Trademarks Regulations
(SOR /2018-227)
(as amended up to June 17, 2019)
Registration 2018-10-30
Trademarks Regulations
P.C. 2018-1330 2018-10-29
Her Excellency the Governor General in Council, on the recommendation of the
Minister of Industry, pursuant to sections 65 , 65.1 and 65.2 of the Trademarks
Act , makes the annexed Trademarks Regulations.
S.C. 2015, c. 36, s. 67
S.C. 2014, c. 20, s. 358
S.C. 2017, c. 6, s. 75
R.S., c. T-13; S.C. 2014, c. 20, s. 318
PART 1
Rules of General Application
Interpretation
Definitions
1 The following definitions apply in these Regulations.
Act means the Trademarks Act. (Loi)
associate trademark agent means a trademark agent that is appointed by another
trademark agent under subsection 22(2) or (3). (agent de marques de commerce
associé)
International Bureau means the International Bureau of the World Intellectual
Property Organization. (Bureau international)
a b c
d
a
b
c
d
International Register means the official collection of data concerning international
registrations that is maintained by the International Bureau. (Registre international)
international registration means a registration of a trademark that is on the
International Register. (enregistrement international)
trademark agent means, other than in subparagraph 16(a)(iii) and paragraphs 19
(b) and 20(1)(b), a person or firm whose name is on the list of trademark agents that
is kept under section 28 of the Act. (agent de marques de commerce)
Reference to a period
2 Unless otherwise indicated, a reference to a period in these Regulations is to be
read, if the period is extended under section 47 or 47.1 or subsection 66(1) of the
Act, as a reference to the period as extended.
General
Written communications intended for Registrar
3 Written communications intended for the Registrar must be addressed to the
“Registrar of Trademarks”.
Limit on written communications
4 (1) A written communication intended for the Registrar must not relate to more than
one application for the registration of a trademark or more than one registered
trademark.
Exceptions
(2) Subsection (1) does not apply to a written communication in respect of
(a) a change of name or address;
(b) a payment of a fee for the renewal of a registration;
(c) a cancellation of a registration;
(d) a transfer of a registered trademark or of an application for the registration of
a trademark;
(e) a document affecting rights in respect of a registered trademark or of an
application for the registration of a trademark;
(f) an appointment or revocation of an appointment of a trademark agent;
(g) a correction of an error; and
(h) the provision of evidence, written representations or requests for a hearing
provided in a proceeding under section 11.13, 38 or 45 of the Act.
Written communications regarding applications for registration
5 (1) A written communication intended for the Registrar in respect of an application
for the registration of a trademark must include the name of the applicant and, if
known, the application number.
Written communications regarding registered trademarks
(2) A written communication intended for the Registrar in respect of a registered
trademark must include the name of the registered owner and either the registration
number or the number of the application that resulted in the registration.
Address
6 (1) Joint applicants, opponents and objectors must provide a single postal address
for correspondence.
Notice of change of address
(2) A person that is doing business before the Office of the Registrar of Trademarks
must notify the Registrar of any change of their postal address for correspondence.
Form of communication
7 The Registrar is not required to have regard to any communication that is not
submitted in writing, other than a communication made during a hearing held in a
proceeding under section 11.13, 38 or 45 of the Act.
Intelligibility of documents
8 A document that is provided to the Registrar must be clear, legible and capable of
being reproduced.
Document provided in non-official language
9 The Registrar is not required to have regard to the whole or any part of a document
that is provided in a language other than English or French unless a translation into
English or French is also provided.
Manner of providing documents, information or fees
10 (1) Unless provided by an electronic means in accordance with subsection 64(1)
of the Act, documents, information or fees must be provided to the Registrar by
physical delivery to the Office of the Registrar of Trademarks or to an establishment
that is designated by the Registrar as being accepted for that purpose.
Date of receipt — physical delivery to Office
(2) Documents, information or fees that are provided to the Registrar by physical
delivery to the Office of the Registrar of Trademarks are deemed to have been
received by the Registrar
(a) if they are delivered when the Office is open to the public, on the day on which
they are delivered to the Office; and
(b) if they are delivered when the Office is closed to the public, on the first day on
which the Office is next open to the public.
Date of receipt — physical delivery to designated establishment
(3) Documents, information or fees that are provided to the Registrar by physical
delivery to a designated establishment are deemed to have been received by the
Registrar
(a) if they are delivered when the establishment is open to the public,
(i) in the case where the Office of the Registrar of Trademarks is open to the
public for all or part of the day on which they are delivered, on that day, and
(ii) in any other case, on the day on which the Office of the Registrar of
Trademarks is next open to the public; and
(b) if they are delivered when the establishment is closed to the public, on the first
day on which the Office of the Registrar of Trademarks is next open to the public
that falls on or after the day on which the establishment is next open to the public.
Date of receipt — provision by electronic means
(4) Documents, information or fees that are provided to the Registrar by an electronic
means in accordance with subsection 64(1) of the Act are deemed to have been
received on the day, according to the local time of the place where the Office of the
Registrar of Trademarks is located, on which the Office receives it.
Exception — certain applications and requests
(5) Subsections (1) to (3) do not apply in respect of
(a) an application for international registration referred to in sections 98 to 100;
(b) a request for the recording of a change in ownership referred to in sections
101 and 102;
(c) a request for division referred to in section 123; and
(d) a transformation application referred to in section 147.
Exception — International Bureau
(6) Subsections (1) to (4) do not apply in respect of documents, information or fees
that are provided to the Registrar by the International Bureau.
Waiver of fees
11 The Registrar may waive the payment of a fee if the Registrar is satisfied that the
circumstances justify it.
Refund
12 On request made no later than three years after the day on which a fee is paid,
the Registrar must refund any overpayment of the fee.
Affidavit or statutory declaration
13 (1) A person that provides the Registrar with a copy of an affidavit or statutory
declaration in a matter in respect of which an appeal lies under subsection 56(1) of
the Act must retain the original for a retention period that ends one year after the day
on which the applicable appeal period expires but, if an appeal is taken, ends on the
day on which the final judgment is given in the appeal.
Provision of original
(2) On request by the Registrar made before the end of the retention period, the
person must provide the original to the Registrar.
Extension of time — fee
14 A person that applies for an extension of time under section 47 of the Act must
pay the fee set out in item 1 of the schedule to these Regulations.
Prescribed days — extension of time periods
15 The following days are prescribed for the purpose of subsection 66(1) of the Act:
(a) Saturday;
(b) Sunday;
(c) January 1 or, if January 1 falls on a Saturday or Sunday, the following
Monday;
(d) Good Friday;
(e) Easter Monday;
(f) the Monday before May 25;
(g) June 24 or, if June 24 falls on a Saturday or Sunday, the following Monday;
(h) July 1 or, if July 1 falls on a Saturday or Sunday, the following Monday;
(i) the first Monday in August;
(j) the first Monday in September;
(k) the second Monday in October;
(l) November 11 or, if November 11 falls on a Saturday or Sunday, the following
Monday;
(m) December 25 and 26 or
(i) if December 25 falls on a Friday, that Friday and the following Monday, and
(ii) if December 25 falls on a Saturday or Sunday, the following Monday and
Tuesday; and
(n) any day on which the Office of the Registrar of Trademarks is closed to the
public for all or part of that day during ordinary business hours.
Trademark Agents
List of Trademark Agents
Eligibility for examination
16 A person is eligible to sit for a qualifying examination for trademark agents if the
person meets the following requirements:
(a) on the first day of the examination, resides in Canada and
(i) has been employed for at least 24 months in the Office of the Registrar of
Trademarks either on the examining staff or as a person to whom any of the
Registrar’s powers, duties and functions under section 38 or 45 of the Act
have been delegated,
(ii) has worked in Canada in the area of Canadian trademark law and
practice, including in the preparation and prosecution of applications for the
registration of trademarks, for at least 24 months, or
(iii) has worked in the area of trademark law and practice, including in the
preparation and prosecution of applications for the registration of trademarks,
for at least 24 months of which at least 12 were worked in Canada with the
rest being worked in another country where the person was authorized to act
as a trademark agent under the law of that country; and
(b) within two months after the day on which the notice referred to in subsection
18(2) was published,
(i) notifies the Registrar in writing of their intention to sit for the examination,
(ii) pays the fee set out in item 2 of the schedule, and
(iii) furnishes the Registrar with a statement indicating that they will meet the
requirements set out in paragraph (a), along with supporting justifications.
Establishment of examining board
17 (1) An examining board is established for the purpose of preparing, administering
and marking a qualifying examination for trademark agents.
Membership
(2) The Registrar must appoint the members of the board, at least two of whom must
be trademark agents nominated by the Intellectual Property Institute of Canada.
Frequency of qualifying examinations
18 (1) The examining board must administer a qualifying examination for trademark
agents at least once a year.
Notice of date of examination
(2) The Registrar must publish on the website of the Canadian Intellectual Property
Office a notice that specifies the date of the next qualifying examination and
indicates that a person must meet the requirements set out in section 16 in order to
be eligible to sit for the examination.
Designation of place of examination
(3) The Registrar must designate the place or places where the qualifying
examination is to be held and must, at least 14 days before the first day of the
examination, notify every person that has met the requirements set out in paragraph
16(b) of the designated place or places.
Listing of trademark agents
19 The Registrar must, on written request and payment of the fee set out in item 3 of
the schedule, enter on the list of trademark agents that is kept under section 28 of
the Act the name of
(a) each resident of Canada who has passed the qualifying examination for
trademark agents;
(b) each resident of another country who is authorized to act as a trademark
agent under the law of that country; and
(c) each firm with at least one member who has their name entered on the list as
a trademark agent.
Maintenance of name on list
20 (1) During the period beginning on January 1 and ending on March 31 of each
year,
(a) a resident of Canada whose name is on the list of trademark agents must, to
maintain their name on the list, pay the fee set out in item 4 of the schedule;
(b) a resident of another country whose name is on that list must, to maintain
their name on the list, file a declaration, signed by them, indicating their country of
residence and that they are authorized to act as a trademark agent under the law
of that country; and
(c) a firm whose name is on that list must, to maintain its name on the list, file a
declaration, signed by one of its members whose name is on the list, indicating all
of its members whose names are on the list.
Removal from list
(2) The Registrar must remove from the list of trademark agents the name of any
trademark agent that
(a) fails to comply with subsection (1); or
(b) no longer meets the requirements under which their name was entered on the
list unless the trademark agent is a person referred to in paragraph 19(a) or (b) or
a firm referred to in paragraph 19(c).
Reinstatement
21 If the name of a trademark agent has been removed from the list of trademark
agents under subsection 20(2), it may be reinstated if the trademark agent
(a) applies to the Registrar, in writing, for reinstatement within one year after the
day on which their name was removed from the list; and
(b) as the case may be,
(i) is a person referred to in paragraph 19(a) and pays the fees set out in
items 4 and 5 of the schedule,
(ii) is a person referred to in paragraph 19(b) and files the declaration referred
to in paragraph 20(1)(b), or
(iii) is a firm referred to in paragraph 19(c) and files the declaration referred to
in paragraph 20(1)(c).
Representation
Power to appoint trademark agent
22 (1) An applicant, registered owner or other person may appoint a trademark agent
to represent them in any business before the Office of the Registrar of Trademarks.
Requirement to appoint associate trademark agent
(2) A trademark agent that does not reside in Canada must appoint a trademark
agent that resides in Canada as an associate trademark agent to represent the
person that appointed them in any business before the Office of the Registrar of
Trademarks.
