Vol. 152, No. 6 — February 10, 2018

Trademarks Regulations

Statutory authority

Trade-marks Act

Sponsoring department

Department of Industry

REGULATORY IMPACT ANALYSIS STATEMENT

(This statement is not part of the Regulations.)

Executive summary

Issues: The Government of Canada has committed to modernize Canada’s intellectual property (IP) regime by acceding to three international trademark treaties designed to simplify and harmonize administrative practices among national and regional IP offices. Canada’s existing trademark regime is not aligned with those of its major trading partners that are members of these treaties. Once the existing regime is modified to comply with the treaty requirements, Canada would be in a position to join the treaties, thereby reducing costs and complexity for all trademark applicants, both domestic and foreign.

Description: The proposed Trademarks Regulations (the proposed Regulations) would repeal and replace the existing Trade-marks Regulations in order to reflect the requirements of the three treaties, while also including changes to modernize the administration of trademark rights to align with modern business practices and increase clarity and legal certainty for users of the trademark system. These changes would simplify certain requirements, reduce administrative burden for users, clarify communication procedures, and align the procedures for the different types of administrative proceedings before the Trademarks Opposition Board (TMOB) where possible.

Cost-benefit statement: Estimated costs to the Government to implement the proposed Regulations would be $1.93 million over 10 years (total present value [TPV]) to handle requests for certification of applications for international registration and $0.93 million in outstanding expenditures to modify information technology (IT) systems. While administrative costs would increase for some users of the TMOB system and for trademark agents, estimated at $5.08 million (TPV), this would be balanced by overall administrative savings that would be experienced by direct stakeholders in the estimated amount of $8.89 million (TPV). Proposed fee changes (as reviewed by Parliament in February 2017) would save applicants $0.65 million per year, while increasing renewal costs to registered trademark owners by $7.64 million per year; these fee changes are not expected to impact the overall financial position of the Canadian Intellectual Property Office (CIPO) as the fee-setting exercise was broader in scope than the regulatory proposal and was designed to ensure financial neutrality for the organization.

In total, the regulatory proposal is estimated to have a net benefit of $0.94 million (TPV). In addition, the proposal would have other qualitative benefits, including a modernized trademark regime, increased ease of doing business for Canadian firms seeking trademark protection internationally, and more competition in the marketplace as a result of simplified and internationally harmonized procedures.

“One-for-One” Rule and small business lens: The proposed Regulations are considered an “OUT” under the “One-for-One” Rule, with an estimated annualized administrative cost decrease of $384,867. The small business lens does not apply to this proposal, as there are no significant changes in costs to small business.

Domestic and international coordination and cooperation: The proposed Regulations are designed to increase regulatory coordination between Canada and its major trading partners by making Canada adhere to three international treaties to which many countries and regional organizations are party. Acceding to these treaties would increase the alignment of Canada’s trademark regime with those of other member countries.

Issues

The Government of Canada has indicated a desire to modernize Canada’s IP regime and join several international IP treaties. With respect to trademarks, Canada is seeking to accede to the Singapore Treaty on the Law of Trademarks (Singapore Treaty), the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement) [collectively, the treaties].

Canada’s existing trademarks regime is not aligned with those of its major trading partners that are already members of the treaties. Currently, Canadian businesses wishing to register their trademarks in more than one country must learn the administrative requirements of each IP office and file a separate application in each country where protection is sought. This is a complex, costly and time-consuming process. Foreign businesses must also spend time and money researching the Canadian system, which may delay or dissuade them from entering the Canadian marketplace. Canada can simplify this process for applicants by joining the treaties, which would align Canada’s trademark regime with international norms and provide access to a single-window international trademark registration system that would allow registration in up to 100 jurisdictions through one application.

In addition, aspects of the Regulations must be updated, clarified and codified in order to modernize Canada’s trademark regime. In particular, changes are required concerning administrative proceedings before the TMOB in order to address inefficiencies, outdated requirements (e.g. prohibitions on electronic filing of certain documents) and areas of misalignment between the different types of proceedings, and to codify existing practices currently governed by practice notices.

If Canada does not make the regulatory changes proposed in this package, Canadians would forego the benefits of an internationally aligned and modern trademark regime.

Background

The treaties are agreements of the World Intellectual Property Organization (WIPO) that are designed to simplify and harmonize administrative practices among national and regional intellectual property (IP) offices. The Madrid Protocol governs an international trademark registration system that allows applicants to seek protection in multiple countries through a single application, filed through the International Bureau of WIPO. The Singapore Treaty is a trademark law treaty that simplifies and standardizes the administrative requirements and procedures of the trademark offices of member countries; however, it does not cover elements of substantive trademark law (e.g. whether a trademark distinguishes the owner’s goods or services from those of others). The Nice Agreement governs a standardized classification system for goods and services applied for the registration of trademarks (the Nice Classification). Both the Singapore Treaty and Madrid Protocol require use of the Nice Classification.

The Government announced its intent to accede to the treaties in February 2014. Changes to the Trade-marks Act (the Act) to facilitate Canada’s accession to the treaties received royal assent on June 19, 2014. Additional amendments to the Act to further modernize the administration of IP rights received royal assent on June 23, 2015. Accession to the treaties also responds to commitments under the Canada-E.U. Comprehensive Economic and Trade Agreement, which requires that parties make all reasonable efforts to comply with certain provisions of the Singapore Treaty and to accede to the Madrid Protocol.

This proposal also contains changes to the three types of administrative proceedings before the TMOB: opposition proceedings, which occur when someone objects to the registration of a trademark in Canada and seeks to prevent it from issuing to registration; objection proceedings, which are similar to opposition proceedings but relate to a geographical indication (an indication that identifies a product as originating in a particular territory, where a quality, reputation or other characteristic of the product is essentially attributable to its geographic origin); and summary cancellation proceedings under section 45 of the Act (section 45 proceedings), which are used to strike trademarks from the register for non-use. Some aspects of the proposed Regulations reflect changes brought about by the treaties, while others are meant to modernize and align the three types of proceedings where possible. Currently, the Regulations include provisions for opposition and objection proceedings, whereas the procedure for section 45 proceedings is entirely captured by a practice notice. Inconsistencies between the three proceedings create unpredictability for parties or agents in knowing what to expect from one process to another.

CIPO is responsible for the administration of the trademark regime. The proposed Regulations would complete the next steps towards modernizing Canada’s trademark framework.

Objectives

The primary objective of the proposed Regulations is to carry out the amendments that were made to the Act in order to allow Canada’s accession to the treaties. This would align Canada’s trademark regime with international norms and help Canadian businesses stay competitive in international markets by giving them an efficient means of protecting their intellectual property in various jurisdictions around the world.

A second objective is to reduce red tape, lower costs, and increase certainty for applicants, to the benefit of Canadian businesses and those looking to invest in Canadian markets.

Finally, the proposed Regulations concerning opposition, objection and section 45 processes aim to align these proceedings with the changes brought about by the treaties, harmonize the three types of proceedings where possible, and codify existing practices currently governed by practice notices. The changes would increase market certainty and help maintain balance in the marketplace by providing reasonably swift and cost-effective administrative decisions.

The proposed Regulations align with the Government’s plan to develop a new intellectual property strategy to help ensure that Canada’s intellectual property regime is modern, robust, and supports Canadian innovations in the 21st century.

Description

The proposed changes to the Regulations can be summarized according to four main themes: changes to the rules of general application for trademarks (contained in Part 1 of the proposed Regulations), new rules concerning applications filed under the Madrid Protocol (Part 2 of the proposed Regulations), changes concerning proceedings before the TMOB (contained in Part 1 and Part 2), and transitional provisions (Part 3).

