mark; and

Are identical with, or a colourable imitation of the name or initials of a person carrying on business in connection with goods of the same description, and not having authorized the use of such name or initials; and (b)

Are either those of fictitious person or of some person not bona fide carrying on business in connection with such goods.

(c)

What to be deemed forging a trade mark §3. A person shall be deemed to forge a trade mark who either—

Without the assent of the proprietor of the trade mark, makes that trade mark, or a mark so nearly resembling that trade mark, as to be calculated to deceive; or

(1)

Falsifies any genuine trade mark, whether by alteration, addition, effacement, or otherwise; (2)

and any trade mark or marks so made or falsified, is in this Chapter referred to as a forged trade mark: Provided that in any prosecution for forging a trade mark, the burden of proving the assent of the proprietor shall lie on the defendant. What to be deemed applying a trade mark. §4. (1) A person shall be deemed to apply a trade mark, or mark or trade description to goods, who— (a)

Applies it to the goods themselves; or

(b) Applies it to any covering, label, reel, or other thing in or with which the goods are sold, or exposed, or had in possession for any purpose of sale, trade or manufacture; or (c) Places, encloses, or annexes any goods which are sold, or exposed, or had in possession for any purpose of sale, trade or manufacture in, with, or to any covering, label, reel, or other thing to which a trade mark or trade description has been applied; or (d) Uses a trade mark, or mark, or trade description in any manner calculated to lead to the belief that the goods in connection with which it is used are designated or described by that trade mark or trade description.

(2) The expression “covering” includes any stopper, cask, bottle, vessel, box, cover, capsule, case, frame or wrapper; and the expression “label” includes any band or ticket.

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A trade mark, or mark or trade description, shall be deemed to be applied whether it is woven, impressed, or otherwise worked into, or annexed, or affixed to the goods, or to any covering, label, reel, or other thing. (3) A person shall be deemed to falsely apply to goods a trade mark or marks, who, without the assent of the proprietor of a trade mark, applies such trade mark, or a mark so nearly resembling it as to be calculated to deceive; but in any prosecution for falsely applying a trade mark or mark to goods, the burden of proving the assent of the proprietor shall lie on the defendant. What shall be considered a defence §5. Where a defendant is charged with making any die, block, machine, or other instrument, for the purpose of forging, or being used for forging, a trade mark, or with falsely applying to goods any trade mark, or any mark so nearly resembling a trade mark, as to be calculated to deceive, or with applying to goods any false trade description, or causing any of the things in this section mentioned to be done, and proves— (1) That in the ordinary course of his business he is employed, on behalf of other persons, to make dies, blocks, machines, or other instruments for making, or being used in making trade marks, or as the case may be, to apply marks or descriptions to goods, and that in the case which is a subject of the charge, he was so employed by some person resident in Newfoundland, and was not interested in the goods by way of profit or commission dependent on the sale of such goods; and (2)

That he took reasonable precautions against committing the offence charged;

and That he had, at the time of the commission of the alleged offence, no reason to suspect the genuineness of the trade mark, mark, or trade description; and (3)

That he gave to the prosecutor all the information in his power with respect to the persons on whose behalf the trade mark, mark, or trade description was applied, (4)

he shall be discharged from the prosecution, but shall be liable to pay the costs incurred by the prosecutor, unless he has given due notice to him that he will rely on the above defence. Relating to watches. §6. Where a watch case has thereon any words or marks which constitute, or are by common repute considered as constituting a description of the country in which the watch was made, and the watch bears no description of the country where it was made, those words or marks shall prima facie be deemed to be a description of that country within the meaning of this Chapter, and the provisions of this Chapter with respect to goods to which a false trade description has been applied, and with respect to selling or exposing for, or having in possession for, sale, or any purpose of trade or manufacture, ROBIC, LLP www.robic.ca [email protected]

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goods with a false trade description, shall apply accordingly, and for the purposes of this section the expression “watch” means all that portion of a watch which is not the watch case.