Power to appoint associate trademark agent
(3) A trademark agent that resides in Canada, other than an associate trademark
agent, may appoint another trademark agent that resides in Canada as an associate
trademark agent to represent the person that appointed them in any business before
the Office of the Registrar of Trademarks.
Notice of appointment or revocation
23 The appointment of a trademark agent or the revocation of such an appointment
is effective starting on the day on which the Registrar receives notice of the
appointment or revocation, including, in the case of an appointment, the postal
address of the trademark agent.
Acts done by or in relation to trademark agent
24 (1) In any business before the Office of the Registrar of Trademarks, any act done
by or in relation to a trademark agent that resides in Canada, other than an associate
trademark agent, has the same effect as an act done by or in relation to the person
that appointed them in respect of that business.
Acts done by or in relation to associate trademark agent
(2) In any business before the Office of the Registrar of Trademarks, any act done by
or in relation to an associate trademark agent has the same effect as an act done by
or in relation to the person that appointed, in respect of that business, the trademark
agent that appointed the associate trademark agent.
Persons authorized to act
25 (1) Subject to subsection (4), in any business before the Office of the Registrar of
Trademarks, a person may be represented by another person only if that other
person is a trademark agent.
Cases involving trademark agents
(2) Subject to subsections (3) and (4), in any business before the Office of the
Registrar of Trademarks in respect of which a person has appointed a trademark
agent
(a) the person must not represent themselves; and
(b) no one other than the trademark agent, if that agent resides in Canada, or an
associate trademark agent appointed by that trademark agent, is permitted to
represent that person.
Exceptions
(3) A person that has appointed a trademark agent may represent themselves for the
purpose of
(a) filing an application for the registration of a trademark, an application for
international registration referred to in sections 98 to 100 or a transformation
application referred to in section 147;
(b) paying a fee;
(c) giving notice under section 23;
(d) renewing the registration of a trademark under section 46 of the Act; or
(e) making a request or providing evidence under section 48 of the Act.
Exceptions
(4) With respect to any business referred to in paragraphs (3)(a) to (e), a person may
be represented by another person authorized by them, whether or not that other
person is a trademark agent.
Prohibited Marks
Fee
26 Any person or entity that requests the giving of public notice under paragraph 9(1)
(n) or (n.1) of the Act must pay the fee set out in item 6 of the schedule to these
Regulations.
Application for Registration of Trademark
Scope
27 A separate application must be filed for the registration of each trademark.
Language
28 An application for the registration of a trademark, with the exception of the
trademark itself, must be in English or French.
Manner of describing goods or services
29 The statement of the goods or services referred to in paragraph 30(2)(a) of the
Act must describe each of those goods or services in a manner that identifies a
specific good or service.
Representation or description
30 The following requirements are prescribed for the purpose of paragraph 30(2)(c)
of the Act:
(a) a representation may contain more than one view of the trademark only if the
multiple views are necessary for the trademark to be clearly defined;
(b) a two-dimensional representation must not exceed 8 cm by 8 cm;
(c) if the trademark consists in whole or in part of a three-dimensional shape, a
representation must be a two-dimensional graphic or photographic
representation;
(d) if colour is claimed as a feature of the trademark or if the trademark consists
exclusively of a single colour or a combination of colours without delineated
contours, a visual representation must be in colour;
(e) if colour is not claimed as a feature of the trademark or if the trademark does
not consist exclusively of a single colour or a combination of colours without
delineated contours, a visual representation must be in black and white;
(f) if the trademark consists in whole or in part of a sound, a representation must
include a recording of the sound in a format that is designated by the Registrar as
being accepted for that purpose; and
(g) a description must be clear and concise.
Contents
31 The following information and statements are prescribed for the purpose of
paragraph 30(2)(d) of the Act:
(a) the applicant’s name and postal address;
(b) if the trademark consists in whole or in part of characters other than Latin
characters, a transliteration of those other characters into Latin characters
following the phonetics of the language of the application;
(c) if the trademark consists in whole or in part of numerals other than Arabic or
Roman numerals, a transliteration of those other numerals into Arabic numerals;
(d) a translation into English or French of any words in any other language that
are contained in the trademark;
(e) if the trademark consists in whole or in part of a three-dimensional shape, a
hologram, a moving image, a mode of packaging goods, a sound, a scent, a
taste, a texture or the positioning of a sign, a statement to that effect;
(f) if colour is claimed as a feature of the trademark, a statement to that effect,
along with the name of each colour claimed and an indication of the principal
parts of the trademark that are in that colour;
(g) if the trademark consists exclusively of a single colour or a combination of
colours without delineated contours, a statement to that effect, along with the
name of each colour; and
(h) if the trademark is a certification mark, a statement to that effect.
Fee
32 (1) A person that files an application for the registration of a trademark, other than
a Protocol application as defined in section 96 or a divisional application, must pay
the applicable fee set out in item 7 of the schedule.
Fee for divisional application
(2) A person that files a divisional application that does not stem from a Protocol
application as defined in section 96 must pay the applicable fee set out in item 7 of
the schedule for
(a) in the case that the corresponding original application is itself a divisional
application,
(i) if the filed divisional application stems from a series of divisional
applications, the original application from which the series stems, and
(ii) if the filed divisional application does not stem from a series of divisional
applications, the original application from which the corresponding original
application stems; and
(b) in any other case, the corresponding original application.
Deemed payment of fees
(3) If all or part of the applicable fee set out in item 7 of the schedule is paid in
respect of an application, the applicable fee referred to in that item, or part of it, as
the case may be, is deemed to have been paid for
(a) when that application is itself a divisional application,
(i) in the case that it stems from a series of divisional applications, the original
application from which stems the series and every divisional application that
stems from that original application, and
(ii) in the case that it does not stem from a series of divisional applications, its
corresponding original application and every divisional application that stems
from it; and
(b) when that application is not itself a divisional application, every divisional
application that stems from it.
Fees for filing date
(4) For the purpose of paragraph 33(1)(f) of the Act, the prescribed fees are those
fees set out in subparagraphs 7(a)(i) and (b)(i) of the schedule to these Regulations.
Request for Priority
Time of filing
33 (1) For the purpose of paragraph 34(1)(b) of the Act, a request for priority must be
filed within six months after the filing date of the application on which the request is
based.
Time and manner of withdrawal
(2) For the purpose of subsection 34(4) of the Act, a request for priority may be
withdrawn by filing a request to that effect before the application is advertised under
subsection 37(1) of the Act.
Default in Prosecution of Application
Time for remedying default
34 For the purpose of section 36 of the Act, the time within which a default in the
prosecution of an application may be remedied is two months after the date of the
notice of the default.
Amendment of Application for Registration of a Trademark
Before registration
35 (1) An application for the registration of a trademark may be amended before the
trademark is registered.
Exceptions
(2) Despite subsection (1), the application must not be amended
(a) to change the identity of the applicant, unless the change results from the
recording of a transfer of the application by the Registrar or, in the case of an
application other than a Protocol application as defined in section 96, to correct
an error in the applicant’s identification;
(b) to change the representation or description of the trademark, unless the
application has not been advertised under subsection 37(1) of the Act and the
trademark remains substantially the same;
(c) to broaden the scope of the statement of the goods or services contained in
the application beyond the scope of
(i) that statement on the filing date of the application, determined without
taking into account section 34 of the Act or subsection 106(2) of these
Regulations,
(ii) the narrower of that statement as advertised under subsection 37(1) of the
Act and that statement as amended after that advertisement, and
(iii) in the case of a Protocol application as defined in section 96, the list of
goods or services, in respect of Canada, contained — at the time of the
amendment, if it were made — in the international registration on which the
application is based;
(d) to add an indication that it is a divisional application;
(e) to add or delete a statement referred to in paragraph 31(b) of the Act or
paragraph 31(e), (f) or (g) of these Regulations, unless the application has not
been advertised under subsection 37(1) of the Act and the trademark remains
substantially the same; or
(f) after the application is advertised under subsection 37(1) of the Act, to add or
delete a statement referred to in paragraph 31(h) of these Regulations.
Exceptions to exceptions
(3) Despite subsection (2), an amendment referred to in that subsection may be
made in accordance with section 107, 111, 114 or 117.
SOR/2019-116, s. 1.
Transfer of Application for Registration of a Trademark
Fee
36 A person that requests the recording under subsection 48(3) of the Act of the
transfer of an application for the registration of a trademark must pay the fee set out
in item 8 of the schedule to these Regulations.
Required information
37 The Registrar must not record the transfer of an application for the registration of
a trademark under subsection 48(3) of the Act unless the Registrar has been
provided with the transferee’s name and postal address.
Effect of transfer — separate applications
38 If the transfer to a person of an application for the registration of a trademark is,
under subsection 48(3) of the Act or section 146 of these Regulations, recorded in
respect of at least one but not all of the goods or services specified in the initial
application,
(a) that person is deemed to be the applicant in respect of a separate application;
(b) the separate application is deemed to have the same filing date as that initial
application; and
(c) any action taken, before the day on which the transfer is recorded, in relation
to the initial application is deemed to have been taken in relation to that separate
application.
Divisional Application
Manner of identifying corresponding original application
39 For the purpose of subsection 39(2) of the Act, the corresponding original
application must be identified in a divisional application by means of its application
number, if known.
Steps deemed taken
40 Any action taken in respect of the corresponding original application, on or before
the day on which the divisional application is filed, is deemed to be an action taken in
respect of the divisional application, except
(a) an amendment of the statement of the goods or services contained in the
original application; and
(b) the payment of the applicable fee set out in item 7 of the schedule to these
Regulations.
SOR/2019-116, s. 2.
Advertisement
Manner
41 For the purpose of subsection 37(1) of the Act, an application is advertised by
publishing on the website of the Canadian Intellectual Property Office
(a) the application number;
(b) the name and postal address of the applicant and of the applicant’s trademark
agent, if any;
(c) any representation or description of the trademark contained in the
application;
(d) if the trademark is in standard characters, a note to that effect;
(e) if the trademark is a certification mark, a note to that effect;
(f) the filing date of the application;
(g) if the applicant filed a request for priority in accordance with paragraph 34(1)
(b) of the Act, the filing date and country or office of filing of the application on
which the request for priority is based;
(h) the statement of the goods or services in association with which the
trademark is used or proposed to be used, grouped according to the classes of
the Nice Classification, each group being preceded by the number of the class of
the Nice Classification to which that group of goods or services belongs and
presented in the order of the classes of the Nice Classification;
(i) any disclaimer made under section 35 of the Act; and
(j) if the Registrar has restricted the registration to a defined territorial area in
Canada under subsection 32(2) of the Act, a note to that effect.
Opposition Proceeding Under Section 38 of Act
Fee
42 For the purpose of subsection 38(1) of the Act, the fee to be paid for filing a
statement of opposition is that set out in item 9 of the schedule to these Regulations.
Correspondence
43 A person that corresponds with the Registrar in respect of an opposition
proceeding must clearly indicate that the correspondence relates to that proceeding.
Forwarding copies of documents
44 A party to an opposition proceeding that, on a given day, after the Registrar has
forwarded a copy of the statement of opposition to the applicant under subsection 38
(5) of the Act, provides to the Registrar a document, other than a document that they
are otherwise required to serve, that relates to that proceeding must, on that day,
forward a copy of it to the other party.
Service on representative of applicant
45 Unless they have appointed a trademark agent, an applicant may in their counter
statement under subsection 38(7) of the Act set out, or may file with the Registrar
and serve on the opponent a separate notice setting out, the name and address in
Canada of a person on whom or a firm on which service of any document in respect
of the opposition may be made with the same effect as if it had been served on the
applicant.
