Trademarks Regulations: SOR/2018-227

Canada Gazette, Part II, Volume 152, Number 23

Registration

SOR/2018-227 October 30, 2018

TRADE-MARKS ACT

Trademarks Regulations

P.C. 2018-1330 October 29, 2018

Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to sections 65^{footnote a}, 65.1^{footnote b} and 65.2^{footnote c} of the Trademarks Act ^{footnote d}, makes the annexed Trademarks Regulations.

TABLE OF PROVISIONS

Trademarks Regulations

PART 1

Rules of General Application

Interpretation

1 Definitions

2 Reference to a period

General

3 Written communications intended for Registrar

4 Limit on written communications

5 Written communications regarding applications for registration

6 Address

7 Form of communication

8 Intelligibility of documents

9 Document provided in non-official language

10 Manner of providing documents, information or fees

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

41 Manner

Opposition Proceeding Under Section 38 of 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

SCHEDULE

Trademarks Regulations

PART 1

Rules of General Application

Interpretation

Definitions

1 The following definitions apply in these Regulations.

Act means the Trademarks Act. (Loi)

associate trademark agent means a trademark agent that is appointed by another trademark agent under subsection 22(2) or (3). (agent de marques de commerce associé)

International Bureau means the International Bureau of the World Intellectual Property Organization. (Bureau international)

International Register means the official collection of data concerning international registrations that is maintained by the International Bureau. (Registre international)

international registration means a registration of a trademark that is on the International Register. (enregistrement international)

trademark agent means, other than in subparagraph 16(a)(iii) and paragraphs 19(b) and 20(1)(b), a person or firm whose name is on the list of trademark agents that is kept under section 28 of the Act. (agent de marques de commerce)

Reference to a period

2 Unless otherwise indicated, a reference to a period in these Regulations is to be read, if the period is extended under section 47 or 47.1 or subsection 66(1) of the Act, as a reference to the period as extended.

General

Written communications intended for Registrar

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

Limit on written communications

4 (1) A written communication intended for the Registrar must not relate to more than one application for the registration of a trademark or more than one registered trademark.

Exceptions

(2) Subsection (1) does not apply to a written communication in respect of

(a) a change of name or address;
(b) a payment of a fee for the renewal of a registration;
(c) a cancellation of a registration;
(d) a transfer of a registered trademark or of an application for the registration of a trademark;
(e) a document affecting rights in respect of a registered trademark or of an application for the registration of a trademark;
(f) an appointment or revocation of an appointment of a trademark agent;
(g) a correction of an error; and
(h) the provision of evidence, written representations or requests for a hearing provided in a proceeding under section 11.13, 38 or 45 of the Act.

Written communications regarding applications for registration

5 (1) A written communication intended for the Registrar in respect of an application for the registration of a trademark must include the name of the applicant and, if known, the application number.

Written communications regarding registered trademarks

(2) A written communication intended for the Registrar in respect of a registered trademark must include the name of the registered owner and either the registration number or the number of the application that resulted in the registration.

Address

6 (1) Joint applicants, opponents and objectors must provide a single postal address for correspondence.

Notice of change of address

(2) A person that is doing business before the Office of the Registrar of Trademarks must notify the Registrar of any change of their postal address for correspondence.

Form of communication

7 The Registrar is not required to have regard to any communication that is not submitted in writing, other than a communication made during a hearing held in a proceeding under section 11.13, 38 or 45 of the Act.

Intelligibility of documents

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

Document provided in non-official language

9 The Registrar is not required to have regard to the whole or any part of a document that is provided in a language other than English or French unless a translation into English or French is also provided.

Manner of providing documents, information or fees

10 (1) Unless provided by an electronic means in accordance with subsection 64(1) of the Act, documents, information or fees must be provided to the Registrar by physical delivery to the Office of the Registrar of Trademarks or to an establishment that is designated by the Registrar as being accepted for that purpose.

Date of receipt — physical delivery to Office

(2) Documents, information or fees that are provided to the Registrar by physical delivery to the Office of the Registrar of Trademarks are deemed to have been received by the Registrar

(a) if they are delivered when the Office is open to the public, on the day on which they are delivered to the Office; and
(b) if they are delivered when the Office is closed to the public, on the first day on which the Office is next open to the public.