Minor changes to language are reflected throughout the proposed Regulations in order to modernize the regulatory text. In addition, references to concepts that are no longer found in the Act would be removed throughout the proposed Regulations, such as the Trade-marks Journal, associated trademarks, registrations for distinguishing guises, and the four bases for filing a trademark in Canada (use in Canada, proposed use in Canada, use and registration abroad, and making known in Canada).

A. Rules of general application

With respect to the general provisions for the registration of a trademark in Canada, the proposed Regulations would modernize and streamline the existing requirements related to communication procedures, representation by an agent, application requirements, examination, and registration. Many of these changes are required for compliance with the Singapore Treaty and Nice Agreement.

(1) Communicating with the Canadian Intellectual Property Office

The proposed provisions relating to communications and correspondence aim to simplify communications with CIPO and reflect modern communication practices. The proposed Regulations include the following key changes:

(2) General requirements concerning fees

New proposed provisions would enable the Registrar to waive fees if the Registrar is satisfied that the circumstances justify it, as well as to refund overpayments. The time limit to request refunds would be three years, in order to provide certainty for CIPO’s financial records and harmonize with the rules for other forms of IP protection in Canada.

(3) Trademark agents

The current rules regarding qualifying examinations for trademark agents and management of the register of agents would remain largely unchanged.

The proposed Regulations include the following key changes:

(4) Application for registration of a trademark

Proposed changes to this section would simplify and modernize the application requirements and introduce provisions to support the filing of applications for non-traditional trademarks that are newly allowed under the Act (e.g. scent, texture, taste, hologram, moving image).

The proposed Regulations include the following key changes:

(5) Priority requests

The proposed Regulations would require that a request to claim the date of filing in another country as the date of filing in Canada (referred to as a request for priority) be made within six months after the filing date of that earlier application on which the request is based. This time limit has been moved from the Act to the proposed Regulations to provide greater flexibility should CIPO wish to consider changes to the prescribed period in the future. A request to withdraw a priority must be filed prior to the application being advertised.

(6) Remedying a default (failure to respond to the Registrar)

A trademark application is considered in default if the applicant has not taken action in response to requests made by the Office. Currently, the applicant may remedy that default by taking action within a two-month time limit set by the proposed Registrar in a notice. This two-month period would be codified in the Regulations to provide greater certainty.

(7) Amending a trademark application

Many of the existing provisions would remain unchanged; however, the proposed Regulations would provide applicants with more flexibility to amend an application prior to registration, with some restrictions and qualifications. Subject to exceptions, the following key changes are proposed:

(8) Transfer of an application or registration

Provisions in the Act concerning the recording or registration of transfers to a new owner were harmonized for applications and registrations, and were also amended to ease the administrative burden on applicants or owners by eliminating the requirement to submit evidence when a transfer request is made by the current applicant or owner. The proposed Regulations would reflect these changes, and would also require that transfer requests include the name and complete mailing address of the transferee.

(9) Dividing applications and merging registrations

Following amendments to the Act allowing for the division of a trademark application, the proposed Regulations would include new requirements concerning the treatment of divisional applications. Divisional applications may benefit applicants who receive objections during the examination process or whose trademarks have been opposed. Applicants would be able to split their application into two or more applications (dividing the original goods and services among them) thereby allowing the application with the non-contentious goods and services to continue progressing through the registration process without having to wait for resolution on the other goods and services.

Once divided, a divisional application would be treated as independent from the original application. With some exceptions, the steps taken on the original application would be deemed to have been taken on the divisional application. Any filing fees that have not been paid on the earliest original application would have to be paid.

The proposed Regulations would also establish conditions under which a divisional application, once registered, could be merged back into the registration that resulted from the original application. The resultant merged registration would have the earliest renewal date of the previous unmerged registrations to ensure that registered owners do not circumvent the 10-year renewal period by merging newer registrations with older registrations.

(10) Advertisement and registration

The requirements indicating the information set out in the advertisement and the information required to be entered on the register would remain largely the same. The only proposed changes are to eliminate terms and concepts no longer found in the Act.

A new provision in the Act requires owners of existing trademark registrations for which the goods or services have not yet been grouped according to the Nice Classification to do so upon receipt of a notice from the Registrar. The proposed Regulations would require owners to furnish the Registrar with the list within six months of the notice.

(11) Renewals

Currently, trademark registrations can be renewed at any point before the expiration date, and up to six months afterward. In the interest of ensuring that only trademarks in active use are on the register, it is proposed that the period for renewing registrations be limited to a window around the renewal date. The prescribed period to pay the renewal fee would begin six months before the expiration date and end either six months after that date or two months after the date of a renewal notice sent by the Registrar, whichever is later. In other words, if a notice is not issued until five months after the registration expires, the registered owner would still have up to two months from the notice to pay the renewal fee.

The proposed Regulations would introduce a fee per Nice class at renewal. The base renewal fee covering one class would be a modest increase over the existing renewal fee. These changes are designed to encourage owners to only renew truly valuable trademarks, and only in association with the goods or services that are actually in use, which in turn helps ensure that the register is a true reflection of the Canadian marketplace.

B. Implementation of the Madrid Protocol

It is proposed that a new Part 2 be added to the Regulations to specify the rules governing trademark applications that are filed under the Madrid Protocol. These Regulations are largely a result of the provisions contained in the Madrid Protocol and the accompanying Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (Common Regulations). The intent is to avoid a dual-track system to the extent possible, whereby applications coming in via the Madrid System are processed differently, and based on different requirements, than national applications.

The proposed Regulations introduce definitions to facilitate the interpretation of provisions in this part, for example, to distinguish between a “basic application” filed in Canada and a “Protocol application” received from the International Bureau of WIPO to extend protection of an international registration to Canada. It is important to note that Canadian applicants cannot file an application for international registration through CIPO without first applying for a trademark registration in Canada, since a basic application or registration is required to do so.

In order to comply with timelines established under the Madrid Protocol, the proposed Regulations would clarify that provisions in the Act extending deadlines on days when CIPO is closed for business generally do not apply to time limits set out in Part 2 of the proposed Regulations, with some exceptions.

(1) Applying for an international registration (Office of the Registrar as Office of origin)

The proposed provisions in this section would apply to applications for international registration that originate in Canada and are filed with CIPO, which in turn sends them to the International Bureau. This intermediary role is referred to under the Madrid Protocol as an office of origin.

The proposed Regulations set out eligibility requirements to apply for an international registration from Canada. The contents and form of the application for international registration would follow the requirements of the International Bureau’s model. The applicant would have the option of filing the application in English or French, using the prescribed electronic methods.

Upon receipt of an application for international registration, the Registrar would certify that the particulars included in the application (e.g. the mark itself, goods and services) correspond to the basic application or registration, and would then present it to the International Bureau for registration. Any change in the scope of protection in the basic application or registration (e.g. if the application is withdrawn, or if the registration is cancelled) that occurs within five years of the date of international registration would be reported to the International Bureau by the Registrar; this would also apply to changes occurring after the five-year period that resulted from a proceeding (e.g. an opposition) that began within that period.

As an additional service to Canadians, the Registrar would receive and transmit to the International Bureau changes in ownership of international registrations upon request in certain cases. The proposed provisions would set out the eligibility requirements and the contents and form of the request.

(2) Territorial extension to Canada (international registration designating Canada)

The proposed provisions in this section would apply to applications for international registration filed with the International Bureau, originating in another jurisdiction, that designate Canada as one of the countries or regional IP offices in which protection of the trademark is sought. After the International Bureau records the trademark in the International Register, it would forward the designation to the Registrar. The designation of Canada may be part of the original application for international registration or may be made via a subsequent designation at a later time.

Once the international registration is made or the subsequent designation is recorded by the International Bureau, an application would be deemed to be filed for the registration of a trademark in Canada (“Protocol application”). The proposed Regulations describe how the filing date of the Protocol application would be determined, including with respect to any priority claim. Generally, the domestic examination process would apply, including advertisement of the trademark for the purposes of opposition if it is found to comply with all Canadian requirements for registration.