Manner of service
46 (1) Service of a document in respect of an opposition proceeding must be
effected
(a) by personal service in Canada;
(b) by registered mail to an address in Canada;
(c) by courier to an address in Canada;
(d) by the sending of a notice to the other party advising that the document to be
served has been filed with or provided to the Registrar, if the party seeking to
effect service does not have the information necessary to serve the other party in
accordance with any of paragraphs (a) to (c); or
(e) in any manner that is agreed to by the parties.
Service on trademark agent
(2) If a party to be served appoints a trademark agent that resides in Canada in
respect of an opposition proceeding,
(a) that agent is deemed to replace any person or firm set out in a statement of
opposition, counter statement or notice as a person on whom or a firm on which
service of any document in respect of the opposition may be made with the same
effect as if it had been served on the party directly; and
(b) service must be effected on that agent unless the parties agree otherwise.
Effective date of service
(3) Subject to subsections (4) to (7) and (10), service is effective on the day on which
the document is delivered.
Exception — service by registered mail
(4) Service by registered mail is effective on the day on which the document is
mailed.
Exception — service by courier
(5) Service by courier is effective on the day on which the document is provided to
the courier.
Exception — service by electronic means
(6) Service by an electronic means is effective on the day on which the document is
transmitted.
Exception — service by sending of notice
(7) Service by the sending of a notice under paragraph (1)(d) is effective on the day
on which the notice is sent.
Notice of manner and date of service
(8) The party effecting service must notify the Registrar of the manner of service and
the effective date of service.
Proof of service
(9) A party that serves a document must, on request of the Registrar, provide proof
of service within one month after the date of the request. If proof of service is not
provided within that month, the document is deemed not to have been served.
Validity of irregular service
(10) Service of a document other than in accordance with subsection (1) is
nonetheless valid if the Registrar determines that the document has been provided to
the party being served and informs the parties of that determination. The service is
effective on the day on which the document was provided to the party being served.
Counter statement — timing
47 For the purpose of subsection 38(7) of the Act, the time is two months.
Amendment
48 (1) No amendment to a statement of opposition or counter statement may be
made except with leave of the Registrar on terms that the Registrar considers to be
appropriate.
Interests of justice
(2) The Registrar must grant leave under subsection (1) if it is in the interests of
justice to do so.
Manner of submitting evidence
49 Evidence in respect of an opposition proceeding, other than evidence referred to
in subsection 56(3) of these Regulations, is to be submitted to the Registrar by way
of affidavit or statutory declaration. However, if the evidence consists of a document
or extract from a document that is in the official custody of the Registrar, it may be
submitted by way of a certified copy referred to in section 54 of the Act.
Timing of opponent’s evidence
50 (1) The opponent may submit evidence referred to in subsection 38(8) of the Act
to the Registrar within a period of four months after the day on which the applicant’s
service on the opponent of a copy of the counter statement is effective.
Timing of service
(2) For the purpose of subsection 38(9) of the Act, the time within which the
opponent must serve that evidence on the applicant is during that four-month period.
Opponent’s statement
(3) If the opponent does not wish to submit evidence referred to in subsection 38(8)
of the Act, they may submit a statement to that effect to the Registrar within the four-
month period referred to in subsection (1) of this section and, if so, they must serve it
on the applicant within that period.
Circumstances — deemed withdrawal of opposition
51 For the purpose of subsection 38(10) of the Act, the circumstances under which
the opponent’s not submitting and serving evidence referred to in subsection 38(8) of
the Act or a statement that the opponent does not wish to submit evidence results in
their opposition being deemed to have been withdrawn are that neither that evidence
nor that statement has been submitted and served by the opponent by the end of the
four-month period referred to in section 50 of these Regulations.
Timing of applicant’s evidence
52 (1) The applicant may submit evidence referred to in subsection 38(8) of the Act
to the Registrar within a period of four months after the day on which the opponent’s
service under section 50 of these Regulations is effective.
Timing of service
(2) For the purpose of subsection 38(9) of the Act, the time within which the applicant
must serve that evidence on the opponent is during that four-month period.
Statement of applicant
(3) If the applicant does not wish to submit evidence referred to in subsection 38(8)
of the Act, they may submit a statement to that effect to the Registrar within the four-
month period referred to in subsection (1) of this section and, if so, they must serve it
on the opponent within that period.
Circumstances — deemed abandonment of application
53 For the purpose of subsection 38(11) of the Act, the circumstances under which
the applicant’s not submitting and serving evidence referred to in subsection 38(8) of
the Act or a statement that the applicant does not wish to submit evidence results in
their application being deemed to have been abandoned are that neither that
evidence nor that statement has been submitted and served by the applicant by the
end of the four-month period referred to in section 52 of these Regulations.
Reply evidence — timing
54 Within one month after the day on which the service on the opponent under
section 52 is effective, the opponent may submit to the Registrar reply evidence and,
if so, they must serve it on the applicant within that one-month period.
Additional evidence
55 (1) A party may submit additional evidence with leave of the Registrar on terms
that the Registrar considers to be appropriate.
Interests of justice
(2) The Registrar must grant leave under subsection (1) if it is in the interests of
justice to do so.
Ordering of cross-examination
56 (1) On the application of a party made before the Registrar gives notice in
accordance with subsection 57(1), the Registrar must order the cross-examination
under oath or solemn affirmation, within the period specified by the Registrar, of any
affiant or declarant on an affidavit or statutory declaration that has been submitted to
the Registrar as evidence in the opposition proceeding.
Conduct of cross-examination
(2) The cross-examination is to be conducted as agreed to by the parties or, in the
absence of an agreement, as specified by the Registrar.
Transcript and undertakings
(3) Within the period specified by the Registrar for conducting the cross-examination,
(a) the party that conducted the cross-examination must submit to the Registrar
and serve on the other party the transcript of the cross-examination and the
exhibits to the cross-examination; and
(b) the party that was cross-examined must submit to the Registrar and serve on
the other party any information, document or material that they undertook to
provide in the course of the cross-examination.
Inadmissibility in absence of cross-examination
(4) An affidavit or statutory declaration is not to be part of the evidence if the affiant
or declarant declines or fails to attend for cross-examination.
Written representations
57 (1) After all evidence has been filed, the Registrar must give the parties notice
that they may submit written representations to the Registrar.
Timing of opponent’s written representations
(2) The opponent may submit written representations to the Registrar within a period
of two months after the date of that notice.
Timing of service
(3) For the purpose of subsection 38(9) of the Act, the time within which the
opponent must serve their written representations on the applicant is during that two-
month period.
Statement of opponent
(4) If the opponent does not wish to submit written representations, they may submit
a statement to that effect to the Registrar within the two-month period referred to in
subsection (2) and, if so, they must serve it on the applicant within that period.
Timing of applicant’s written representations
(5) The applicant may submit written representations to the Registrar within the
following period:
(a) if service referred to in subsection (3) or (4), as the case may be, is effective
within the two-month period referred to in subsection (2), two months after the
day on which that service is effective; and
(b) in any other case, two months after the end of the two-month period referred
to in subsection (2).
Timing of service
(6) For the purpose of subsection 38(9) of the Act, the time within which the applicant
must serve their written representations on the opponent is during the two-month
period determined under subsection (5) of this section for their submission of written
representations.
Statement of applicant
(7) If the applicant does not wish to submit written representations, they may submit
a statement to that effect to the Registrar within the two-month period determined
under subsection (5) for their submission of written representations and, if so, they
must serve it on the opponent within that period.
Request for hearing
58 (1) Within one month after the day on which the applicant’s service on the
opponent of written representations or of a statement that the applicant does not
wish to make written representations is effective — or, if no such service is effective
within the two-month period determined under subsection 57(5) for their submission
of written representations, within one month after the end of that two-month period —
a party that wishes to make representations to the Registrar at a hearing must file
with the Registrar a request that indicates
(a) whether they intend to make representations in English or French and
whether they will require simultaneous interpretation if the other party makes
representations in the other official language; and
(b) whether they wish to make representations in person, by telephone, by video
conference or by another means of communication offered by the Registrar, and
that sets out any information necessary to permit the use of the chosen means of
communication.
When representations may be made
(2) A party may make representations at the hearing only if they file a request in
accordance with subsection (1).
Changes
(3) If a party, at least one month before the date of the hearing, notifies the Registrar
of changes to be made in respect of any of the information provided under
subsection (1), the Registrar must modify the administrative arrangements for the
hearing accordingly.
Register
Particulars
59 For the purpose of paragraph 26(2)(f) of the Act, the following are other
particulars that are required to be entered on the register:
(a) the registration number;
(b) the name and postal address of the registered owner on the date of
registration;
(c) any representation or description of the trademark that is contained in the
application for the registration of the trademark;
(d) if the trademark is in standard characters, a note to that effect;
(e) if the trademark is a certification mark, a note to that effect; and
(f) if the Registrar has restricted the registration to a defined territorial area in
Canada under subsection 32(2) of the Act, a note to that effect.
Fee for extending statement of goods or services
60 For the purpose of subsection 41(1) of the Act, the fee to be paid by a registered
owner that makes an application to extend the statement of goods or services in
respect of which a trademark is registered is that set out in item 10 of the schedule to
these Regulations.
Merger of registrations
61 The Registrar may merge registrations under paragraph 41(1)(f) of the Act only if
the trademarks to which the registrations apply are the same and have the same
registered owner.
Fee for the giving of notice
62 For the purpose of subsection 44(1) of the Act, the fee to be paid by a person that
requests that a notice be given under that subsection is that set out in item 11 of the
schedule to these Regulations.
Requested statement of goods or services — timing
63 For the purpose of subsection 44.1(1) of the Act, the time within which a
registered owner must furnish the Registrar with a statement of goods and services
grouped in the manner described in subsection 30(3) of the Act is six months after
the date of the notice that was given to them.
Transfer of Registered Trademark
Fee
64 A person that requests the registration of the transfer of a registered trademark
under subsection 48(4) of the Act must pay the fee set out in item 12 of the schedule
to these Regulations.
Required information
65 The Registrar must not register the transfer of a registered trademark under
subsection 48(4) of the Act unless the Registrar has been provided with the
transferee’s name and postal address.
Effect of transfer — separate registrations
66 If the transfer to a person of a registered trademark is, under subsection 48(4) of
the Act or section 146 of these Regulations, registered in respect of at least one but
not all of the goods or services that are specified in the initial registration, that person
is deemed to be the registered owner of a separate registration that is deemed to
have the same registration date as that initial registration.
Proceeding Under Section 45 of Act
Fee
67 For the purpose of subsection 45(1) of the Act, the fee to be paid by a person that
requests that a notice be given under that subsection is that set out in item 13 of the
schedule to these Regulations.
Correspondence
68 A person that corresponds with the Registrar in respect of a proceeding under
section 45 of the Act must clearly indicate that the correspondence relates to that
proceeding.
Forwarding copies of documents
69 A party to a proceeding under section 45 of the Act that, on a given day after the
Registrar has given notice under subsection 45(1) of the Act, provides to the
Registrar a document, other than a document that they are otherwise required to
serve, that relates to that proceeding must, on that day, forward a copy of it to any
other party.
Service on representative of party
70 A party to a proceeding under section 45 of the Act may file with the Registrar and
serve on any other party to the proceeding a notice setting out the name and
address in Canada of a person on whom or a firm on which service of any document
in respect of the proceeding may be made with the same effect as if it had been
served on them.
Manner of service
71 (1) Service of a document in respect of a proceeding under section 45 of the Act
must be effected
(a) by personal service in Canada;
(b) by registered mail to an address in Canada;
(c) by courier to an address in Canada;
(d) by the sending of a notice to the other party advising that the document to be
served has been filed with or submitted to the Registrar, if the party seeking to
effect service does not have the information necessary to serve the other party in
accordance with any of paragraphs (a) to (c); or
(e) in any manner that is agreed to by the parties.
