Regulations Amending the Trademarks Regulations: SOR/2019-116
Canada Gazette, Part II, Volume 153, Number 10
SOR/2019-116 May 6, 2019
P.C. 2019-416 May 3, 2019
Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to sections 65 footnote a and 65.1 footnote b of the Trademarks Act footnote c, makes the annexed Regulations Amending the Trademarks Regulations.
Regulations Amending the Trademarks Regulations
1 Subparagraph 35(2)(c)(i) of the Trademarks Regulations footnote 1 is replaced by the following:
- (i) that statement on the filing date of the application, determined without taking into account section 34 of the Act or subsection 106(2) of these Regulations,
2 Section 40 of the Regulations is replaced by the following:
Steps deemed taken
40 Any action taken in respect of the corresponding original application, on or before the day on which the divisional application is filed, is deemed to be an action taken in respect of the divisional application, except
- (a) an amendment of the statement of the goods or services contained in the original application; and
- (b) the payment of the applicable fee set out in item 7 of the schedule to these Regulations.
3 Section 105 of the Regulations is renumbered as subsection 105(1) and is amended by adding the following:
References to subsection 34(1) of the Act
(2) In respect of the filing date of a Protocol application, the reference in subsections 12(3) and 32(1) and paragraphs 38(2)(e) and (f) of the Act to “subsection 34(1)” is to be read as “subsection 106(2) of the Trademark Regulations”.
4 Subparagraph 107(1)(c)(i) of the Regulations is replaced by the following:
- (i) the good or service is within the scope of the Protocol application on its filing date, determined without taking into account subsection 106(2), and on the date of the recording in the International Register,
5 Paragraphs 123(1)(a) and (b) of the Regulations are replaced by the following:
- (a) the original Protocol application on its filing date, determined without taking into account subsection 106(2);
- (b) the original Protocol application on the day on which the request is filed, if the request is filed on or after the day on which the Protocol application is advertised under subsection 37(1) of the Act; and
6 Clause 149(d)(ii)(A) of the Regulations is replaced by the following:
- (A) for the first renewal period, within the period referred to in section 76 or within six months after the day on which the trademark is registered under paragraph (a), determined without taking into account paragraph (c), whichever ends later, and
7 Subsection 154(1) of the Regulations is replaced by the following:
Exception to subsections 32(1) and (2)
154 (1) If the filing date, determined without taking into account section 34 of the Act, of an application for the registration of a trademark, other than a Protocol application as defined in section 96 of these Regulations, precedes the coming-into-force day and the trademark has not yet been registered on that day, subsections 32(1) and (2) of these Regulations do not apply and the person that filed the application must pay the fee set out in item 15 of the schedule to the former Regulations in addition to the fee, set out in item 1 of that schedule, that they have already paid.
Coming into Force
8 These Regulations come into force immediately after the coming into force of the Trademarks Regulations footnote 2.
REGULATORY IMPACT ANALYSIS STATEMENT
(This statement is not part of the Regulations.)
On November 14, 2018, the Trademarks Regulations were amended in anticipation of amendments to the Trademarks Act coming into force on June 17, 2019. These changes were made to enable Canada to join the Singapore Treaty on the Law of Trademarks, the Madrid Protocol, and the Nice Agreement. Amendments to the Regulations were also made to eliminate potential misuse of the divisional application process that could have allowed applicants to circumvent opposition. However, stakeholders noted difficulties in navigating the complexity of this regime and requested simplified provisions.
On December 13, 2018, further amendments to the Trademarks Act respecting divisional applications and technical drafting changes received royal assent as part of the Budget Implementation Act, 2018, No. 2. The amendments address stakeholder concerns by eliminating the potential misuse of the divisional application process to circumvent opposition and allowing for simplified divisional provisions in the Trademarks Regulations. The amendments to the Act are expected to come into force on June 17, 2019, and, as a result, coordinating regulatory amendments are required to the Regulations which will remove the complex regulatory provisions of November 14, 2018.
In 2014, amendments to the Trademarks Act (the Act) were included in the Economic Action Plan 2014 Act, No. 1 to implement the Singapore Treaty on the Law of Trademarks, the Madrid Protocol and the Nice Agreement. These amendments required significant amendments to the Trademarks Regulations (the Regulations), which were made on November 14, 2018. The amendments for the Act and Regulations will come into force on June 17, 2019.
As part of the amendments to the Act, the availability of divisional applications to be filed at the Canadian Intellectual Property Office (CIPO) was introduced. In these circumstances, a trademark applicant will be able to divide an original application to remove any goods or services and introduce those into a separate divisional application, allowing them to proceed to registration separately. The non-divided goods or services will remain in the original application for further processing as required.
This would be done when there is an issue with only some of the goods or services and more time is required to overcome an objection or requirement request raised by CIPO during examination or an opposition proceeding, once the application is advertised. In such cases, by dividing out some of the goods or services, the remaining goods or services in the application can proceed to advertisement and eventually, registration.