(a) Registering or refusing an application

The proposed Regulations would implement the requirements under the Madrid Protocol for refusal or registration of a Protocol application. The Registrar must notify the International Bureau of any provisional refusal within 18 months of being notified of the designation to Canada.

An additional basis for the refusal of a trademark in Canada would be added, namely that the goods or services appearing in the Protocol application are not within the scope of those in the international registration.

When the trademark is not registrable in Canada or if certain requirements in the Protocol application are not met, a notification of total provisional refusal that states all of the grounds for refusal would be issued to the International Bureau. The total provisional refusal would not be a final refusal in Canada; the applicant would have the opportunity to respond. Final refusal of the application in Canada could not occur without the Registrar first having notified the International Bureau of this provisional refusal within the 18-month deadline. If, ultimately, the Protocol application is refused in Canada, a confirmation would be sent to the International Bureau. This would also be the case where the Protocol application is abandoned because the applicant fails to respond to requests for action within specified deadlines.

The Madrid Protocol also obliges the Registrar to notify the International Bureau of a total provisional refusal based on the filing of an opposition within the 18-month period, or of the possibility that an opposition may be filed after that period. In the latter case, if an opposition is subsequently filed, the Registrar must notify the International Bureau accordingly within a prescribed period.

If a Protocol application meets all of the requirements for protection of the trademark in Canada and no opposition has been filed, or any opposition has been decided in favour of the applicant (including a split decision), a registration certificate would be issued to the applicant and a statement of grant of protection would be sent to the International Bureau specifying the goods and services protected in Canada. At this point in time, the Protocol application would become a Protocol registration.

Should the Registrar fail to notify the International Bureau within the 18-month deadline of a provisional refusal or the possibility of issuing one after that deadline due to opposition, the Protocol application would be granted protection. In this case, it would become a Protocol registration without the application being advertised, and there would be no opposition period.

(b) Amendments or corrections to international registrations affecting Protocol applications or registrations

The proposed Regulations explain the effects of various types of amendments or corrections that could be made to the international registration on the Protocol application or registration. The International Bureau would notify the Registrar in the event of an amendment affecting some or all of the goods and services included in the Canadian designation, of a change of name or address of the holder of the international registration, or of the correction of an error in the international registration.

The Regulations describe how the Registrar would proceed upon receiving notice from the International Bureau, depending on the nature of the amendment or correction, the scope of the goods or services affected by the change, and the status of the Protocol application or registration at the time of the notification. In some cases, the Protocol application or registration would be amended accordingly, while in others, the amendment or correction may be rejected and/or may cause the Protocol application to be deemed withdrawn or the Protocol registration to be cancelled (e.g. if the amendment removes all of the goods or services that were included in the Canadian designation). The proposed Regulations would indicate how the effective date of an amendment or correction would be determined in cases where it is accepted.

(c) Renewing the international registration

The International Bureau would notify the Registrar of the renewal of an international registration designating Canada, which can occur while the Protocol application is still pending in Canada. If there is a Protocol registration, the renewal would be recorded on the Canadian register.

If the international registration is not renewed, the International Bureau would notify the Registrar. In this case, it is proposed that the Protocol application would be deemed to have been withdrawn or the Protocol registration would be deemed to have been expunged at the expiry of the international registration.

(d) Transfers

When the Registrar receives notification from the International Bureau of a change in ownership of an international registration on which a Protocol application or registration is based, the transfer of the Protocol application would be recorded or the transfer of the Protocol registration would be registered automatically.

(e) Divisions and mergers

New provisions under the Madrid Protocol permitting division and merger of international registrations are expected to come into force on February 1, 2019. The proposed Regulations would set out the applicable rules in Canada, including the conditions under which an applicant or owner may submit a division or merger request related to an international registration, the contents and method of filing such requests, and the actions the Registrar would take to forward the request to the International Bureau.

A divided Protocol application would benefit from any steps taken in relation to the original Protocol application, and any divided application may itself be further divided.

(f) Transformation

The International Bureau may cancel an international registration in whole or in part at the request of the Office of origin due to the cancellation of the basic application or registration. The Madrid Protocol allows the holder of the international registration to revive the cancelled portion of their Protocol application or registration by requesting that it be “transformed” into a domestic application or registration. Transformation would only be possible if the international registration is cancelled by the Office of origin, and not if it expires for failure to renew, or is cancelled or restricted at the request of the holder or for any other reason.

The proposed provisions concerning transformation would set out the conditions under which a transformation request could be filed (including the applicable time period); the contents and method of filing the request; and the determination of the filing or registration date and the term of protection. All steps taken in relation to the Protocol application or registration would be deemed to have been taken in relation to the domestic application or registration.

(g) Denunciation

The proposed Regulations would provide that if a country or regional IP office withdraws from the Madrid Protocol, the denunciation provisions of the Madrid Protocol would apply to a holder of an international registration on which a Protocol application or registration is based. Those provisions set out procedures similar to transformation that would permit a holder of an international registration originating in the denouncing country or regional IP office to apply to convert their Protocol application or registration into a domestic application or registration.

C. Trademarks Opposition Board practice

The amendments to the Regulations related to the three types of administrative proceedings administered by the TMOB reflect changes required by the treaties, as well as changes meant to modernize and align opposition, a proceeding under section 45 and objection proceedings with one another where possible.

(1) Starting an opposition, proceeding under section 45 or objection proceeding

Most requirements for starting a proceeding are contained in the Act; however, the existing requirement in the Regulations for an opponent to file two copies of a statement of opposition in an opposition proceeding would be removed to reflect the increasing use of electronic submission of documents.

(2) Corresponding with the Registrar during a proceeding and serving documents on each party

For clarity and consistency, the proposed Regulations would extend the existing requirements for opposition proceedings related to correspondence with the Registrar and the transmission of copies of documents to also cover proceedings under section 45 and objection proceedings. Once a proceeding has commenced, a party would be required to forward a copy of any correspondence to the other party, other than documents for which there are specific prescribed requirements for providing copies as described below (e.g. evidence, written arguments). The result will be a correspondence process that is clearer and easier to track.

“Serving documents” means providing formal notice of documents to another party. The proposed Regulations would clarify the permitted methods of serving documents and effective dates of service for each of the following methods:

(3) Evidence in proceedings before the TMOB

Parties to a proceeding have the opportunity to submit evidence in support of their case, with some exceptions. The proposed Regulations would clarify the form and manner of filing evidence in the three types of proceedings, including eliminating the existing prohibition on the electronic filing of evidence. Parties in an opposition or objection proceeding could continue to file what is commonly referred to as “state of the register” evidence that consists of printouts of search results extracted from the Canadian Trademarks Database by way of affidavits or statutory declarations.

No substantive changes are proposed to the existing time limits for filing evidence in objection and opposition proceedings and serving it on the other party. However, the provisions concerning time limits would incorporate new consequences in the Act for failure to serve evidence on the other party within those time limits, where previously these consequences only applied in the event of failure to file evidence (or a statement that the party does not wish to submit evidence) with the Registrar.

Time limits for submitting evidence to the Registrar in a proceeding under section 45 are set out in the Act. However, as a result of new requirements in the Act for the registered owner of the trademark to also serve any evidence that they submit on the person who requested the proceeding, the proposed Regulations would prescribe the time limit for service.

(4) Cross-examination

After evidence is filed in an opposition or objection proceeding, either party may apply to cross-examine anyone whose affidavit or statutory declaration is being relied on as evidence in the proceeding. The proposed Regulations are intended to provide clarity with respect to cross-examination. There is no cross-examination in a proceeding under section 45.

The proposed Regulations would require parties to serve documents related to a cross-examination on each other. Responsibility for service would be divided between the parties to ensure that the party conducting the cross-examination is not held responsible for any delays caused by the other party in providing its responses. In the event that an individual declines cross-examination or fails to attend for cross-examination, resulting in their evidence not being considered part of the record, the Registrar would no longer be required to return the affidavit or declaration to the party that filed it.