Service on trademark agent
(2) Despite section 70, if a party to be served appoints a trademark agent that
resides in Canada in respect of a proceeding under section 45 of the Act, service
must be effected on that agent unless the parties agree otherwise.
Effective date of service
(3) Subject to subsections (4) to (7) and (10), service is effective on the day on which
the document is delivered.
Exception — service by registered mail
(4) Service by registered mail is effective on the day on which the document is
mailed.
Exception — service by courier
(5) Service by courier is effective on the day on which the document is provided to
the courier.
Exception — service by electronic means
(6) Service by an electronic means is effective on the day on which the document is
transmitted.
Exception — service by sending of notice
(7) Service by the sending of a notice under paragraph (1)(d) is effective on the day
on which the notice is sent.
Notice of manner and date of service
(8) The party effecting service must notify the Registrar of the manner of service and
the effective date of service.
Proof of service
(9) A party that serves a document must, on request of the Registrar, provide proof
of service within one month after the date of the request. If proof of service is not
provided within that month, the document is deemed not to have been served.
Validity of irregular service
(10) Service of a document other than in accordance with subsection (1) is
nonetheless valid if the Registrar determines that the document has been provided to
the party being served and informs the parties of that determination. The service is
effective on the day on which the document was provided to the party being served.
Evidence — timing
72 For the purpose of subsection 45(2.1) of the Act, the time within which the
registered owner of the trademark must serve their evidence on the person at whose
request the notice was given is the three-month period referred to in subsection 45
(1) of the Act.
Written representations
73 (1) After the registered owner has furnished an affidavit or statutory declaration to
the Registrar in response to a notice given under subsection 45(1) of the Act, the
Registrar must give the parties notice that they may submit written representations to
the Registrar.
Timing if notice given at Registrar’s initiative
(2) For the purpose of subsection 45(2) of the Act, if the notice referred to in
subsection 45(1) of the Act was given on the Registrar’s own initiative, the time
within which the registered owner may submit written representations to the
Registrar is two months after the date of the notice given under subsection (1) of this
section.
Statement of registered owner
(3) If the registered owner does not wish to submit written representations in respect
of a notice referred to in subsection 45(1) of the Act that was given on the Registrar’s
own initiative, they may submit a statement to that effect to the Registrar within the
two-month period referred to in subsection (2) of this section.
Timing if notice given on request
(4) For the purpose of subsections 45(2) and (2.1) of the Act, if the notice referred to
in subsection 45(1) of the Act was given at the request of a person, the time within
which that person may submit written representations to the Registrar and must
serve those representations on the registered owner is two months after the date of
the notice given under subsection (1) of this section.
Statement of person requesting notice
(5) If that person does not wish to submit written representations, they may submit a
statement to that effect to the Registrar within the two-month period referred to in
subsection (4) and, if so, they must serve it on the registered owner within that
period.
Timing of registered owner’s written representations
(6) For the purpose of subsections 45(2) and (2.1) of the Act, if the notice referred to
in subsection 45(1) of the Act was given at the request of a person, the time within
which the registered owner may submit written representations to the Registrar and
must serve those representations on that person is
(a) in the case that a service referred to in subsection (4) or (5) of this section, as
the case may be, is effective within the two-month period referred to in that
subsection (4), two months after the day on which that service is effective; and
(b) in any other case, two months after the end of the two-month period referred
to in that subsection (4).
Statement of registered owner
(7) If the registered owner does not wish to submit written representations in respect
of a notice referred to in subsection (6), they may submit a statement to that effect to
the Registrar within the two-month period determined under subsection (6) for their
submission of written representations and, if so, they must serve it on the person
requesting the notice within that period.
Request for hearing
74 (1) Every party that wishes to make representations to the Registrar at a hearing
must file with the Registrar a request that indicates
(a) whether the party intends to make representations in English or French and
whether they will require simultaneous interpretation if another party makes
representations in the other official language; and
(b) whether the party wishes to make representations in person, by telephone, by
video conference or by another means of communication offered by the Registrar
and that sets out any information necessary to permit the use of the chosen
means of communication.
Period
(2) The request must be filed within the following period:
(a) if the notice referred to in subsection 45(1) of the Act was given on the
Registrar’s own initiative, one month after the day on which the registered owner
submits to the Registrar written representations or a statement that they do not
wish to make written representations or, if no such submission is made within the
two-month period referred to in subsection 73(2) of these Regulations, one month
after the end of that two-month period; and
(b) if the notice referred to in subsection 45(1) of the Act was given at the request
of a person, one month after the day on which the registered owner’s service of
written representations or of a statement that they do not wish to make written
representations is effective or, if no such service is effective within the two-month
period determined under 73(6) of these Regulations for their submission of
written representations, one month after the end of that two-month period.
When representations may be made
(3) A party may make representations at the hearing only if they file a request in
accordance with this section.
Changes
(4) If a party, at least one month before the date of the hearing, notifies the Registrar
of changes to be made in respect of any of the information provided under
subsection (1), the Registrar must modify the administrative arrangements for the
hearing accordingly.
Renewal of Registration
Fee
75 For the purpose of section 46 of the Act, the renewal fee to be paid is that set out
in item 14 of the schedule to these Regulations.
Period
76 For the purpose of section 46 of the Act, the period within which the renewal fee
is to be paid
(a) begins on the day that is six months before the end of the initial period or the
renewal period, as the case may be, and
(b) ends at the later of
(i) the end of the six-month period that begins after the end of that initial or
renewal period, and
(ii) if a notice is sent under subsection 46(2) of the Act, the end of the two-
month period that begins after the date of that notice.
Deemed date — merged registrations
77 For the purpose of a renewal under section 46 of the Act, the deemed day of
registration in respect of a registration of a trademark that results from the merger of
registrations under paragraph 41(1)(f) of the Act is the day that is 10 years before the
earliest day, after the day of the merger, on which the initial period or the renewal
period, as the case may be, in respect of any of the registrations being merged
would have expired, had the merger not occurred.
Objection Proceeding Under Section 11.13 of Act
Fee
78 For the purpose of subsection 11.13(1) of the Act, the fee to be paid for filing a
statement of objection is that set out in item 15 of the schedule to these Regulations.
Correspondence
79 A person that corresponds with the Registrar in respect of an objection
proceeding must clearly indicate that the correspondence relates to that proceeding.
Forwarding copies of documents
80 A party to an objection proceeding that, on a given day after a statement of
objection has been filed with the Registrar under subsection 11.13(1) of the Act,
provides to the Registrar a document, other than a document that they are otherwise
required to serve on another party, that relates to that proceeding must, on that day,
forward a copy of it to the other party.
Manner of service
81 (1) Service of a document in respect of an objection proceeding must be effected
(a) by personal service in Canada;
(b) by registered mail to an address in Canada;
(c) by courier to an address in Canada;
(d) by the sending of a notice to the other party advising that the document to be
served has been filed with or submitted to the Registrar, if the party seeking to
effect service does not have the information necessary to serve the other party in
accordance with any of paragraphs (a) to (c); or
(e) in any manner that is agreed to by the parties.
Service on trademark agent
(2) If a party to be served appoints a trademark agent that resides in Canada in
respect of an objection proceeding,
(a) that agent is deemed, in respect of any party that has been served with notice
of the appointment, to replace any person or firm set out in a statement by the
Minister or a statement of objection as a person on whom or a firm on which
service of any document may be made with the same effect as if it had been
served on the party directly; and
(b) service must be effected on that agent unless the parties agree otherwise.
Effective date of service
(3) Subject to subsections (4) to (7) and (10), service is effective on the day on which
the document is delivered.
Exception — service by registered mail
(4) Service by registered mail is effective on the day on which the document is
mailed.
Exception — service by courier
(5) Service by courier is effective on the day on which the document is provided to
the courier.
Exception — service by electronic means
(6) Service by an electronic means is effective on the day on which the document is
transmitted.
Exception — service by sending of notice
(7) Service by the sending of a notice under paragraph (1)(d) is effective on the day
on which the notice is sent.
Notice of manner and date of service
(8) The party effecting service must notify the Registrar of the manner of service and
the effective date of service.
Proof of service
(9) A party that serves a document must, on request of the Registrar, provide proof
of service within one month after the date of the request. If proof of service is not
provided within that month, the document is deemed not to have been served.
Validity of irregular service
(10) Service of a document other than in accordance with subsection (1) is
nonetheless valid if the Registrar determines that the document has been provided to
the party being served and informs the parties of that determination. The service is
effective on the day on which the document was provided to the party being served.
Amendment
82 (1) No amendment to a statement of objection or counter statement may be made
except with leave of the Registrar on terms that the Registrar considers to be
appropriate.
Interests of justice
(2) The Registrar must grant leave under subsection (1) if it is in the interests of
justice to do so.
Manner of submitting evidence
83 Evidence in respect of an objection proceeding, other than evidence referred to in
subsection 91(3) of these Regulations, is to be submitted to the Registrar by way of
affidavit or statutory declaration. However, if the evidence consists of a document or
extract from a document that is in the official custody of the Registrar, it may be
submitted by way of a certified copy referred to in section 54 of the Act.
Timing of objector’s evidence
84 (1) The objector may submit evidence referred to in subsection 11.13(5) of the Act
to the Registrar within a period of four months after the day on which the responsible
authority’s service on the objector of a copy of the counter statement is effective.
Timing of service
(2) For the purpose of subsection 11.13(5.1) of the Act, the time within which the
objector must serve that evidence on the responsible authority is during that four-
month period.
Objector’s statement
(3) If the objector does not wish to submit evidence, they may submit a statement to
that effect to the Registrar within the four-month period referred to in subsection (1)
and, if so, they must serve it on the responsible authority within that period.
Circumstances — deemed withdrawal of objection
85 For the purpose of subsection 11.13(6) of the Act, the circumstances under which
the objector’s not submitting and serving evidence or a statement referred to in that
subsection results in their objection being deemed to have been withdrawn are that
neither that evidence nor that statement has been submitted and served by the
objector by the end of the four-month period referred to in section 84 of these
Regulations.
Timing of responsible authority’s evidence
86 (1) The responsible authority may submit evidence referred to in subsection 11.13
(5) of the Act to the Registrar within a period of four months after the day on which
the objector’s service under section 84 of these Regulations is effective.
Timing of service
(2) For the purpose of subsection 11.13(5.1) of the Act, the time within which the
responsible authority must serve that evidence on the objector is during that four-
month period.
Statement of responsible authority
(3) If the responsible authority does not wish to submit evidence, they may submit a
statement to that effect to the Registrar within the four-month period referred to in
subsection (1) and, if so, they must serve it on the objector within that period.
Non-application of subsection 11.13(5) of Act — circumstances
87 For the purpose of paragraph 11.13(5)(a) of the Act, the circumstances under
which the responsible authority’s not submitting evidence or a statement that they do
not wish to submit evidence results in the loss of the opportunity to submit evidence
and to make representations to the Registrar are that neither that evidence nor that
statement has been submitted and served by the responsible authority by the end of
the four-month period referred to in section 86 of these Regulations.
Circumstances — indication or translation not entered on list
88 For the purpose of subsection 11.13(6.1) of the Act, the circumstances under
which the responsible authority’s not submitting and serving evidence or a statement
that they do not wish to submit evidence results in the indication or the translation not
being entered on the list are that neither that evidence nor that statement has been
submitted and served by the responsible authority by the end of the four-month
period referred to in section 86 of these Regulations.