Statements in indictments. §7. In any indictment, pleading, proceeding, or document, in which any trade mark or forged trade mark is intended to be mentioned, it shall be sufficient, without further description and without any copy or facsimile, to state that trade mark or forged trade mark to be a trade mark or forged trade mark.

Evidence. §8. In any prosecution for an offence against this Chapter— (1) A defendant, and his wife or her husband, as the case may be, may, if the defendant thinks fit, be called as a witness, and, if called, shall be sworn and examined, and may be cross- examined and re-examined in like manner as any other witness.

In the case of imported goods, evidence of the port of shipment shall be prima facie evidence of the place or country in which the goods were made or produced. (2)

Accessories. §9. Any person who, being within Newfoundland, procures, counsels, aids, abets, or is accessory to the commission, without Newfoundland, of any act, which, if committed in Newfoundland, would under this Chapter be a misdemeanour, shall be guilty of that misdemeanour as principal, and be liable to be indicted, proceeded against, tried, and convicted in any place in Newfoundland in which he may be, as if the misdemeanour had been there committed.

Search warrants, forfeiture, destruction of articles forfeited. §10. (1) Where, upon information of an offence against this Chapter, a Justice has issued either a summons requiring the defendant charged by such information to appear to answer to the same, or a warrant for the arrest of such defendant, and either the said Justice on or after issuing the summons or warrant, or any other Justice is satisfied by information on oath that there is reasonable cause to suspect that any goods or things, by means of, or in relation to, which such offence has been committed, are in any house or premises of the defendant, or otherwise in his possession, or under his control in any place, such Justice may issue a warrant under his land, by virtue of which it shall be lawful for any constable, named or referred to in the warrant, to enter such house, premises, or place, at any reasonable time by day, and to search there for, and seize and take away, those goods or things; and any goods or things seized under any such warrant shall be brought before a Court of summary jurisdiction for the purpose of its being determined whether the same are or are not liable to forfeiture under this Chapter. ROBIC, LLP www.robic.ca [email protected]

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(2) If the owner of any goods or things which, if the owner thereof had been convicted, would be liable to forfeiture under this Chapter, is unknown or cannot be found, an information or complaint may be laid for the purpose only of enforcing such forfeiture, and a court of summary jurisdiction may cause notice to be advertised, stating that unless cause is shown to the contrary at the time and place named in the notice, such goods or things will be forfeited, and at such time and place the Court, unless the owner or any person on his behalf, or other person interested in the goods or things, shows cause to the contrary, may order such goods or things, or any of them, to be forfeited. (3) Any goods or things forfeited under this section, or under any other provision of this Chapter, may be destroyed or otherwise disposed of in such manner as the Court by which the same are forfeited may direct, and the court may, out of any proceeds which may be realized by the disposition of such goods (all trade marks and trade descriptions being first obliterated), award to any innocent party any loss he may have innocently sustained in dealing with such goods.

Application of Imperial Act 22 & 23 Vic., Cap. 17. §11. The Imperial act of the session of the twenty-second and twenty-third years of the reign of her late Majesty Queen Victoria, chapter seventeen, entitled “An Act to prevent vexatious indictments for certain misdemeanours,” shall apply to any offence punishable on indictment under this Chapter in like manner as if such offence were one of the offences specified in section one of that act.

Costs. §12. On any prosecution under this Chapter, the Court may order costs to be paid to the defendant by the prosecutor, or to the prosecutor by the defendant having regard to the information given by and the conduct of the defendant and prosecutor respectively.

Commencement of prosecutions. §13 No prosecution for an offence against this Chapter shall be commenced after the expiration of three years next after the commission of the offence, or one year next after the discovery thereof by the prosecutor, whichever expiration first happens.