(5) Leave to amend a statement of opposition or objection or to file additional evidence

As is currently the case in an opposition or an objection proceeding, a party may amend their statement of opposition or objection (or counter statement) or file additional evidence, with the permission (referred to as “leave”) of the Registrar. For transparency, the proposed Regulations would provide that the Registrar must grant such leave if it is in the interest of justice to do so. This provision would codify the test that is currently applied by the Registrar (as set out in a practice notice and in case law) in determining whether to grant leave or not.

(6) Written representations

The proposed Regulations would align procedures in the three types of proceedings for submission of written arguments (or “representations”) by the parties upon notice from the Registrar following the evidence stage, including any cross-examination that occurs during that time. They would also reflect new requirements in the Act for parties to serve on each other any written representations that they submit to the Registrar. The submission of written representations is optional.

Opposition and objection: It is proposed that parties would file and serve their written representations sequentially rather than concurrently (as is already the case for proceedings under section 45), as this would allow the second party’s written representation to be responsive to that of the first party. Filing representations in duplicate would no longer be required. Parties would have up to two months each to prepare their written representations, rather than the current one month; the proposed Regulations indicate how these time periods would be calculated. Finally, parties would no longer be able to request leave to file written representations after the deadlines, in view of the sequential filing; additional representations could be made orally at a hearing upon request.

Section 45: In order to align all three proceedings, the proposed Regulations would include similar provisions for proceedings under section 45, including notification of the opportunity to submit written representations, submission in sequence, and service on the other party. It is proposed that a two-month period be prescribed for each of the parties’ written representations, instead of the current four months set out in the practice notice.

(7) Hearings

Following the written argument stage, parties are given the option to present their arguments before the Registrar in a hearing. In order to ensure that the rights of both parties to a fair hearing are respected, including the right of procedural fairness, the proposed Regulations aim to establish a prescribed time for parties to request a hearing and to align the practices in all three types of proceedings.

It is proposed that the Registrar would no longer notify parties that they may request a hearing, as is currently the practice for opposition and objection proceedings. Instead, all parties would be permitted to file a request for a hearing within a prescribed time limit. If a party does not file a request within the prescribed time, they would not be permitted to make oral representations at a hearing. The Registrar would continue to accept hearing requests that are conditional on that of the other party as long as they are made within the prescribed time and comply with the requirements for such requests.

The proposed Regulations also clarify the information required from the parties if a hearing is requested, including the official language in which they intend to make their representations, simultaneous translation needs, and the method of appearance. The Registrar would accommodate any changes to this information submitted at least one month before the date of the hearing.

(8) Extensions of time

Provisions in the current Trade-marks Regulations related to extensions of time would be repealed, as extensions of time are already addressed in the Act.

(9) Treatment of divisional applications in opposition

The proposed Regulations would set out rules with respect to opposition proceedings for divisional applications filed after the original application is advertised. If a divisional application contains any goods or services that were deleted from the original application during the opposition period, the divisional application would be advertised so that the public has the opportunity to oppose the new application. Otherwise, any ongoing opposition on the original application would be deemed to have been filed against the divisional application and all steps taken in that opposition proceeding would apply to the divisional application. However, to ensure fairness in processing the divisional application, the TMOB would reassess any previously withdrawn or rejected opposition.

(10) Opposition to Protocol applications

For the purposes of opposition, it is proposed that a Protocol application would generally be treated the same as a domestic application, with the exception of the following provisions, which are necessary to ensure compliance with the Madrid Protocol:

(11) Proceedings under section 45 and Protocol registrations

For the purposes of proceedings under section 45, it is proposed that a Protocol registration would be treated the same as a domestic registration. If a final decision expunges the registration of one or more goods or services, the Protocol registration would be expunged or amended accordingly, and the International Bureau would be notified of the change of protection in Canada.

D. Transitional provisions

The transitional provisions specify how applications filed before the coming into force of the proposed Regulations would be treated.

(1) Filing dates

An application that was given a filing date under the current Trade-marks Regulations prior to the coming-into-force date of the proposed Regulations would keep that filing date. If an application was not granted a filing date prior to the coming-into-force date, the proposed Regulations would outline various scenarios depending on whether the application meets the new simplified requirements to obtain a filing date as of the coming-into-force date.

(2) Fee changes

It is proposed that applications filed prior to the coming-into-force date that are not yet registered at that date would remain subject to the existing application and registration fees. Similarly, registered trademarks that expire prior to the coming-into-force date but have not yet been renewed on that date would not be subject to the new renewal fees.

In order to implement the new renewal fee structure for registered trademarks that have not yet had the goods or services grouped according to the Nice Classification, the proposed Regulations provide that the fee for the first Nice class would be due within the prescribed renewal period. To provide time for finalization of the classification of the goods or services, the fee for each additional class would be due two months after the Registrar sends the owner confirmation that the goods or services are properly grouped. If the additional fees are not paid within that period, the registration would be expunged.

(3) Default notice

If a notice of default was issued by the Registrar prior to the coming-into-force date, the time period specified in the notice to remedy the default would apply.

(4) Amendments

For applications filed prior to the coming-into-force date that have not yet been advertised at that date, it is proposed that, so long as the trademark remains substantially the same, the application could be amended to add any of the newly required statements concerning colour, standard characters, and the type of trademark for non-traditional trademarks. This would provide an opportunity for applications for these types of marks that were filed before these statements became required to be updated to include that information.

(5) First renewal

It is proposed that there would be an exception to the new renewal period for a trademark that is on the register at the coming-into-force date whose first renewal falls after that date. For only the first renewal, the owner could renew at any time up to six months after the expiration date. If for any reason a renewal notice is issued late, the owner would have six months from the day the registration expired or two months from the date of the notice, whichever is later.

Regulatory and non-regulatory options considered

To meet the Government’s objective of accession to the treaties, only the regulatory option was considered, as there are no applicable non-regulatory options. For any country to join the treaties, its laws and regulations must comply with all applicable treaty requirements. Therefore, if the proposed Regulations are not approved, Canada would be unable to proceed with accession to the treaties.

Benefits and costs

To assess the incremental impacts of the proposed Regulations, an analysis of the benefits and costs was conducted. The impacts discussed below represent the difference between a baseline scenario without any regulatory amendments and a regulatory scenario where the proposed Regulations are adopted and Canada joins the treaties. All monetized costs and benefits have been estimated in 2012 dollars over a 10-year period from 2019 to 2028. A discount rate of 7% has been applied in accordance with Treasury Board Secretariat guidance. A more comprehensive cost-benefit analysis report is available upon request.

Canadian economy

Joining the treaties would benefit Canadian businesses wishing to expand into foreign markets, that would find it easier to register a trademark in multiple jurisdictions. Under the Madrid System, a business only needs to file one international application in one language, and pay one fee in one currency, to obtain trademark protection in multiple countries. This not only simplifies the application process but also introduces significant cost savings for applicants who would no longer have to translate their application into multiple languages, hire an agent for local representation in each country, and pay fees in multiple currencies. The actual amount saved is difficult to quantify, as it depends on the number of countries in which the applicant is seeking protection and the specific administrative requirements of each country. There would also be benefits to the economy by making Canada a more attractive destination for foreign businesses that would find it easier to protect their trademarks in Canada with minimal incremental burden.

Trademark applicants and registrants

For users of the trademark system, the regulatory proposal would offer clear benefits, notwithstanding some increased administrative costs. Trademark applicants and registrants are estimated to save $8.48 million overall (total present value, 2012 dollars with a 7% discount rate). Such savings would come from reduced administrative burden, including the proposal to allow applicants to appoint an agent for multiple applications with one piece of correspondence, as well as in some cases where evidence of a transfer of a trademark would not be required. Applicants would also be able to take certain actions without engaging with a trademark agent, such as paying a fee, for further savings. Clients engaging in a transfer of their application or registration would see additional benefits equal to $0.29 million under the proposed Regulations.