Reply evidence — timing
89 Within one month after the day on which the service on the objector under section
86 is effective, the objector may submit to the Registrar reply evidence and, if so,
they must serve it on the responsible authority within that one-month period.
Additional evidence
90 (1) A party may submit additional evidence with leave of the Registrar on terms
that the Registrar considers to be appropriate.
Interests of justice
(2) The Registrar must grant leave under subsection (1) if it is in the interests of
justice to do so.
Ordering of cross-examination
91 (1) On the application of a party made before the Registrar gives notice in
accordance with subsection 92(1), the Registrar must order the cross-examination
under oath or solemn affirmation, within the period specified by the Registrar, of any
affiant or declarant on an affidavit or statutory declaration that has been submitted to
the Registrar as evidence in the objection proceeding.
Conduct of cross-examination
(2) The cross-examination is to be conducted as agreed to by the parties or, in the
absence of an agreement, as specified by the Registrar.
Transcript and undertakings
(3) Within the period specified by the Registrar for conducting the cross-examination,
(a) the party that conducted the cross-examination must submit to the Registrar
and serve on the other party the transcript of the cross-examination and exhibits
to the cross-examination; and
(b) the party that was cross-examined must submit to the Registrar and serve on
the other party any information, document or material that they undertook to
provide in the course of the cross-examination.
Inadmissibility in absence of cross-examination
(4) An affidavit or statutory declaration is not to be part of the evidence if an affiant or
declarant declines or fails to attend for cross-examination.
Written representations
92 (1) After all evidence has been filed, the Registrar must give the parties notice
that they may submit written representations to the Registrar.
Timing of objector’s written representations
(2) The objector may submit written representations to the Registrar within a period
of two months after the date of that notice.
Timing of service
(3) For the purpose of subsection 11.13(5.1) of the Act, the time within which the
objector must serve their written representations on the responsible authority is
during that two-month period.
Statement of objector
(4) If the objector does not wish to submit written representations, they may submit a
statement to that effect to the Registrar within the two-month period referred to in
subsection (2) and, if so, they must serve it on the responsible authority within that
period.
Timing of responsible authority’s written representations
(5) The responsible authority may submit written representations to the Registrar
within the following period:
(a) if service referred to in subsection (3) or (4), as the case may be, is effective
within the two-month period referred to in that subsection, two months after the
day on which that service is effective; and
(b) in any other case, two months after the end of the two-month period referred
to in subsection (2).
Timing of service
(6) For the purpose of subsection 11.13(5.1) of the Act, the time within which the
responsible authority must serve their written representations on the objector is
during the two-month period determined under subsection (5) of this section for their
submission of written representations.
Statement of responsible authority
(7) If the responsible authority does not wish to submit written representations, they
may submit a statement to that effect to the Registrar within the two-month period
determined under subsection (5) for their submission of written representations and,
if so, they must serve it on the objector within that period.
Request for hearing
93 (1) Within one month after the day on which the responsible authority’s service on
the objector of written representations or of a statement that the responsible authority
does not wish to make written representations is effective — or, if no such service is
effective within the two-month period determined under subsection 92(5) for their
submission of written representations, within one month after the end of that two-
month period — a party that wishes to make representations to the Registrar at a
hearing must file with the Registrar a request that indicates
(a) whether they intend to make representations in English or French and
whether they will require simultaneous interpretation if the other party makes
representations in the other official language; and
(b) whether they wish to make representations in person, by telephone, by video
conference or by another means of communication offered by the Registrar, and
that sets out any information necessary to permit the use of the chosen means of
communication.
When representations may be made
(2) A party may make representations at the hearing only if they file a request in
accordance with subsection (1).
Changes
(3) If a party, at least one month before the date of the hearing, notifies the Registrar
of changes to be made in respect of any of the information provided under
subsection (1), the Registrar must modify the administrative arrangements for the
hearing accordingly.
Copies of Documents
Fee for certified copies
94 (1) A person that requests a certified copy of a document that is in the Registrar’s
possession must pay the fee set out in item 16 or 17 of the schedule, as applicable.
Exception
(2) Subsection (1) does not apply in respect of a certified copy that is transmitted
under section 60 of the Act or rule 318 of the Federal Courts Rules, including as
modified by rule 350 of those Rules.
Fee for non-certified copies
95 A person that requests a non-certified copy of a document that is in the
Registrar’s possession must pay the fee set out in item 18 or 19 of the schedule, as
applicable.
PART 2
Implementation of Madrid Protocol
General
Interpretation
96 The following definitions apply in this Part.
basic application means an application for the registration of a trademark that has
been filed under subsection 30(1) of the Act and that constitutes the basis for an
application for international registration, but does not include a Protocol application.
(demande de base)
basic registration means a registration of a trademark that is on the register and
that constitutes the basis for an application for international registration, but does not
include a Protocol registration. (enregistrement de base)
Common Regulations means the Common Regulations under the Madrid
Agreement Concerning the International Registration of Marks and the Protocol
Relating to that Agreement, as modified from time to time. (Règlement d’exécution
commun)
contracting party means any state or intergovernmental organization that is a party
to the Protocol. (partie contractante)
date of international registration means the date borne by an international
registration under Rule 15 of the Common Regulations. (date de l’enregistrement
international)
date of notification of territorial extension means the day on which the
International Bureau notifies the Registrar of a request made under Article 3ter(1) or
(2) of the Protocol. (date de la notification d’extension territoriale)
holder means the person in whose name an international registration is recorded in
the International Register. (titulaire)
opposition period means the two-month period referred to in subsection 38(1) of
the Act. (délai d’opposition)
Protocol means the Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks, adopted at Madrid on June 27, 1989, including
any amendments, modifications and revisions made from time to time to which
Canada is a party. (Protocole)
Protocol application means an application referred to in subsection 103(1) or (2) or
a divisional application referred to in subsection 124(1). (demande prévue au
Protocole)
Protocol registration means the registration of a trademark under subsection 132
(1). (enregistrement prévu au Protocole)
Non-application of section 66 of Act
97 (1) Section 66 of the Act does not apply in respect of periods fixed by this Part,
except
(a) the two-month period fixed by subsections 117(2) and (3) of these
Regulations;
(b) the maximum four-month extension fixed by section 125 of these Regulations;
and
(c) the three-month period fixed by section 147 of these Regulations.
Application of Rule 4(4) of Common Regulations
(2) Rule 4(4) of the Common Regulations applies to all periods fixed by this Part
other than those referred to in paragraphs (1)(a) to (c) of this section.
Application for International Registration (Office of Registrar as Office of Origin)
Qualification
Conditions
98 A person may file with the Registrar an application for international registration of
a trademark for presentation to the International Bureau if they meet the following
conditions:
(a) the person is a national of or is domiciled in Canada or has a real and
effective industrial or commercial establishment in Canada; and
(b) the person is the applicant in respect of a basic application for the trademark
or, if there is a basic registration in respect of the trademark, the registered owner
of the trademark.
Contents and Form
Contents
99 (1) Every application for international registration filed with the Registrar must
include the following information:
(a) the applicant’s name and postal address;
(b) the number and filing date of the basic application or the number and date of
registration of the basic registration;
(c) a statement that
(i) the applicant is a national of Canada,
(ii) the applicant is domiciled in Canada, accompanied by the address of the
applicant’s domicile in Canada if the address filed under paragraph (a) is not
in Canada, or
(iii) the applicant has a real and effective industrial or commercial
establishment in Canada, accompanied by the address of the applicant’s
industrial or commercial establishment in Canada if the address filed under
paragraph (a) is not in Canada;
(d) if colour is claimed as a feature of the trademark in the basic application or
basic registration, the same claim;
(e) a reproduction of the trademark, which must be in colour if the trademark is in
colour in the basic application or basic registration or if colour is claimed as a
feature of the trademark in the basic application or the basic registration;
(f) if the trademark in the basic application or basic registration is a certification
mark, it consists in whole or in part of a three-dimensional shape or a sound or it
consists exclusively of a single colour or a combination of colours without
delineated contours, an indication to that effect;
(g) a list of the goods or services for which international registration is sought that
must
(i) include only goods or services that are within the scope of the basic
application or basic registration, and
(ii) group the goods or services according to the classes of the Nice
Classification, each group being preceded by the number of the class of the
Nice Classification to which that group of goods or services belongs and
presented in the order of the classes of the Nice Classification; and
(h) the names of the contracting parties for which the extension of protection is
requested under Article 3ter(1) of the Protocol.
Language
(2) The application, with the exception of the trademark itself, must be in English or
French.
Manner of filing
(3) The application must be filed by
(a) using the online service that is designated by the Registrar as being accepted
for that purpose; or
(b) completing the form issued by the International Bureau and providing it to the
Registrar by an electronic means specified by the Registrar.
Functions of Registrar
Office of origin
100 On receipt of an application for international registration that is filed in
accordance with section 99 by a person that meets the conditions set out in section
98, the Registrar must, in respect of that application, act as the Office of origin in
accordance with the Protocol and the Common Regulations, including by
(a) certifying that the information included in the application for international
registration corresponds to the information included in the basic application or
basic registration;
(b) presenting the application for international registration to the International
Bureau; and
(c) in the case that the application for international registration results in an
international registration, notifying the International Bureau to the following effect:
(i) if, in respect of all or any of the goods or services listed in the international
registration, the basic application is withdrawn, abandoned or refused or the
basic registration is cancelled or expunged before the end of five years after
its date of international registration, and
(ii) if a proceeding that began before the end of that five-year period leads, in
respect of all or any of the goods or services listed in the international
registration, to the withdrawal, abandonment or refusal of the basic application
or to the cancellation or expungement of the basic registration after that
period.
Change in Ownership of International Registration
Request for recording
101 (1) A transferee of an international registration may file with the Registrar a
request for the recording of a change in ownership of the international registration for
presentation to the International Bureau if they meet the following requirements:
(a) the transferee is a national of or is domiciled in Canada or has a real and
effective industrial or commercial establishment in Canada; and
(b) the transferee has been unable to obtain, on a request for the recording of a
change in ownership of the international registration, the signature of the holder
of the international registration or of the holder’s representative recorded in
accordance with Rule 3(4)(a) of the Common Regulations.
Manner of filing
(2) The request must be in English or French and be filed by
(a) using the online service that is designated by the Registrar as being accepted
for that purpose; or
(b) completing the form issued by the International Bureau and providing it to the
Registrar by an electronic means specified by the Registrar.
Accompanying documents
(3) The request must be accompanied by
(a) evidence of the transfer; and
(b) a statement to the effect that the transferee made efforts to obtain the
signature of the holder of the international registration or that of their
representative recorded in accordance with Rule 3(4)(a) of the Common
Regulations and that their efforts were not successful.
Transmission to International Bureau
102 The Registrar must transmit to the International Bureau a request for the
recording of a change in ownership that is filed in accordance with section 101 if the
Registrar considers the evidence of the transfer to be satisfactory.
Territorial Extension to Canada
Protocol Application
Request under Article 3ter(1) of the Protocol
103 (1) On the registration of a trademark in the International Register on the basis
of an application that contains a request made under Article 3ter(1) of the Protocol
for the extension to Canada of the protection of a trademark resulting from its
international registration, an application is deemed to have been filed under
subsection 30(1) of the Act by the holder of the international registration for the
registration of the trademark and in respect of the same goods or services that are
listed in that request.
Request under Article 3ter(2) of the Protocol
(2) On the recording in the International Register of a request made under Article
3ter(2) of the Protocol for the extension to Canada of the protection of a trademark
resulting from its international registration, an application is deemed to have been
filed under subsection 30(1) of the Act by the holder of the international registration
for the registration of the trademark and in respect of the same goods or services
that are listed in that request.