It is important to note that a divisional application is treated in the same manner as the original application it has been divided from. It can be amended, withdrawn, advertised, and be the subject of opposition proceedings before it can be registered. Applications that have been divided and registered can also be merged into one another.
The 2014 amendments to the Act only limited the scope of divisional applications based on two cut-off points, namely the filing date of the application and the day on which the application is advertised, which made it vulnerable to potential misuse. Specifically, the wording allowed goods or services that were deleted from an original application after advertisement to be reintroduced in a divisional application anytime up to registration, therefore effectively circumventing opposition. For example, a divisional application may have been filed for goods and services and removed from the original application prior to the end of the opposition period, depriving potential opponents of the full two-month period to oppose. This could have the effect of frustrating or effectively circumventing the opposition process.
To mitigate this potential misuse, complex provisions were added to the revised Trademarks Regulations, to prevent applicants from circumventing opposition and to give prospective opponents the opportunity to initiate an opposition. However, this had the potential to significantly lengthen opposition proceedings since in some cases, the advertisement of the divisional application would be after the original application advertised.
The complexity of this regime, as well as the difficulty to navigate it, was raised by stakeholders during public consultations on the Trademarks Regulations in 2017 and following prepublication of the amendments to the Trademarks Regulations in the Canada Gazette, Part I. The need for simplified provisions was also conveyed by stakeholders.
As a result, on December 13, 2018, as part of the Budget Implementation Act, 2018, No. 2, the amendments were made to the Act in order to eliminate this potential misuse of the divisional application process. It does this by clarifying that if an original application has been advertised, an applicant may only include goods and services in a divisional application that are within the scope of the original application on the day on which the divisional application is filed. Further technical drafting amendments were also included. Given these changes, the Regulations need to be revised to remove the now unnecessary complex provisions dealing with divisional applications. In addition, corresponding changes are required to the Madrid Protocol portion of the Regulations dealing with divisional applications and other technical drafting amendments.
The objective of the proposed amendments to the Trademarks Regulations is to ensure consistency between the Trademarks Act and the Trademarks Regulations.
The amendments to the Trademarks Regulations will remove the complex provisions that were introduced in November 2018 to prevent potential misuse of the divisional application process. In addition, editorial changes will be made to reflect the new cut-off point for the scope of a divisional application when filed after advertisement, as it will be reflected under the Act.
Consultation on the divisional provisions in the Trademarks Regulations took place from June 19 to July 21, 2017, during an online public consultation. As part of this process, a plain language document was made available describing the proposed changes and their intent. In addition, as part of the prepublication process through the Canada Gazette, Part I, amendments to the Trademarks Regulations, including those related to divisionals, were published for a 30-day public comment period that was held from February 10 to March 11, 2018.
In both instances, stakeholders found the sections of the then-proposed Trademarks Regulations related to divisional applications to be overly complex and costly.
The amendments to the Trademarks Act contained in the Budget Implementation Act, 2018, No. 2 reflect stakeholder feedback on what would be a better and more efficient way of processing these types of applications. Since the proposed amendments to the Trademarks Regulations reflect the wording in the Act, further consultation (including prepublication) is not considered necessary.
The regulatory amendment is necessary to reflect changes to the enabling Trademarks Act.
Costs and benefits
The amendment to the Trademarks Regulations is required to reflect the legislative change made to the Trademarks Act that will come into force on June 17, 2019. Keeping the language the same is important, as it reduces confusion for stakeholders and limits the risk that a party voluntarily derails ongoing proceedings, which can lead to delays, additional costs, and even an inadvertent loss of rights. As the changes are consequential to the legislative amendments, there are no expected costs for government, Canadians, or stakeholders.
Small business lens
The small business lens was applied to the proposed amendments, and no impacts on small businesses were identified.
The proposed amendments will not impose administrative burden costs on business. Therefore, the “One-for-One” Rule does not apply.
Regulatory cooperation and alignment
The proposed amendment will not relate to a work plan or commitment under a formal regulatory cooperation forum.
Strategic environmental assessment
In accordance with The Cabinet Directive on the Environmental Assessment of Policy, Plan and Program Proposals, a preliminary scan concluded that a strategic environmental assessment is not required.
Gender-based analysis plus
No gender-based analysis plus (GBA+) issues have been identified for these Regulations.
Implementation, compliance and enforcement, and service standards
Implementation of these amendments to the Trademarks Regulations will take effect as of June 17, 2019. Up-to-date guidance on these amendments will be provided on CIPO’s website and through information sessions. In addition, promotion and outreach on of all the legislative changes will be provided through a news release, email to external clients and targeted stakeholders, and through social media. All necessary information technology updates will be made prior to June 17, 2019.
Canadian Intellectual Property Office
50 Victoria Street, Room C236-10