The users of the trademark system with matters before the TMOB would face an increased cost, as they would be required to serve each other written representations, as opposed to the current model where parties file them in duplicate at the same time while CIPO handles the exchange. It would be expected that this group would experience a net cost increase in the amount of $0.23 million (TPV). However, this number also includes the cost savings associated with changes that would allow opposition participants to submit evidence electronically and eliminate duplicative steps in some parts of the process.

Trademark applicants using the Madrid System

Once Canada has acceded to the Madrid System, some Canadian applicants are expected to file an application for international registration of their trademark through CIPO. To minimize this burden, CIPO’s electronic filing service would automatically upload information from the Canadian application or registration on which the international application is based into the international application form. As a result, the applicant or their agent would only need to spend a short time verifying the information. Over 10 years, this system would cost applicants a total of $0.53 million (TPV), based on 0.3 hours of a trademark agent’s time per application. This is based on a forecast showing an expected total of 11 874 resident filings through the Madrid System over a 10-year period.

User fee revenues

The merger of the application and registration fees is expected to save new trademark applicants $0.65 million per year on average, as 67% of applicants who file for trademark protection in only one or two Nice classes would pay less under the new fee regime than they do currently. There would be a corresponding loss in revenue for CIPO.

The single largest cost of this proposal would be the cost to registered trademark owners of the new renewal fee structure. Renewing a trademark is an optional course of action based on the perceived value of the trademark to the owner at the end of the term of protection; typically only about 50% of trademarks are renewed. The renewal fee changes would represent a cost increase to registered trademark owners of $50 for a trademark renewed in only one Nice class, $175 for two classes, $300 for three classes, and so forth. The net cost to owners is estimated at an average of $7.64 million per year (and a corresponding benefit to CIPO with respect to increased revenues) based on current renewal trends.

However, this estimate does not take into account the potential for behavioural shifts on the part of registered owners in response to the new fees that would reduce costs. In addition, since the renewal fee encourages trademark owners to only renew trademarks that are actually in use in the Canadian marketplace, the reduction in “clutter” on the register over time would be expected to save new applicants time and money in conducting searches to determine if their trademark is registrable (a benefit that cannot be quantified based on existing data). It is also important to note that the fee-setting exercise considered factors beyond the scope of a regulatory cost-benefit analysis; the fee changes were designed to be financially neutral for CIPO, taking into consideration the net impact of both the legislative and regulatory changes related to the treaties on CIPO’s revenues and costs.

Trademark agents

Costs would also be carried by trademark agents having to learn about the changes to the Trade-marks Regulations and associated practices introduced by the proposal. The total cost is estimated at $4.20 million (TPV).

Government

For CIPO, a major cost is associated with the modifications required to CIPO’s IT systems to implement the regulatory proposal. This has included work to enable CIPO’s network to communicate with the World Intellectual Property Organization’s network and to handle changes to applications and business processes. The total expense for the IT project is approximately $11.56 million (TPV). After the final Regulations are published, it is estimated that $0.93 million (2012 dollars) in IT expenditures would remain that would be dependent on approval of the Regulations. In addition, CIPO is projecting it will spend $1.93 million (TPV) over the course of 10 years from the date of implementation to process requests for certification of international applications that arrive at the Office.

Cost-benefit statement

The cost-benefit analysis of the proposed regulatory changes anticipates that over the 10 years after the coming-into-force date of the changes, overall administrative savings of $3.81 million (TPV) would be experienced by direct stakeholders (i.e. savings for users of the trademark system against the administrative costs for trademark agents), while CIPO’s monetized costs would be the $2.86 million in expenditures outstanding for the organization to modify its IT systems and process new requests for certification, as indicated in the table below. The proposed fee changes are counted as neutral overall for cost-benefit analysis purposes, as they represent transfers between the Government and users of the trademark system. The $0.65 million annually saved by applicants from the merger of the application and registration fees is also an equivalent cost to CIPO in terms of lost revenue. Conversely, the $7.64 million in annual costs to clients renewing their trademarks balances out as a benefit to CIPO in increased revenues. Therefore, the proposal is expected to lead to overall net benefits of $0.94 million (TPV).

A. Monetizable impacts (in 2012 dollars)

Stakeholder

Description

First Year
2019

Final Year
2028

Total Present Value

Annualized Average

CIPO / Government

IT costs

−$930,170

$0

−$930,170

−$132,435

Costs — Madrid

−$88,148

−$264,033

−$1,933,343

−$275,265

Costs — loss of revenue through merger of application and registration fees

−$650,000

−$650,000

−$4,565,328

−$650,000

Revenue from increase in renewal fee

$4,557,953

$6,646,642

$53,633,930

$7,636,265

Net benefits

$2,889,635

$5,732,609

$46,205,089

$6,578,565

Canadian agents

Costs — administrative

−$4,199,850

$0

−$4,199,850

−$597,964

Benefits

$0

$0

$0

$0

Net benefits

$4,199,850

$0

$4,199,850

$597,964

Parties with a matter before the TMOB

Costs — administrative

−$49,365

−$49,365

−$346,712

−$49,365

Benefits (administrative)

$17,140

$17,140

$120,380

$17,140

Net benefits

$32,225

$32,225

$226,332

$32,225

Trademark applicants and registrants

Costs — administrative

−$65,168

−$65,168

−$457,712

−$65,168

Benefits (administrative)

$1,272,615

$1,272,615

$8,938,318

$1,272,615

Benefits (changes to transfer system)

$40,753

$40,753

$286,232

$40,753

Benefits (merger of application and registration fees)

$650,000

$650,000

$4,565,328

$650,000

Costs — from increase in renewal fee

−$4,557,953

−$6,646,642

−$53,633,930

−$7,636,265

Net benefits

$2,659,753

$4,748,442

$40,301,764

$5,738,065

Trademark applicants using the Madrid System

Costs — Madrid

−$6,930

−$112,545

−$534,330

−$76,077

Net benefits

$6,930

$112,545

$534,330

$76,077

Total net benefits

$4,009,123

$839,397

$942,813

$134,234

B. Qualitative impacts

Description

  • Modernized trademark regime that aligns with Canada’s major trading partners.
  • Increased ease of doing business for Canadian firms seeking trademark protection internationally, to pursue new export opportunities and move into global markets.
  • Simplifies process for those seeking a trademark in Canada (both for domestic and foreign applicants), which could lead to more competition in the marketplace and more options for consumers.
  • Encourages the maintained registration of valuable trademarks, purging those that are not worthwhile, therefore simplifying the process of trademark search and clearance for new applicants.
Distributional analysis

CIPO conducted a Gender-based Analysis Plus preliminary scan of the potential diverse gender issues of the proposal and concluded that the proposal would improve the situation for all and would not impact diverse groups of women or men differently. In fact, the proposal may benefit businesses led by women who want to scale up and export, as the costs and administrative burden associated with protecting their trademarks abroad would be lowered.

Existing data shows that currently there does not appear to be a gender disparity with respect to the propensity of small and medium-sized enterprises to seek trademark protection. CIPO has been developing IP awareness and education programs and products, such as videos, case studies, and a pilot Canada-wide IP seminar series, to better equip innovators and businesses with the IP knowledge they need to grow and succeed. As CIPO continues to enhance its outreach efforts through new programs and partnerships with other players in the innovation ecosystem, strategies are being considered to better understand the needs of groups such as women and Indigenous entrepreneurs in order to offer tailored products to support their participation in the IP system.

“One-for-One” Rule

The “One-for-One” Rule applies to the proposed Regulations, which is considered an “OUT” under the Rule. The annualized average administrative cost of these changes was calculated to be a decrease of $384,867, measured in 2012 constant dollars.