Deemed application for certification mark
(3) An application referred to in subsection (1) or (2) is deemed to be an application
for the registration of a certification mark if the international registration relates to a
collective mark, a certification mark or a guarantee mark.
Non-Registrable Trademarks
Goods or services outside scope of international registration
104 A trademark that is the subject of a Protocol application is not registrable if the
goods or services specified in the Protocol application are not within the scope of the
international registration.
Filing Date
Non-application of sections 33 and 34 of Act
105 (1) Sections 33 and 34 of the Act do not apply in respect of a Protocol
application.
References to subsection 34(1) of the Act
(2) In respect of the filing date of a Protocol application, the reference in subsections
12(3) and 32(1) and paragraphs 38(2)(e) and (f) of the Act to “subsection 34(1)” is to
be read as “subsection 106(2) of the Trademark Regulations”.
SOR/2019-116, s. 3.
Date of international registration
106 (1) The filing date of a Protocol application is
(a) if the Protocol application results from a request made under Article 3ter(1) of
the Protocol, the date of international registration of the corresponding
international registration; and
(b) if the Protocol application results from a request made under Article 3ter(2) of
the Protocol, the date borne by the subsequent designation under Rule 24(6) of
the Common Regulations.
Exception — priority
(2) Despite subsection (1), in the case that, before the filing date of a Protocol
application as determined under that subsection, the applicant of the Protocol
application or the applicant’s predecessor in title had applied, in or for any country of
the Union other than Canada, for the registration of the same or substantially the
same trademark in association with the same kind of goods or services, the filing
date of the application in or for the other country is deemed to be the filing date of the
Protocol application and the applicant is entitled to priority in Canada accordingly
despite any intervening use in Canada or making known in Canada or any
intervening application or registration, if
(a) the international registration on which the Protocol application is based
contains a declaration claiming the priority of the application in or for the other
country, along with an indication of the name of the country or office where the
filing was made and of the filing date;
(b) the filing date of the Protocol application as determined under subsection (1)
is within a period of six months after the date on which the earliest application
was filed in or for any country of the Union for the registration of the same or
substantially the same trademark in association with the same kind of goods or
services; and
(c) the applicant of the Protocol application, at the filing date of the Protocol
application as determined under subsection (1), is a citizen or national of or is
domiciled in a country of the Union or has a real and effective industrial or
commercial establishment in a country of the Union.
Amendment or Withdrawal of Protocol Application
Recording resulting in deletion
107 (1) If the International Bureau notifies the Registrar of the recording in the
International Register under Rule 27(1)(a) of the Common Regulations of a limitation
of the list of goods or services, in respect of Canada, of an international registration
on which a Protocol application is based,
(a) in the case that the recording results in a deletion of all goods or services from
that list without giving rise to a resulting new list, the Protocol application is
deemed to be withdrawn;
(b) subject to paragraph (a), in the case that the recording results in a deletion of
all goods or services from that list of a particular class of the Nice Classification
without giving rise to a resulting new list for that particular class of the Nice
Classification, the Protocol application is deemed to be amended accordingly;
and
(c) in the case that the recording results in a deletion of one or more of the goods
or services from a list of a particular class of the Nice Classification and gives rise
to a resulting new list for that particular class of the Nice Classification, the
Registrar must determine, with respect to each good or service in that resulting
new list for that particular class, whether the following requirements are met:
(i) the good or service is within the scope of the Protocol application on its
filing date, determined without taking into account subsection 106(2), and on
the date of the recording in the International Register,
(ii) the good or service is within the scope of the Protocol application as
advertised, if the date of the recording in the International Register is on or
after the day on which the application is advertised under subsection 37(1) of
the Act,
(iii) the good or service is within the scope of the Protocol application as
amended, if the Protocol application is amended on or after the day on which
the application is advertised under subsection 37(1) of the Act and if the date
of the recording in the International Register is on or after the day of the
amendment, and
(iv) the good or service is described in ordinary commercial terms and in a
manner that identifies a specific good or service.
Recording resulting in new list
(2) In the case that the recording results in a deletion of one or more of the goods or
services from a list of a particular class of the Nice Classification and gives rise to a
resulting new list for that particular class of the Nice Classification,
(a) if the Registrar determines that the requirements set out in paragraph (1)(c)
are not met for any good or service in that resulting list for that particular class,
the Registrar must, in accordance with Rule 27(5) of the Common Regulations,
send to the International Bureau a declaration to the effect that the limitation has
no effect in Canada in respect of all of the goods and services in that class; and
(b) if the Registrar determines that the requirements set out in paragraph (1)(c)
are met for all of the goods or services in that resulting list for that particular
class, the Protocol application is deemed to be amended accordingly.
SOR/2019-116, s. 4.
Complete renunciation
108 If, in respect of an international registration on which a Protocol application is
based, the International Bureau notifies the Registrar of the recording in the
International Register of a renunciation in respect of Canada for all of the goods or
services that are listed in the international registration, the Protocol application is
deemed to be withdrawn.
Complete cancellation
109 If, in respect of an international registration on which a Protocol application is
based, the International Bureau notifies the Registrar of the recording in the
International Register of a cancellation of the international registration for all of the
goods or services that are listed in the international registration, the Protocol
application is deemed to be withdrawn.
Partial cancellation
110 If, in respect of an international registration on which a Protocol application is
based, the International Bureau notifies the Registrar of the recording in the
International Register of a cancellation of the international registration for at least one
but not all of the goods or services that are listed in the international registration, the
Protocol application is deemed to be amended or withdrawn accordingly.
Change of name or address
111 If, in respect of an international registration on which a Protocol application is
based, the International Bureau notifies the Registrar of the recording in the
International Register of a change of name or address of the holder, the Protocol
application is deemed to be amended accordingly.
Effective date of amendment or withdrawal
112 An amendment or withdrawal of a Protocol application under any of sections 107
to 111 is deemed to have taken effect on the date of the limitation, renunciation,
cancellation or change, as the case may be, as recorded in the International
Register.
Non-renewal of international registration
113 If the international registration on which a Protocol application is based is not
renewed in respect of Canada and the International Bureau so notifies the Registrar,
the Protocol application is deemed to have been withdrawn at the expiry of the
international registration in respect of Canada.
Effect of Correction of International Registration on Protocol Application
Deemed amendment to application
114 If the International Bureau notifies the Registrar of a correction of an
international registration affecting a Protocol application, the Protocol application is
deemed to be amended accordingly.
Amendment to non-advertised application
115 If a Protocol application has not been advertised under subsection 37(1) of the
Act before the date of notification of a correction of an international registration on
which the Protocol application is based and if the Registrar determines that the
deemed amendment to the Protocol application is substantive in respect of at least
one of the goods or services specified in the amended Protocol application and is not
limited to narrowing the scope of the statement of goods or services, then a
reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph 132(1)(d)
(i) of these Regulations to “date of notification of territorial extension” is to be read as
“day on which the International Bureau sent to the Registrar the notification of a
correction of an international registration on which the Protocol application is based”
in respect of that Protocol application.
Amendment to advertised application — all goods or services
116 If a Protocol application has been advertised under subsection 37(1) of the Act
before the date of notification of a correction of an international registration on which
the Protocol application is based and if the Registrar determines that the deemed
amendment to the Protocol application is substantive in respect of all of the goods or
services specified in the amended Protocol application and is not limited to narrowing
the scope of the statement of goods or services,
(a) the application is deemed to never have been advertised; and
(b) a reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph
132(1)(d)(i) of these Regulations to “date of notification of territorial extension” is
to be read as “day on which the International Bureau sent to the Registrar the
notification of a correction of an international registration on which the Protocol
application is based” in respect of that Protocol application.
Amendment to advertised application — some goods or services
117 (1) If a Protocol application has been advertised under subsection 37(1) of the
Act before the date of notification of a correction of an international registration on
which the Protocol application is based and if the Registrar determines that the
deemed amendment to the Protocol application is substantive in respect of at least
one but not all of the goods or services specified in the amended Protocol application
and is not limited to narrowing the scope of the statement of goods or services, then
the Registrar must, by notice, invite the applicant to elect one of the following
options:
(a) that the Protocol application be amended to delete those goods or services; or
(b) that the Protocol application be deemed to never have been advertised.
Deletion of goods or services
(2) If the applicant elects the option referred to in paragraph (1)(a) or does not make
an election within two months after the date of the notice, the Protocol application is
deemed to be amended to delete those goods or services.
Deemed non-advertisement of application
(3) If the applicant selects the option referred to in paragraph (1)(b) within two
months after the date of the notice
(a) the Protocol application is deemed never to have been advertised; and
(b) a reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph
132(1)(d)(i) to “date of notification of territorial extension” is to be read as “day on
which the International Bureau sent to the Registrar the notification of a correction
of an international registration on which the Protocol application is based” in
respect of that Protocol application.
Effective date of amendment
118 An amendment to a Protocol application under section 114 or subsection 117(2)
is deemed to have taken effect on the later of the filing date of the Protocol
application and the day on which the error was made that gave rise to the correction
of the international registration.
Abandonment
Statement of confirmation of total provisional refusal
119 If the Registrar treats a Protocol application as abandoned under section 36 of
the Act, the Registrar must send a statement of confirmation of total provisional
refusal to the International Bureau.
Examination
Notification of provisional refusal
120 The Registrar must not refuse a Protocol application under subsection 37(1) of
the Act without first sending to the International Bureau, before the end of 18 months
after the date of notification of territorial extension, a notification of provisional refusal
stating the Registrar’s objections.
Statement of confirmation of total provisional refusal
121 If the Registrar refuses a Protocol application under subsection 37(1) of the Act,
the Registrar must send a statement of confirmation of total provisional refusal to the
International Bureau.
Divisional Application
Non-application of subsections 39(1), (2) and (5) of Act
122 Subsections 39(1), (2) and (5) of the Act do not apply in respect of a Protocol
application.
Filing of request for division
123 (1) The applicant in respect of a Protocol application may limit the original
Protocol application to one or more of the goods or services that were within its
scope and file with the Registrar for presentation to the International Bureau a
request for the division, in respect of Canada, of the international registration on
which the original Protocol application is based for any other goods or services that
were within the scope of
(a) the original Protocol application on its filing date, determined without taking
into account subsection 106(2);
(b) the original Protocol application on the day on which the request is filed, if the
request is filed on or after the day on which the Protocol application is advertised
under subsection 37(1) of the Act; and
(c) the international registration in respect of Canada on the day on which the
request is filed.
Manner of filing
(2) The request must be in English or French and be filed by
(a) using the online service that is designated by the Registrar as being accepted
for that purpose; or
(b) completing the form issued by the International Bureau and providing it to the
Registrar by an electronic means specified by the Registrar.
Contents
(3) The request must indicate
(a) the number of the international registration on which the original Protocol
application is based;
(b) the name of the holder of that international registration;
(c) the name of the goods or services to be set apart, grouped according to the
classes of the Nice Classification; and
(d) the amount of the fee being paid to the International Bureau and the method
of payment, or instructions to debit the required amount to an account opened
with the International Bureau, and the name of the person effecting the payment
or giving the instructions.
Sending of request to International Bureau
(4) The Registrar must send to the International Bureau any request that is filed in
accordance with subsections (1) to (3).
SOR/2019-116, s. 5.
Deemed divisional application
124 (1) If, following receipt of a request under section 123, the International Bureau
notifies the Registrar of the creation of a divisional international registration in
respect of Canada, the applicant is deemed to have filed a divisional application for
the registration of the same trademark as in the divisional international registration
and in respect of the same goods or services that are listed in the divisional
international registration in respect of Canada.