Prohibiting importation of goods liable to forfeiture. §14. (1) All goods which if sold in this Colony would be liable to forfeiture under this Chapter, and also all goods of foreign manufacture, bearing any name or trade mark being or purporting to be the name or trade mark of any manufacturer, dealer or trader in the United Kingdom or Newfoundland, unless such name or trade mark is accompanied by a definite indication of the country in which the goods were made or produced, are hereby prohibited to be imported into Newfoundland, and subject to the ROBIC, LLP www.robic.ca [email protected]

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provisions of this section shall be included among goods prohibited to be imported as if they were specified in section 134 of Chapter twenty-two of these Consolidated Statutes. (2) Before detaining any such goods, or taking any further proceedings with a view to the forfeiture thereof under the law relating to the customs, the Minister of Finance and Customs may require the regulations under this section, whether as to information, security, conditions or other matters, to be complied with, and may satisfy himself in accordance with those regulations that the goods are such as are prohibited by this section to be imported. (3) The Minister of Finance and Customs may, from time to time, make, revoke and vary regulations, either general or special, respecting the detention and forfeiture of goods, the importation of which is prohibited by this section, and the conditions, if any, to be fulfilled before such detention and forfeiture, and may by such regulations determine the information, notices and security to be given, and the evidence requisite for any of the purposes of this section, and the mode of verification of such evidence. (4) Where there is on any goods a name which is identical with or a colourable imitation of the name of a place in the United Kingdom or Newfoundland, that name, unless accompanied by the name of the country in which such place is situated, shall be treated for the purposes of this section as if it were the name of a place in Newfoundland. (5) Such regulations may apply to all goods, the importation of which is prohibited by this section, or different regulations may be made respecting different classes of such goods or of offences in relation to such goods. (6) The Minister of Finance and Customs, in making and administering the regulations, and generally in the administration of this section, whether in the exercise of any discretion or opinion, or otherwise, shall act under the control of the Governor in Council. (7) The regulations may provide for the informant reimbursing the Minister of Finance and Customs for all expenses and damages incurred in respect of any detention made on his information, and of any proceedings consequent on such detention. (8)

All regulations under this subject shall be published in the Royal Gazette.

(9) This section shall have effect as if it were part of Chapter twenty-two of these Consolidated Statutes.

Vendor of goods deemed to warrant trade mark genuine. §15. On the sale, or in the contract for the sale, of any goods to which a trade mark, ROBIC, LLP www.robic.ca [email protected]

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or mark, or trade description, has been applied, the vendor shall be deemed to warrant that the mark is a genuine trade mark and not forged or falsely applied, or that the trade description is not a false trade description within the meaning of this Chapter, unless the contrary is expressed in some writing, signed by or on behalf of the vendor, and delivered at the time of the sale or contract to and accepted by the vendee.

Where trade description applied to goods of particular class. §16. Where at the passing of this Chapter a trade description is lawfully and generally applied to goods of a particular class, or manufactured by a particular method, to indicate the particular class or method of manufacture of such goods, the provisions of this Chapter with respect to false trade description shall not apply to such trade descriptions when so applied; Provided that where such trade description includes the name of a place or country, and is calculated to mislead as to the place or country where the goods to which it is applied were actually made or produced, and the goods are not actually made or produced in that place or country, this section shall not apply unless there is added to the trade description, immediately before or after the name of that place or country, in an equally conspicuous manner with that name, the name of the place or country in which the goods were actually made or produced, with a statement that they were made or produced there.

This chapter not to exempt from the suit or proceeding. §17. (1) This Chapter shall not exempt any person from any action, suit, or other proceeding which might, but for the provisions of this Chapter, be brought against him. (2) Nothing in this Chapter shall entitle any person to refuse to make a complete discovery, or to answer any question or interrogatory in any action, but such discovery or answer shall not be admissible in evidence against such person in any prosecution for an offence against this Chapter. (3) Nothing in this Chapter shall be construed so as to render liable to any prosecution or punishment any servant of a master resident in Newfoundland, who bona fide acts in obedience to the instructions of such master, and, on demand made by or on behalf of the prosecutor, has given full information as to his master. False representation as to royal warrant, or service Penalty. §18. Any person who falsely represents that any goods are made by a person holding a royal warrant, or for the service of His Majesty, or any of the royal family, or any government department, shall be liable, on summary conviction, to a penalty not exceeding one hundred dollars.