The following elements of the proposed changes would reduce the burden on applicants:

CIPO forecasts that these changes would reduce the burden on applicants by a total of $8,887,220 (TPV) over the 10-year period mandated in the analysis.

Two elements of the proposed changes would increase cost to businesses: the requirement to retain original copies of affidavits for a prescribed period; and new service requirements for written representations in all three types of proceedings before the TMOB and for evidence in a proceeding under section 45, which would add the administrative cost of preparing the service documents and the cost of hiring a process server.

CIPO forecasts that these changes would increase the burden on applicants by a total of $346,713 (TPV) over the 10-year period mandated in the analysis.

Finally, it is expected that registered trademark agents in Canada (1 647 in total) would need an average of 17 hours to become familiar with the proposed changes. This is based on the average time CIPO expects the agents would spend learning about the changes after the final publication of the Regulations. Specifically, it is estimated that the one third of registered agents who are not in active practice would spend 2 hours of research time (e.g. taking a webinar), one quarter of agents who would spend significant time learning the new rules in depth would spend 40 hours doing so, and the remaining agents would spend approximately 16 hours to familiarize themselves with the changes (e.g. taking 2 days of training courses). This would cost these stakeholders $4,199,850 (TPV) in equivalent time.

In total, across all stakeholder groups, the proposed changes would save each business $22 per year. Broken down by activity, each applicant or registrant would save $95 per year. Parties that transfer their application or registration would see a savings of $19 per year. Parties with a matter before the TMOB would see an increased cost of $154 each. Finally, each trademark agent would see an increased cost of $2,550 annualized over 10 years.

The total savings of the proposed changes are $2,703,143, with an annualized savings of $384,867 (using a present value base year of 2012 and a 7% discount rate, as specified in the formulas laid out in the Red Tape Reduction Regulations).

Small business lens

The small business lens does not apply to this proposal, as there are no significant changes in costs to small businesses.

Consultation

CIPO has engaged with stakeholders extensively regarding the treaties, beginning as early as 2001. Over several years prior to the Government’s decision to accede to the treaties, CIPO published on its website discussion papers and legal and technical analyses concerning the benefits and implications of Canada joining the Madrid Protocol and the Singapore Treaty. In late 2013, CIPO shared a series of technical papers with representatives of the IP community to seek their views.

Throughout the regulatory development process, CIPO has undertaken a series of public consultations, webinars, and face-to-face meetings with stakeholders to seek their comments. In 2014, before drafting the proposed Regulations, CIPO consulted selected stakeholders (e.g. IP agents and business representatives who are heavy users of the trademark system). Overall, they were largely favourable to the proposed changes and were very pleased that Canada was acceding to the treaties. CIPO incorporated much of the feedback received in these sessions into the proposed Regulations. In 2017, CIPO conducted detailed technical reviews of the draft Regulations with small groups of expert stakeholders, followed by broad public consultations. Stakeholders reiterated their overall support for Canada’s accession to the treaties, while flagging some issues for consideration regarding the clarity of the proposed provisions and the need for additional guidance concerning new processes related to the Madrid System. CIPO has taken these comments into consideration to the extent possible in the proposed Regulations, and plans to address other comments via practice notices and other guidance documents. Some issues raised that were outside the scope of the objectives of this regulatory proposal will be taken into consideration with respect to future policy development.

The issue of use has generated much discussion by some in the trademark agent community. An amendment to the Act passed in 2014 eliminated the requirement for applicants to file a “declaration of use,” an unsworn and unverified statement that the business has started using its trademark in Canada. This change was made to reduce the administrative burden on applicants, and is consistent with almost all other parties to the Madrid Protocol and the Singapore Treaty. However, some trademark agents have expressed concerns that this change could result in the register becoming cluttered with trademarks that are not being used. They have proposed mitigating this problem by providing in the Regulations for voluntary submission by applicants of information concerning use of the trademark, which could be entered into the register. After consideration of these proposals, CIPO believes that they do not fall within the scope of the legislative amendments passed by Parliament. Further, use remains a central tenet of the Canadian trademark regime. To file a trademark application, the applicant must be using, or proposing to use, the trademark in Canada. If neither condition is met, the application could be challenged at opposition or in court. Importantly, non-use of registered trademarks will continue to be “policed” through proceedings under section 45, which have been strengthened in the Act, including making it clearer that the Registrar may commence these proceedings on their own initiative.

CIPO conducted separate consultations in 2016 with stakeholders concerning the proposed fee changes, in accordance with the former User Fees Act. Stakeholders were largely supportive of the proposed fee changes, with the exception of one stakeholder group which raised issues that were linked to concerns about the impact of the removal of the “declaration of use” on the overall costs to trademark filers. CIPO engaged in extensive dialogue with this group regarding these concerns and has further consulted with it during the regulatory development process.

Regulatory cooperation

The proposed Regulations are designed to increase regulatory coordination between Canada and its major trading partners. Canada is not harmonizing its requirements with those of one particular country, but rather with the requirements of international treaties to which many countries and regional organizations are party, with membership continuing to expand in the coming years. There are currently 100 members of the Madrid Protocol, 46 of the Singapore Treaty, and 84 of the Nice Agreement, including the United States and many European countries. The European Union is a member of the Madrid Protocol and of the earlier Trademark Law Treaty on which the Singapore Treaty builds. Acceding to the treaties would increase the alignment of Canada’s Regulations with similar regulations for the registration of trademarks in all of these member countries.

Rationale

Canada’s joining the treaties would reduce costs and complexity for users of Canada’s trademark regime, both domestic and foreign. Export-oriented Canadian businesses would have access to the international registration system provided for in the Madrid Protocol, which would allow them to apply for trademark protection in up to 100 jurisdictions with one application and one set of fees. This streamlined process would reduce the costs and administrative burden associated with filing individually in each jurisdiction where protection is sought. International clients seeking trademark protection in Canada would also benefit from reduced red tape and cost by being able to select Canada among a number of jurisdictions to apply for trademark registration, rather than having to file a separate application directly with CIPO. Simplified administrative requirements under the Singapore Treaty would reduce the compliance burden for applicants, for example, by simplifying the requirements to obtain a filing date. There would also be benefits to the economy by making Canada a more attractive destination for foreign businesses that would find Canada’s trademark regime to be better aligned with those of its major trading partners.

The proposed measures relating to trademark opposition, objection and proceedings under section 45 would remove inefficiencies and outdated requirements, and align the three proceedings to the extent possible. Harmonizing the procedures and codifying existing practices in the Regulations would provide greater transparency and predictability to agents and parties in knowing what to expect from one process to another.

In order for Canadians to receive these benefits, the Act and Regulations must be amended to comply with the requirements set out under the three treaties. The necessary amendments to the Act have already been made. However, the Government would be unable to bring these legislative amendments into force and proceed with Canada’s accession to the treaties unless the proposed changes to the Regulations are approved.

Implementation, enforcement and service standards

CIPO plans to continue its engagement with stakeholders to facilitate the transition and implementation period for the proposed Regulations. Stakeholders would be encouraged to participate in the development of office practices to support implementation of the proposed Regulations. CIPO would also conduct training and education and awareness activities to help facilitate understanding of the new requirements, and would develop guidance materials as required. To assist applicants and their agents in becoming accustomed to the Nice Classification system before it becomes mandatory, CIPO introduced a voluntary process for trademark applicants to group their goods and services according to the Nice Classification in September 2015.

Implementation of the proposed Regulations would be supported by an improved, modern IT system and tools that would enable CIPO’s network to communicate with WIPO’s network and include extra functionality necessary to handle changes to applications and business processes, while still supporting increasing efficiency for CIPO trademark examiners. This work has been spread out over multiple releases, with each being significantly tested and checked for errors.