Division of divisional application
(2) The divisional application may itself be divided under subsection (1) and section
123, in which case those provisions apply as if that divisional application were an
original Protocol application.
Opposition
Limitation of extension
125 In respect of a Protocol application, the Registrar is not permitted, on application
made to the Registrar, to extend, under section 47 of the Act, the two-month period
referred to in subsection 38(1) of the Act by more than four months.
Filing of statement of opposition
126 A statement of opposition under section 38 of the Act in respect of a Protocol
application must be in English or French and be filed by using the online service that
is designated by the Registrar as being accepted for that purpose.
Notification of provisional refusal
127 If, in respect of a Protocol application, a statement of opposition is filed, the
Registrar must send to the International Bureau a notification of provisional refusal.
No new ground of opposition
128 If the Registrar sends to the International Bureau a notification of provisional
refusal based on an opposition, the statement of opposition may not be amended to
add a new ground of opposition.
Notice of opposition period
129 If, in respect of a Protocol application, it is likely that the opposition period will
extend beyond the end of 18 months after the date of notification of territorial
extension, the Registrar must so inform the International Bureau.
Statement of confirmation of total provisional refusal
130 The Registrar must send a statement of confirmation of total provisional refusal
in respect of a Protocol application to the International Bureau if
(a) the Protocol application is deemed to have been abandoned under subsection
38(11) of the Act; or
(b) the Registrar refuses the Protocol application under subsection 38(12) of the
Act with respect to all of the goods or services specified in it and either the period
for filing an appeal has ended and no appeal has been filed or, if an appeal has
been taken, the final judgment has been decided in favour of the opponent.
Registration of Trademarks
Non-application of section 40 of Act
131 Section 40 of the Act does not apply in respect of a Protocol application.
Obligations of Registrar
132 (1) In respect of a trademark that is the subject of a Protocol application, the
Registrar must register the trademark in the name of the applicant, issue a certificate
of its registration and send a statement to the International Bureau that protection is
granted to the trademark if
(a) the Protocol application has not been opposed and the opposition period has
ended;
(b) the Protocol application has been opposed and the opposition has been
decided in favour of the applicant and either the period for filing an appeal has
ended and no appeal has been filed or, if an appeal has been taken, the final
judgment has been decided in favour of the applicant;
(c) 18 months have passed after the date of notification of territorial extension
and, within that 18-month period, the Registrar did not inform the International
Bureau that it was likely that the opposition period would extend beyond that 18-
month period and
(i) did not send to the International Bureau a notification of provisional refusal,
or
(ii) did send to the International Bureau a notification of provisional refusal, but
not one based on an opposition, and is not satisfied that any of paragraphs 37
(1)(a) to (d) of the Act apply; or
(d) the Protocol application has been opposed, the following periods have ended,
the Registrar informed the International Bureau, in the period referred to in
subparagraph (i), that it was likely that the opposition period would extend beyond
that period and the Registrar did not send to the International Bureau, before the
end of the period referred to in subparagraph (ii), a notification of provisional
refusal based on an opposition:
(i) the 18-month period after the date of notification of territorial extension, and
(ii) the period that ends at the earlier of the end of the seven-month period
after the day on which the opposition period began and the end of the one-
month period after the day on which the opposition period ended.
Non-advertisement
(2) Despite subsection 37(1) of the Act, the Registrar must not cause the Protocol
application to be advertised if the trademark was registered under subsection (1) of
this section without the Protocol application having been advertised.
Amendment of Register
Non-application of statutory provisions
133 Paragraphs 41(1)(a) to (c) and (f), subsections 41(2) and (4) and section 44.1 of
the Act do not apply in respect of a Protocol registration.
Filing of request for merger
134 (1) The holder of a divisional international registration in respect of Canada may
file with the Registrar for presentation to the International Bureau a request to merge
the divisional international registration with the international registration from which it
was divided if there is at least one Protocol registration based on each of those
international registrations and
(a) all of the Protocol registrations stem from the same original Protocol
application;
(b) they relate to the same trademark; and
(c) their registered owner is the holder of the international registrations.
Manner of filing
(2) The request must be in English or French and be filed by
(a) using the online service that is designated by the Registrar as being accepted
for that purpose; or
(b) completing the form issued by the International Bureau and providing it to the
Registrar by an electronic means specified by the Registrar.
Contents
(3) The request must indicate the number of each of the international registrations to
be merged and the name of the holder of those international registrations.
Sending of request to International Bureau
(4) The Registrar must send to the International Bureau any request that is filed in
accordance with subsections (1) to (3).
Merger of Protocol registrations
(5) If, following receipt of the request, the International Bureau notifies the Registrar
of the merger of a divisional international registration in respect of Canada into the
international registration from which it was divided, the Registrar must amend the
register to merge the Protocol registrations that are based on those international
registrations and that stem from the same original Protocol application.
Recording resulting in deletion
135 (1) If the International Bureau notifies the Registrar of the recording in the
International Register under Rule 27(1)(a) of the Common Regulations of a limitation
of the list of goods or services, in respect of Canada, of an international registration
on which a Protocol registration is based,
(a) in the case that the recording results in a deletion of all goods or services from
that list without giving rise to a resulting new list, the Registrar must cancel the
Protocol registration; and
(b) subject to paragraph (a), in the case that the recording results in a deletion of
all goods or services from that list of a particular class of the Nice Classification
without giving rise to a resulting new list for that particular class of the Nice
Classification, the Registrar must amend the register accordingly; and
(c) in the case that the recording results in a deletion of one or more of the goods
or services from a list of a particular class of the Nice Classification and gives rise
to a resulting new list for that particular class of the Nice Classification, the
Registrar must determine, with respect to each good or service in that resulting
new list for that particular class, whether the following requirements are met:
(i) the good or service is within the scope of the Protocol registration on the
date of the recording in the International Register, and
(ii) the good or service is described in ordinary commercial terms and in a
manner that identifies a specific good or service.
Recording resulting in new list
(2) In the case that the recording results in a deletion of one or more of the goods or
services from a list of a particular class of the Nice Classification and gives rise to a
resulting new list for that particular class of the Nice Classification,
(a) if the Registrar determines that the requirements set out in paragraph (1)(c)
are not met for any good or service in that resulting list for that particular class,
the Registrar must, in accordance with Rule 27(5) of the Common Regulations,
send to the International Bureau a declaration to the effect that the limitation has
no effect in Canada in respect of all of the goods and services in that class; and
(b) if the Registrar determines that the requirements set out in paragraph 1(c) are
met for all of the goods or services in that resulting list for that particular class, the
Registrar must amend the register accordingly.
Complete renunciation
136 If, in respect of an international registration on which a Protocol registration is
based, the International Bureau notifies the Registrar of the recording in the
International Register of a renunciation in respect of Canada for all of the goods or
services that are listed in the international registration, the Registrar must cancel the
Protocol registration.
Complete cancellation
137 If, in respect of an international registration on which a Protocol registration is
based, the International Bureau notifies the Registrar of the recording in the
International Register of a cancellation of the international registration for all of the
goods or services that are listed in the international registration, the Registrar must
cancel the Protocol registration.
Partial cancellation
138 If, in respect of an international registration on which a Protocol registration is
based, the International Bureau notifies the Registrar of the recording in the
International Register of a cancellation of the international registration for at least one
but not all of the goods or services that are listed in the international registration, the
Registrar must cancel the Protocol registration or amend the register accordingly.
Change of name or address
139 If, in respect of an international registration on which a Protocol registration is
based, the International Bureau notifies the Registrar of the recording in the
International Register of a change of name or address of the holder, the Registrar
must amend the register accordingly.
Correction of international registration
140 (1) If the International Bureau notifies the Registrar of a correction of an
international registration affecting a Protocol registration and
(a) if the Registrar considers that protection can still be granted to the
international registration as corrected, the Registrar must amend the register
accordingly; or
(b) if the Registrar considers that protection cannot, or can no longer, be granted
to the international registration as corrected, the Registrar must so declare and
state their grounds in a notification of provisional refusal sent to the International
Bureau within 18 months after the date on which the notification of the correction
was sent.
Period to respond
(2) The Registrar must by notice invite the registered owner to respond to a
declaration made under paragraph (1)(b) within the period specified in the notice.
Protection granted
(3) If — after considering any response received within the specified period or, if
there is none, at the end of that period — the Registrar considers that protection can
be granted to the international registration as corrected, the Registrar must so notify
the International Bureau and amend the register accordingly.
Protection not granted
(4) If — after considering any response received within the specified period or, if
there is none, at the end of that period — the Registrar still considers that protection
cannot, or can no longer, be granted to the international registration as corrected, the
Registrar must so notify the International Bureau and amend the register or cancel
the Protocol registration accordingly.
Effective date of cancellation or amendment
141 A cancellation of a Protocol registration or an amendment of the register under
any of sections 135 to 140 is deemed to take effect on the date of the limitation,
renunciation, cancellation, change or correction, as the case may be, as recorded in
the International Register.
Failure to consider request for extension of time
142 (1) The Registrar may remove a Protocol registration from the register if the
Registrar registered the trademark without considering a previously filed request for
an extension of time to file a statement of opposition, unless the time limit under
Article 5(2) of the Protocol to make a notification of provisional refusal based on an
opposition has ended.
Notification
(2) If the Registrar removes a Protocol registration from the register under subsection
(1), the Registrar must so notify the International Bureau.
Renewal
Non-application of section 46 of Act
143 Section 46 of the Act does not apply in respect of a Protocol registration.
Period of registration
144 (1) Subject to the Act and any other provision of these Regulations, a Protocol
registration is on the register for the period that begins on the day of the registration
and that ends at the moment of its cancellation or expungement.
Expungement
(2) If the international registration on which a Protocol registration is based is not
renewed in respect of Canada and the International Bureau so notifies the Registrar,
the Registrar must expunge the Protocol registration. The Protocol registration is
deemed to have been expunged at the expiry of the international registration in
respect of Canada.
Transfer
Non-application of subsections 48(3) to (5) of Act
145 Subsections 48(3) to (5) of the Act do not apply in respect of a Protocol
application or a Protocol registration.
Recording or registration
146 If the International Bureau notifies the Registrar of the recording in the
International Register of a change in ownership in respect of Canada of an
international registration on which a Protocol application or a Protocol registration is
based, the Registrar must record the transfer of the Protocol application or register
the transfer of the Protocol registration accordingly.
Transformation
Application
147 (1) If an international registration on which a Protocol application or Protocol
registration is based is cancelled under Article 6(4) of the Protocol for all or any of
the goods or services listed in the international registration, the person that was the
holder of the international registration on the date of cancellation recorded in the
International Register, or their successor in title, may, within three months after that
date, file with the Registrar an application (referred to in these Regulations as a
“transformation application”) to revive the former Protocol application as an
application for the registration of the trademark or the former Protocol registration as
a registration of the trademark.
Single application or registration
(2) The transformation application may only be filed in respect of a single Protocol
application or Protocol registration.
List of goods or services — scope
(3) The statement of the goods or services in the transformation application may only
include goods or services that are within the scope of
(a) goods or services that were cancelled from the international registration in
respect of Canada; and
(b) goods or services in the Protocol application or Protocol registration on the
date of cancellation recorded in the International Register.
Contents of application
(4) The transformation application must include the following:
(a) a statement to the effect that the application is for transformation of an
international registration;
(b) a statement of the goods or services in respect of which the registration of the
trademark is sought;
(c) the international registration number of the cancelled international registration;
and
(d) information that permits the Registrar to identify the Protocol application or
Protocol registration that was based on the cancelled international registration.