Register of trade marks. §19. A register of trade marks shall be kept at the office of the Colonial Secretary, in ROBIC, LLP www.robic.ca [email protected]

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which any proprietor of a trade mark may have the same registered on complying with the provisions of this Chapter.

Essentials of application for registration. §20. (1) For the purposes of this Chapter, a trade mark must consist of or contain at least one of the following essential particulars: A name of an individual or firm printed, impressed, or woven in some particular and distinctive manner; or (a)

A written signature or copy of a written signature of the individual or firm applying for registration thereof as a trade mark; or

(b)

(c)

A distinctive device, mark, brand, heading, label or ticket; or

(d)

An invented word or invented words; or

(e) A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname.

(2) There may be added to any one or more of the essential particulars mentioned in this section, any letters, words or figures, or any of them; but the applicant for registration of any such additional matter must state in his application the essential particulars of the trade mark, and must disclaim in his application any right to the exclusive use of the added matter, and a copy of the statement and disclaimer shall be entered on the register. (3) Provided as follows: A person need not under this section disclaim his own name or the foreign equivalent thereof, or his place of business; but no entry of any such name shall affect the right of any owner of the same name to use that name or the foreign equivalent thereof; (a)

Any special and distinctive word or words, letter, figure or combination of letters or figures, or of letters and figures used as a trade mark before the coming into force of these Consolidated Statutes, may be registered as a trade mark under this Chapter.

(b)

Essentials of application for registration. §21. A trade mark must be registered for particular goods or classes of goods.

Essentials of application for registration. ROBIC, LLP www.robic.ca [email protected]

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§22. A trade mark may be registered in any colour or colours, and such registration shall (subject to the provisions of this Chapter) confer on the registered owner the exclusive right to use the same in that or any other colour or colours.

Rules and regulations to be made by Colonial Secretary §23. The Colonial Secretary, subject to the approval of the Governor in Council, may make rules and regulations, and adopt forms for the purposes of this Chapter as respects trade marks, and all documents executed according to the same, and accepted by the Colonial Secretary, shall be deemed to be valid so far as relates to official proceedings under this Chapter.

Fees on registration. §24. The proprietor of a trade mark may have it registered on forwarding to the Colonial Secretary, together with the fee hereinafter mentioned, a drawing and description in duplicate of such trade mark, and a declaration that the same was not in use to his knowledge by any other person than himself at the time of his adoption thereof.

Colonial Secretary may object to register in certain cases. §25. (1) Before any action is taken in relation to an application for registering a trade mark, the following fees shall be paid to the Colonial Secretary, that is to say:— On every application to register a trade mark, including certificate

$20.00

For the recording of an assignment

$ 1.00

Such fees to be paid by the Colonial Secretary to the Minister of Finance and Customs for the use of the Colony. (2) If the Colonial Secretary refuses to register the trade mark for which application is made, the fee shall be returned to the applicant or his agent, less five dollars, which shall be retained as compensation for office expenses. On compliance with requirements of chapter, registration to take place. §26. The Colonial Secretary may object to register any trade mark in the following cases: (1) If the trade mark proposed for registration is identical with or resembles a trade mark already registered. (2)

If it appears that the trade mark is calculated to deceive or mislead the

public. ROBIC, LLP www.robic.ca [email protected]

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(3)

If the trade mark contains any immorality or scandalous figure.

If the so-called trade mark does not contain the essentials necessary to constitute a trade mark properly speaking. (4)

Trade mark registered to endure without limitation. §27. On compliance with the requirements of this Chapter, and of the rules hereinbefore provided for, the Colonial Secretary shall register the trade mark of the proprietor so applying, and shall return to the said proprietor one copy of the drawing and description with a certificate, signed by the Colonial Secretary, to the effect that the said trade mark has been duly registered in accordance with the provisions of this Chapter; and the day, month and year of the entry of the trade mark in the register shall also be set forth in such certificate; and every such certificate purporting to be so signed shall be received in all courts in Newfoundland as prima facie evidence of the fact therein alleged without proof of the signature.

Trade mark registered to endure without limitation. §28. A trade mark, once registered and destined to be the sign in trade of the proprietor thereof, shall endure without limitation.