Internal training would be developed for trademark examiners, operations staff, Client Service Centre staff, and members and hearing officers of the TMOB. Each group would receive training tailored to its needs and specifications.

CIPO is committed to providing service to its clients according to defined service standards, and regularly measures whether or not these commitments are being met. Service commitments are updated annually and published on the CIPO website.

Contact

Mesmin Pierre
Director General
Trademarks Branch
Canadian Intellectual Property Office
50 Victoria Street, Room C236-10
Gatineau, Quebec
K1A 0C9
Email: ic.cipo-consultations-opic.ic@canada.ca

PROPOSED REGULATORY TEXT

Notice is given that the Governor in Council, pursuant to sections 65 (see footnote a), 65.1 (see footnote b) and 65.2 (see footnote c) of the Trade-marks Act (see footnote d), proposes to make the annexed Trademarks Regulations.

Interested persons may make representations concerning the proposed Regulations within 30 days after the date of publication of this notice. All such representations must cite the Canada Gazette, Part I, and the date of publication of this notice, and be addressed to Mesmin Pierre, Director General, Trademarks Branch, Department of Industry, Place du Portage Phase 1, 50 Victoria Street, Room C236-10, Gatineau, Quebec K1A 0C9 (tel.: 819-994-4600; email: ic.cipo-consultations-opic.ic@canada.ca).

Ottawa, February 1, 2018

Jurica Čapkun
Assistant Clerk of the Privy Council

TABLE OF PROVISIONS

Trademarks Regulations

PART 1

Rules of General Application
Interpretation

1 Definitions

General

2 Written communications intended for Registrar

3 Limit on written communications

4 Written communications regarding applications for registration

5 Address

6 Form of communication

7 Intelligibility of documents

8 Document provided in non-official language

9 Manner of providing documents, information or fees

10 Acknowledgement of written communications

11 Waiver of fees

12 Refund

13 Affidavit or statutory declaration

14 Extension of time — fee

15 Prescribed days — extension of time periods

Trademark Agents
List of Trademark Agents

16 Eligibility for examination

17 Establishment of examining board

18 Frequency of qualifying examinations

19 Listing of trademark agents

20 Maintenance of name on list

21 Reinstatement

Representation

22 Power to appoint trademark agent

23 Notice of appointment or revocation

24 Acts done by or in relation to trademark agent

25 Persons authorized to act

Prohibited Marks

26 Fee

Application for Registration of Trademark

27 Scope

28 Language

29 Manner of describing goods or services

30 Representation or description

31 Contents

32 Fee

Request for Priority

33 Time of filing

Default in Prosecution of Application

34 Time for remedying default

Amendment of Application for Registration of a Trademark

35 Before registration

Transfer of Application for Registration of a Trademark

36 Fee

37 Required information

38 Effect of transfer — separate applications

Divisional Application

39 Manner of identifying corresponding original application

40 Steps deemed to have been taken

Advertisement

41 Manner

Opposition Proceeding Under Section 38 of the Act

42 Fee

43 Correspondence

44 Forwarding copies of documents

45 Service on representative of applicant

46 Manner of service

47 Counter statement — timing

48 Amendment

49 Manner of submitting evidence

50 Timing of opponent’s evidence

51 Circumstances — deemed withdrawal of opposition

52 Timing of applicant’s evidence

53 Circumstances — deemed abandonment of application

54 Reply evidence — timing

55 Additional evidence

56 Ordering of cross-examination

57 Written representations

58 Request for hearing

Register

59 Particulars

60 Fee for extending statement of goods or services

61 Merger of registrations

62 Fee for the giving of notice

63 Requested statement of goods or services — timing

Transfer of Registered Trademark

64 Fee

65 Required information

66 Effect of transfer — separate registrations

Proceeding Under Section 45 of Act

67 Fee

68 Correspondence

69 Forwarding copies of documents

70 Service on representative of party

71 Manner of service

72 Evidence — timing

73 Written representations

74 Request for hearing

Renewal of Registration

75 Fee

76 Period

77 Deemed date — merged registrations

Objection Proceeding Under Section 11.13 of Act

78 Fee

79 Correspondence

80 Forwarding copies of documents

81 Manner of service

82 Amendment

83 Manner of submitting evidence

84 Timing of objector’s evidence

85 Circumstances — deemed withdrawal of objection

86 Timing of responsible authority’s evidence

87 Non-application of subsection 11.13(5) of Act — circumstances

88 Circumstances — indication or translation not entered on list

89 Reply evidence — timing

90 Additional evidence

91 Ordering of cross-examination

92 Written representations

93 Request for hearing

Copies of Documents

94 Fee for certified copies

95 Fee for non-certified copies

PART 2

Implementation of Madrid Protocol
General

96 Interpretation

97 Non-application of section 66 of Act

Application for International Registration (Office of Registrar as Office of Origin)

Qualification

98 Conditions

Contents and Form

99 Contents

Functions of Registrar

100 Office of origin

Change in Ownership of International Registration

101 Request for recording

102 Transmission to International Bureau

Territorial Extension to Canada

Protocol Application

103 Request under Article 3ter(1) of the Protocol

Non-Registrable Trademarks

104 Goods or services outside scope of international registration

Filing Date

105 Non-application of sections 33 and 34 of Act

106 Date of international registration

Amendment or Withdrawal of Protocol Application

107 Recording resulting in deletion

108 Complete renunciation

109 Complete cancellation

110 Partial cancellation

111 Change of name or address

112 Effective date of amendment or withdrawal

113 Non-renewal of international registration

Effect of Correction of International Registration on Protocol Application

114 Deemed amendment to application

115 Amendment to non-advertised application

116 Amendment to advertised application — all goods or services

117 Amendment to advertised application — some goods or services

118 Effective date of amendment

Abandonment

119 Statement of confirmation of total provisional refusal

Examination

120 Notification of provisional refusal

121 Statement of confirmation of total provisional refusal

Divisional Application

122 Non-application of subsections 39(1), (2) and (5) of Act

123 Filing of request for division

124 Deemed divisional application

Opposition

125 Limitation of extension

126 Filing of statement of opposition

127 Notification of provisional refusal

128 No new ground of opposition

129 Notice of opposition period

130 Statement of confirmation of total provisional refusal

Registration of Trademarks

131 Non-application of section 40 of Act

132 Obligations of Registrar

Amendment of Register

133 Non-application of statutory provisions

134 Filing of request for merger

135 Recording resulting in deletion

136 Complete renunciation

137 Complete cancellation

138 Partial cancellation

139 Change of name or address

140 Correction of international registration

141 Effective date of cancellation or amendment

142 Failure to consider request for extension of time

Renewal

143 Non-application of section 46 of Act

144 Period of registration

Transfer

145 Non-application of subsections 48(3) to (5) of Act

146 Recording or registration

Transformation

147 Application

148 Consequences — trademark subject of cancelled Protocol application

149 Consequences — trademark subject of cancelled Protocol registration

Denunciation

150 Application of Article 15(5) of Protocol

PART 3

Transitional Provisions, Repeal and Coming into Force

Transitional Provisions

151 Definitions

152 Filing date already determined

153 Filing date — coming into force

154 Exception to subsections 32(1) and (2)

155 Exception to subsection 32(4)

156 Exception to section 34

157 Exception to paragraph 35(2)(e)

158 Exception to section 75

159 Exception to section 76 — first renewal

160 Exception to section 76 — goods or services not grouped

Repeal

161

Coming into Force

162 S.C. 2015, c. 36 and S.C. 2017, c. 6

SCHEDULE

Trademarks Regulations

PART 1

Rules of General Application

Interpretation
Definitions

1 (1) The following definitions apply in these Regulations.