Manner of filing
(5) The transformation application must be in English or French and be filed by an
electronic means specified by the Registrar.
No extension
(6) The applicant may not apply under section 47 of the Act for an extension of the
three-month period referred to in subsection (1) of this section.
Consequences — trademark subject of cancelled Protocol application
148 If a transformation application is filed in accordance with section 147 for the
revival of a Protocol application,
(a) an application is deemed to have been filed under subsection 30(1) of the Act
by the person that, on the date of cancellation recorded in the International
Register, was the holder of the same trademark as in the cancelled international
registration and in respect of the goods or services specified in the transformation
application;
(b) the deemed application is deemed to include any document or information
contained in the Protocol application, other than the statement of goods or
services;
(c) the deemed application is deemed to have the same filing date as the
Protocol application; and
(d) any steps taken in relation to the Protocol application before the day on which
the International Bureau notifies the Registrar of the recording of the cancellation
of the international registration are deemed to have been taken in relation to the
deemed application.
Consequences — trademark subject of cancelled Protocol registration
149 If a transformation application is filed in accordance with section 147 for the
revival of a Protocol registration,
(a) the Registrar must, in respect of the goods or services specified in the
transformation application, register the trademark in the name of the applicant
and issue a certificate of its registration;
(b) the registration of the trademark is deemed to have resulted from the Protocol
application that resulted in the Protocol registration;
(c) the day of registration of the trademark is deemed to be the day of registration
of the Protocol registration;
(d) despite subsection 46(1) of the Act and subject to any other provision of the
Act, the registration of the trademark is or is deemed to be on the register for
(i) an initial period that begins on the day of registration of the trademark and
ends when the international registration’s term of protection would have
expired had the international registration not been cancelled, and
(ii) subsequent renewal periods of 10 years if the fee set out in item 14 of the
schedule to these Regulations is paid
(A) for the first renewal period, within the period referred to in section 76 or
within six months after the day on which the trademark is registered under
paragraph (a), determined without taking into account paragraph (c),
whichever ends later, and
(B) for each subsequent renewal period, within the period referred to in
section 76; and
(e) any steps taken in relation to the Protocol registration before the day on which
the International Bureau notifies the Registrar of the recording of the cancellation
of the international registration are deemed to have been taken in relation to the
registration made under paragraph (a).
SOR/2019-116, s. 6.
Denunciation
Application of Article 15(5) of Protocol
150 Article 15(5) of the Protocol applies to a holder of an international registration on
which a Protocol application or a Protocol registration is based if that holder is no
longer entitled to file international applications under Article 2(1) of the Protocol
because of the denunciation of the Protocol by a contracting party.
PART 3
Transitional Provisions, Repeal and Coming into Force
Transitional Provisions
Definitions
151 The following definitions apply in this Part.
coming-into-force day means the day on which these Regulations come into force
under subsection 162(1). (date d’entrée en vigueur)
former Regulations means the Trade-marks Regulations as they read immediately
before the coming-into-force day. (ancien règlement)
Filing date already determined
152 If, before the coming-into-force day, the date of filing of an application for the
registration of a trademark has been determined in accordance with section 25 of the
former Regulations, the filing date of the application is that date of filing.
Filing date — coming into force
153 If, in respect of an application for the registration of a trademark, all of the items
set out in subsection 33(1) of the Act have been received by the Registrar before the
coming-into-force day but not all of the items set out in section 25 of the former
Regulations have been delivered to the Registrar before that day, the filing date of
the application is, subject to section 34 of the Act as it read immediately before the
day on which section 339 of the Economic Action Plan 2014 Act, No. 1 comes into
force:
(a) the coming-into-force day, in the case that the difference between the fee set
out in item 7 of the schedule to these Regulations and the fee referred to in
section 1 of the schedule to the former Regulations has been paid before the
coming-into-force day; and
(b) the date on which that difference is paid, in the case that that difference has
not been paid before the coming-into-force day.
Exception to subsections 32(1) and (2)
154 (1) If the filing date, determined without taking into account section 34 of the Act,
of an application for the registration of a trademark, other than a Protocol application
as defined in section 96 of these Regulations, precedes the coming-into-force day
and the trademark has not yet been registered on that day, subsections 32(1) and (2)
of these Regulations do not apply and the person that filed the application must pay
the fee set out in item 15 of the schedule to the former Regulations in addition to the
fee, set out in item 1 of that schedule, that they have already paid.
Deemed payment of fees
(2) If the fee set out in item 15 of the schedule to the former Regulations is paid in
respect of an application referred to in subsection (1), the fee referred to in that item
is deemed to have been paid for
(a) when that application is itself a divisional application,
(i) in the case that it stems from a series of divisional applications, the original
application from which stems the series and every divisional application that
stems from that original application, and
(ii) in the case that it does not stem from a series of divisional applications, its
corresponding original application and every divisional application that stems
from it; and
(b) when that application is not itself a divisional application, every divisional
application that stems from it.
SOR/2019-116, s. 7.
Exception to subsection 32(4)
155 If, before the coming-into-force day, in respect of an application for the
registration of a trademark, the items set out in paragraphs 33(1)(a) to (e) of the Act
have been received by the Registrar, the fee for the purpose of paragraph 33(1)(f) of
the Act, referred to in section 69.1 of the Act, in respect of that application is, despite
subsection 32(4) of these Regulations, the fee set out in item 1 of the schedule to the
former Regulations.
Exception to section 34
156 Despite section 34, if the date of a notice of a default in the prosecution of an
application precedes the coming-into-force day, the time within which the default may
be remedied is that specified in the notice.
Exception to paragraph 35(2)(e)
157 Despite paragraph 35(2)(e) of these Regulations, an application for registration
referred to in section 69.1 of the Act may, if the trademark remains substantially the
same, be amended to add a statement referred to in paragraph 31(b) of the Act or
paragraph 31(e), (f) or (g) of these Regulations.
Exception to section 75
158 Despite section 75 of these Regulations, for the purpose of section 46 of the Act,
the renewal fee for a registration in respect of which the day of the last renewal — or,
if the registration has never been renewed, the day of the registration — is more than
15 years before the coming-into-force day is the fee set out in item 7 of the schedule
to the former Regulations.
Exception to section 76 — first renewal
159 Despite section 76 of these Regulations and subject to section 160 of these
Regulations, for the purpose of subsections 46(2) to (5) of the Act, in respect of the
first renewal, on or after the coming-into-force day, of a registration that is on the
register on the day before the coming-into-force day, the period within which the
renewal fee must be paid
(a) begins on the later of the day of registration and the day of last renewal, and
(b) ends on the later of
(i) the end of the period of 15 years and six months that begins after the later
day described in paragraph (a), and
(ii) if a notice is sent under subsection 46(2) of the Act, the end of the two-
month period that begins after the date of that notice.
Exception to section 76 — goods or services not grouped
160 Despite section 76 of these Regulations, if the goods or services in respect of
which a trademark is registered are not, at the end of the period established by
section 76 or 159 of these Regulations, as the case may be, grouped on the register
in accordance with paragraph 26(2)(e.1) of the Act, the period within which the fees
set out in subparagraphs 14(a)(ii) and (b)(ii) of the schedule to these Regulations
must be paid ends on the expiry of the two-month period that begins after the day on
which the Registrar sends to the registered owner a notice stating that the register
has been amended to so group the goods or services and that the registration will be
expunged in the event that the fees are not paid within the prescribed period, in the
case where that two-month period ends later than that period established by section
76 or 159 of these Regulations.
Repeal 161 The Trade-marks Regulations are repealed.
SOR/96-195; SOR/2007-91, s. 1
1
1
Coming into Force
S.C. 2015, c. 36
162 (1) Subject to subsection (2), these Regulations come into force on the
day on which section 67 of the Economic Action Plan 2015 Act, No. 1, 2015
comes into force.
February 1, 2019
(2) If section 67 of the Economic Action Plan 2015 Act, No. 1 comes into force
before February 1, 2019, sections 123, 124 and 134 come into force on
February 1, 2019.
[Note: Regulations in force June 17, 2019, see SI/2018-100.]
SCHEDULE
(Section 14, subparagraph 16(b)(ii), section 19, paragraph 20(1)(a), subparagraph 21(b)(i), sections 26, 32 and 36, paragraph 40(2)(d), sections 42, 60, 62, 64, 67, 75 and 78, subsection 94(1), section 95, subparagraph 149(d)(ii), paragraph 153(a) and section 160)
Tariff of Fees
Column 1
Column
2
Item Description Fee ($)
1 Application for an extension of time under section 47 of the Act, for each act for which the
extension is sought
125.00
2 Trademark agent qualifying examination 400.00
3 Request for name to be entered on the list of trademark agents
(a) if the request and fee are submitted online through the Canadian Intellectual
Property Office website
300.00
(b) in any other case 350.00
4 Maintenance of name on list of trademark agents
(a) if the fee is submitted online through the Canadian Intellectual Property Office
website
300.00
*
*
Column 1
Column
2
Item Description Fee ($)
(b) in any other case 350.00
5 Reinstatement of name on list of trademark agents 200.00
6 Request for the giving of public notice under paragraph 9(1)(n) or (n.1) of the Act, for each
badge, crest, emblem, mark or armorial bearing
500.00
7 Application for the registration of a trademark
(a) if the application and fee are submitted online through the Canadian Intellectual
Property Office website
(i) for the first class of goods or services to which the application relates 330.00
(ii) for each additional class of goods or services to which the application relates as
of the filing date
100.00
(b) in any other case
(i) for the first class of goods or services to which the application relates 430.00
(ii) for each additional class of goods or services to which the application relates as
of the filing date
100.00
8 Request for the recording of the transfer of one or more applications for the registration of
a trademark under subsection 48(3) of the Act, for each application
100.00
9 Statement of opposition under subsection 38(1) of the Act 750.00
10 Application to amend the register under subsection 41(1) of the Act to extend the
statement of goods or services in respect of which a trademark is registered
(a) for the first class of goods or services to which the application relates 430.00
(b) for each additional class of goods or services to which the application relates as of
the filing date
100.00
11 Request for the giving of one or more notices under subsection 44(1) of the Act, for each
notice requested
400.00
Column 1
Column
2
Item Description Fee ($)
12 Request for the registration of the transfer of one or more registered trademarks under
subsection 48(4) of the Act, for each trademark
100.00
13 Request for the giving of one or more notices under subsection 45(1) of the Act, for each
notice requested
400.00
14 Renewal of the registration of a trademark under section 46 of the Act
(a) if the renewal is requested and the fee submitted online through the Canadian
Intellectual Property Office website
(i) for the first class of goods or services to which the request for renewal relates 400.00
(ii) for each additional class of goods or services to which the request for renewal
relates
125.00
(b) in any other case
(i) for the first class of goods or services to which the request for renewal relates 500.00
(ii) for each additional class of goods or services to which the request for renewal
relates
125.00
15 Statement of objection under subsection 11.13(1) of the Act 1,000.00
16 Certified copy in paper form
(a) for each certification 35.00
(b) for each page 1.00
17 Certified copy in electronic form
(a) for each certification 35.00
(b) for each trademark to which the request relates 10.00
18 Non-certified copy in paper form, for each page
Column 1
Column
2
Item Description Fee ($)
(a) if the requesting person makes the copy using equipment of the Office of the
Registrar of Trademarks
0.50
(b) if the office makes the copy 1.00
19 Non-certified copy in electronic form
(a) for each request 10.00
(b) for each trademark to which the request relates 10.00
(c) if the copy is requested on a physical medium, for each physical medium provided
other than the first
10.00