Trade marks assignable. §29. Every trade mark duly registered shall be assignable in law, and on the assignment being produced, and the fee hereinbefore prescribed being paid, the Colonial Secretary shall cause the name of the assignee, with the date of the assignment and such other details as he shall see fit, to be entered on the margin of the register of trade marks, on the folio where such trade mark is registered.

Fraudulent use of trade mark, Penalty. §30. Every person other than the person who has registered the trade mark, who marks any goods, or any article of any description whatsoever, with any trade mark registered under the provisions of this Chapter, or with any part of such trade mark, whether by applying such trade mark, or any part thereof, to the article itself or to any package or thing containing such article, or by using any package or thing so marked which has been used by the proprietor of such trade mark, or who knowingly sells or offers for sale any article marked with such trade mark, or with any part thereof, with the intent to deceive and to induce any person to believe that such article was manufactured, produced, compounded, packed or sold by the proprietor of such trade mark, is guilty of a misdemeanour and liable for each offence to a fine not exceeding one hundred dollars and not less than twenty dollars, which fine shall be paid to the proprietor of such trade mark, together with the costs incurred in enforcing and recovering the same. ROBIC, LLP www.robic.ca [email protected]

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(1) Every complaint under this section shall be made by the proprietor of such trade mark, or by some one acting on his behalf and thereunto duly authorized.

Action for infringement. §31. An action or suit may be maintained by any proprietor of a trade mark, which has been registered in pursuance of this Chapter, against any person who uses his registered trade mark, or any fraudulent imitation thereof, or who sells any article bearing such trade mark or any such imitation thereof, or contained in any package, being or purporting to be his, contrary to the provisions of this Chapter.

Rectification of register. §32. Subject to the provisions of this Chapter: (a) The Court may, on the application of any person aggrieved by the non-insertion in or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, make such order for making, expunging or varying such entry, as it may think fit. (b) The Court may in any proceeding under this section decide any question that it may be necessary or expedient to decide in connection with the rectification of the register. (c) In case of fraud in the registration or transmission of a registered trade mark, the Registrar may himself apply to the Court under the provisions of this section. (d) Any order of the Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar who shall upon receipt of such notice rectify the register accordingly. (e) Any application made under this section shall be made by notice of motion which must be served upon the Registrar.

Concurrent user. §33. In case of honest concurrent user or of other special circumstances which, in the opinion of the Court make it proper so to do, the Court may permit the registration of the same trade mark or of nearly identical trade marks for the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as to mode or place of user or otherwise as the Court may think it right to impose.

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Registration to be conclusive after seven years. §34. In all legal proceedings relating to a registered trade mark including applications under Section 32 hereof, the original registration of such trade mark shall after the expiration of seven years from the date of such original registration or seven years from the coming into operation of this Act, whichever shall happen last, be taken to be valid in all respects unless such original registration was obtained by fraud, or unless the trade mark offends against the provisions of Section 26 of this Chapter: Provided that nothing herein shall entitle the proprietor of a registered trade mark to interfere with or restrain the user by any person of a similar trade mark upon or in connection with goods upon or in connection with which such person has, by himself or his predecessors in business, continuously used such trade mark from a date anterior to the user or registration whichever is the earlier of the first mentioned trade mark by the proprietor thereof or his predecessors in business, or to object on such user being proved, to such person being put upon the register for such similar trade mark in respect of such goods under the provisions of Section 33 hereof.

Notice of application for trade marks to be published in the NewfoundlandGazette, etc. §35. No trade mark shall be registered under or by virtue of this Chapter until notice shall have been published in the Newfoundland Gazette and one daily newspaper published in St. John’s once weekly for at least four weeks, of the intention of the applicant to apply for registration of such trade mark; and such notice shall contain, in general terms, the description of the trade mark and the particular goods or classes of goods for which such registration shall be desired.