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 sections 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

2 Written communications intended for the Registrar must be addressed to the “Registrar of Trademarks”.

Limit on written communications

3 (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

Written communications regarding applications for registration

4 (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

5 (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

6 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

7 A document that is provided to the Registrar must be clear, legible and capable of being reproduced.

Document provided in non-official language

8 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

9 (1) Unless provided by an electronic means in accordance with subsection 64(1) of the Act, a document, information or fee 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 on the website of the Canadian Intellectual Property Office.

Date of receipt — physical delivery to Office

(2) A document, information or fee that is provided to the Registrar by physical delivery to the Office of the Registrar of Trademarks is deemed to have been received by the Registrar

Date of receipt — physical delivery to designated establishment

(3) A document, information or fee that is provided to the Registrar by physical delivery to a designated establishment is deemed to have been received by the Registrar

Date of receipt — provision by electronic means

(4) A document, information or fee that is provided to the Registrar by an electronic means in accordance with subsection 64(1) of the Act is 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

Exception — International Bureau

(6) Subsections (1) to (4) do not apply in respect of a document, information or a fee that is provided to the Registrar by the International Bureau.

Acknowledgement of written communications

10 (1) The Registrar must acknowledge a written communication received by the Registrar before a trademark is registered and that is, or appears to be, against that registration. However, subject to section 29 of the Act, no information may be given as to any action taken as a result of that communication.

Exception

(2) Subsection (1) does not apply in respect of a written communication made in a proceeding under section 38 of the Act.

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:

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:

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 that intends to sit for the examination must meet the requirements set out in section 16.

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 two weeks 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

Maintenance of name on list

20 (1) During the period beginning on January 1 and ending on March 31 of each year,

Removal from list

(2) The Registrar must remove from the list of trademark agents the name of any trademark agent that

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

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 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 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 (2), in any business before the Office of the Registrar of Trademarks in respect of which a person has appointed a trademark agent,

Exceptions

(2) A person that has appointed a trademark agent may represent themselves or be represented by another person authorized by them for the purpose of

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:

Contents

31 The following information and statements are prescribed for the purpose of paragraph 30(2)(d) of the Act:

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

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

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

Exceptions to exceptions

(3) Despite subsection (2), an amendment referred to in that subsection may be made in accordance with sections 107, 111, 114 or 117.

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,

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 to have been taken

40 (1) 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.

Exceptions

(2) Subsection (1) does not apply in respect of the following actions:

Clarification

(3) For greater certainty, a statement of opposition filed under subsection 38(1) of the Act in respect of an original application, on or before the day on which the divisional application is filed, is deemed to have been filed in respect of the divisional application within two months after the advertisement of the divisional application.

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

Opposition Proceeding Under Section 38 of the Act

Fee

42 For the purpose of subsection 38(1) of the Act, the fee 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

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,

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 is to 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 in the period of four months that begins 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 set out in subsection (1) of this section and, if so, they must serve it on the applicant within that four-month 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 in the period of four months that begins 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 set out in subsection (1) of this section and, if so, they must serve it on the opponent within that four-month 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,

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 in the period of two months that begins 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 set out 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 in the following period:

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 applicable two-month period referred to in 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 applicable two-month period referred to in 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 applicable two-month period referred to in subsection 57(5) for their submission of written representations, within one month after the end of that period — a party that wishes to make representations to the Registrar at a hearing must file with the Registrar a request that indicates

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:

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

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 the period of 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 the period of two months that begins 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 set out 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

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 applicable two-month period referred to in 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

Period

(2) The request must be filed within the following 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

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

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,

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 is to 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 in the period of four months that begins 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 set out in subsection (1) and, if so, they must serve it on the responsible authority within that four-month 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 in the period of four months that begins 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 set out in subsection (1) and, if so, they must serve it on the objector within that four-month 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,

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 in the period of two months that begins 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 set out 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 in the following period:

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 applicable two-month period referred to in 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 applicable two-month period referred to in 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 applicable two-month period referred to in subsection 92(5) for their submission of written representations, within one month after the end of that period — a party that wishes to make representations to the Registrar at a hearing must file with the Registrar a request that indicates

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

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:

Contents and Form

Contents

99 (1) Every application for international registration filed with the Registrar must include the following information:

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

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

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:

Manner of filing

(2) The request must be in English or French and be filed by

Accompanying documents

(3) The request must be accompanied by

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 Sections 33 and 34 of the Act do not apply in respect of a Protocol application.

Date of international registration

106 (1) The filing date of a Protocol application is

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

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,

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,

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,

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:

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

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

Manner of filing

(2) The request must be in English or French and be filed

Contents

(3) The request must indicate

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).

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 accessible through the website of the Canadian Intellectual Property Office.

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

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

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

Manner of filing

(2) The request must be in English or French and be filed

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,

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,

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

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 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 are 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

Contents of application

(4) The transformation application must include the following:

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,

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,

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.

former Regulations means the Trade-marks Regulations as they read immediately before coming-into-force day. (ancien règlement)

coming-into-force day means the day of coming-into-force determined in accordance with subsection 162(1) (date d’entrée en vigueur)

Filing date already determined

152 If, before 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, before coming-into-force day, 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 but not all of the items set out in section 25 of the former Regulations have been delivered to the Registrar, the filing date of the application is the coming-into-force day.

Exception to subsections 32(1) and (2)

154 (1) If the filing date, without regard to section 34 of the Act, of an application for the registration of a trademark, other than a Protocol application as defined in section 96, 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

Exception to subsection 32(4)

155 If, before 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 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

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 that two-month period ends later than that period established by section 76 or 159 of these Regulations.

Repeal

161 The Trade-marks Regulations (see footnote 1) are repealed.

Coming into Force

S.C. 2015, c. 36 and S.C. 2017, c. 6

162 (1) Subject to subsection (2), these Regulations come into force on the first day on which both section 67 of the Economic Action Plan 2015 Act, No. 1, chapter 36 of the Statutes of Canada, 2015, and section 75 of the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act, chapter 6 of the Statutes of Canada, 2017, are in force, but if they are registered after that day, they come into force on the day on which they are registered.

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 of these Regulations come into force on February 1, 2019.

SCHEDULE

(Section 14, subparagraph 16(b)(ii), section 19, paragraph 20(1)(a), subparagraph 21(b)(i), sections 26, 32, 36, paragraph 40(2)(d), sections 42, 60, 62, 64, 67, 75 and 78, subsection 94(1), section 95, subparagraph 149(d)(ii) and section 160)

Tariff of Fees

Item

Column 1

Description

Column 2

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
  • (b) in any other case
  • 300.00
  • 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
  • (b) in any other case
  • 300.00
  • 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
    • (ii) for each additional class of goods or services to which the application relates as of the filing date
  • (b) in any other case
    • (i) for the first class of goods or services to which the application relates
    • (ii) for each additional class of goods or services to which the application relates as of the filing date

  • 330.00
  • 100.00

  • 430.00
  • 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
  • (b) for each additional class of goods or services to which the application relates
  • 430.00
  • 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

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
    • (ii) for each additional class of goods or services to which the request for renewal relates
  • (b) in any other case
    • (i) for the first class of goods or services to which the request for renewal relates
    • (ii) for each additional class of goods or services to which the request for renewal relates


  • 400.00
  • 125.00

  • 500.00
  • 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
  • (b) for each page
  • 35.00
  • 1.00

17

Certified copy in electronic form

 

  • (a) for each certification
  • (b) for each trademark to which the request relates
  • 35.00
  • 10.00

18

Non-certified copy in paper form, for each page

 

  • (a) if the requesting person makes the copy using equipment of the Office of the Registrar of Trademarks
  • (b) if the office makes the copy
  • 0.50
  • 1.00

19

Non-certified copy in electronic form

 
  • (a) for each request
  • (b) for each trademark to which the request relates
  • (c) if the copy is requested on a physical medium, for each physical medium provided other than the first
  • 10.00
  • 10.00
  • 10.00

[6-1-o]