Correction of register §36. (1) The Commissioner for Home Affairs and Education may on request made in writing by the registered proprietor— (a) correct any error in the name, address or description of the registered proprietor of a trade mark;

enter any change in the name, address or description of the person who is registered as a proprietor of a trade mark; (b)

(c)

cancel the entry of a trade mark on the register;

(d) strike out any goods or classes of goods from those in respect of which a trade mark is registered; or (e) enter a disclaimer or memorandum relating to a trade mark which does not in any way extend the rights given by the existing registration of the trade mark.

(2) Any decision of the Commissioner under this section shall be subject to appeal to the Supreme Court. ROBIC, LLP www.robic.ca [email protected]

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Non-completion of registration §37. (1) Where registration of a trade mark is not completed within twelve months from the date of application by reason of default on the part of the applicant, the Commissioner for Home Affairs and Education may, after giving notice in writing of the non-completion to the applicant or his agent in Newfoundland, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice. (2) Where an application is treated as abandoned under the provisions of subsection (1) of this section, the fee, less the sum of five dollars, shall be returned to the applicant or his agent in Newfoundland.

ROBIC, un groupe d'avocats et d'agents de brevets et de marques de commerce voué depuis 1892 à la protection et à la valorisation de la propriété intellectuelle dans tous les domaines: brevets, dessins industriels et modèles utilitaires; marques de commerce, marques de certification et appellations d'origine; droits d'auteur, propriété littéraire et artistique, droits voisins et de l'artiste interprète; informatique, logiciels et circuits intégrés; biotechnologies, pharmaceutiques et obtentions végétales; secrets de commerce, know-howet concurrence; licences, franchises et transferts de technologies; commerce électronique, distribution et droit des affaires; marquage, publicité et étiquetage; poursuite, litige et arbitrage; vérification diligente et audit. ROBIC, a group of lawyers and of patent and trademark agents dedicated since 1892 to the protection and the valorization of all fields of intellectual property: patents, industrial designs and utility patents; trademarks, certification marks and indications of origin; copyright and entertainment law, artists and performers, neighbouring rights; computer, software and integrated circuits; biotechnologies, pharmaceuticals and plant breeders; trade secrets, know-how, competition and antitrust; licensing, franchising and technology transfers; e-commerce, distribution and business law; marketing, publicity and labelling; prosecution litigation and arbitration; due diligence. COPYRIGHTER IDEAS LIVE HERE IL A TOUT DE MÊME FALLU L'INVENTER! LA MAÎTRISE DES INTANGIBLES LEGER ROBIC RICHARD NOS FENÊTRES GRANDES OUVERTES SUR LE MONDE DES AFFAIRES PATENTER ROBIC, LLP www.robic.ca [email protected]

MONTREAL 1001 Square-Victoria - Bloc E - 8th Floor Montreal, Quebec, Canada H2Z 2B7 Tel.: +1 514 987-6242 Fax: +1 514 845-7874

QUEBEC 2828 Laurier Boulevard, Tower 1, Suite 925 Quebec, Quebec, Canada G1V 0B9 Tel.: +1 418 653-1888 Fax.: +1 418 653-0006

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R ROBIC ROBIC + DROIT +AFFAIRES +SCIENCES +ARTS ROBIC ++++ ROBIC +LAW +BUSINESS +SCIENCE +ART THE TRADEMARKER GROUP TRADEMARKER VOS IDÉES À LA PORTÉE DU MONDE , DES AFFAIRES À LA GRANDEUR DE LA PLANÈTE YOUR BUSINESS IS THE WORLD OF IDEAS; OUR BUSINESS BRINGS YOUR IDEAS TO THE WORLD Trade-marks of ROBIC, LLP ("ROBIC")

ROBIC, LLP www.robic.ca [email protected]

MONTREAL 1001 Square-Victoria - Bloc E - 8th Floor Montreal, Quebec, Canada H2Z 2B7 Tel.: +1 514 987-6242 Fax: +1 514 845-7874

QUEBEC 2828 Laurier Boulevard, Tower 1, Suite 925 Quebec, Quebec, Canada G1V 0B9 Tel.: +1 418 653-1888 Fax.: +1 418 653-0006