Date of receipt — physical delivery to designated establishment

(3) Documents, information or fees that are provided to the Registrar by physical delivery to a designated establishment are deemed to have been received by the Registrar

(a) if they are delivered when the establishment is open to the public,
- (i) in the case where the Office of the Registrar of Trademarks is open to the public for all or part of the day on which they are delivered, on that day, and
- (ii) in any other case, on the day on which the Office of the Registrar of Trademarks is next open to the public; and
(b) if they are delivered when the establishment is closed to the public, on the first day on which the Office of the Registrar of Trademarks is next open to the public that falls on or after the day on which the establishment is next open to the public.

Date of receipt — provision by electronic means

(4) Documents, information or fees that are provided to the Registrar by an electronic means in accordance with subsection 64(1) of the Act are deemed to have been received on the day, according to the local time of the place where the Office of the Registrar of Trademarks is located, on which the Office receives it.

Exception — certain applications and requests

(5) Subsections (1) to (3) do not apply in respect of

(a) an application for international registration referred to in sections 98 to 100;
(b) a request for the recording of a change in ownership referred to in sections 101 and 102;
(c) a request for division referred to in section 123; and
(d) a transformation application referred to in section 147.

Exception — International Bureau

(6) Subsections (1) to (4) do not apply in respect of documents, information or fees that are provided to the Registrar by the International Bureau.

Waiver of fees

11 The Registrar may waive the payment of a fee if the Registrar is satisfied that the circumstances justify it.

Refund

12 On request made no later than three years after the day on which a fee is paid, the Registrar must refund any overpayment of the fee.

Affidavit or statutory declaration

13 (1) A person that provides the Registrar with a copy of an affidavit or statutory declaration in a matter in respect of which an appeal lies under subsection 56(1) of the Act must retain the original for a retention period that ends one year after the day on which the applicable appeal period expires but, if an appeal is taken, ends on the day on which the final judgment is given in the appeal.

Provision of original

(2) On request by the Registrar made before the end of the retention period, the person must provide the original to the Registrar.

Extension of time — fee

14 A person that applies for an extension of time under section 47 of the Act must pay the fee set out in item 1 of the schedule to these Regulations.

Prescribed days — extension of time periods

15 The following days are prescribed for the purpose of subsection 66(1) of the Act:

(a) Saturday;
(b) Sunday;
(c) January 1 or, if January 1 falls on a Saturday or Sunday, the following Monday;
(d) Good Friday;
(e) Easter Monday;
(f) the Monday before May 25;
(g) June 24 or, if June 24 falls on a Saturday or Sunday, the following Monday;
(h) July 1 or, if July 1 falls on a Saturday or Sunday, the following Monday;
(i) the first Monday in August;
(j) the first Monday in September;
(k) the second Monday in October;
(l) November 11 or, if November 11 falls on a Saturday or Sunday, the following Monday;
(m) December 25 and 26 or
- (i) if December 25 falls on a Friday, that Friday and the following Monday, and
- (ii) if December 25 falls on a Saturday or Sunday, the following Monday and Tuesday; and
(n) any day on which the Office of the Registrar of Trademarks is closed to the public for all or part of that day during ordinary business hours.

Trademark Agents

List of Trademark Agents

Eligibility for examination

16 A person is eligible to sit for a qualifying examination for trademark agents if the person meets the following requirements:

(a) on the first day of the examination, resides in Canada and
- (i) has been employed for at least 24 months in the Office of the Registrar of Trademarks either on the examining staff or as a person to whom any of the Registrar’s powers, duties and functions under section 38 or 45 of the Act have been delegated,
- (ii) has worked in Canada in the area of Canadian trademark law and practice, including in the preparation and prosecution of applications for the registration of trademarks, for at least 24 months, or
- (iii) has worked in the area of trademark law and practice, including in the preparation and prosecution of applications for the registration of trademarks, for at least 24 months of which at least 12 were worked in Canada with the rest being worked in another country where the person was authorized to act as a trademark agent under the law of that country; and
(b) within two months after the day on which the notice referred to in subsection 18(2) was published,
- (i) notifies the Registrar in writing of their intention to sit for the examination,
- (ii) pays the fee set out in item 2 of the schedule, and
- (iii) furnishes the Registrar with a statement indicating that they will meet the requirements set out in paragraph (a), along with supporting justifications.

Establishment of examining board

17 (1) An examining board is established for the purpose of preparing, administering and marking a qualifying examination for trademark agents.

Membership

(2) The Registrar must appoint the members of the board, at least two of whom must be trademark agents nominated by the Intellectual Property Institute of Canada.

Frequency of qualifying examinations

18 (1) The examining board must administer a qualifying examination for trademark agents at least once a year.

Notice of date of examination

(2) The Registrar must publish on the website of the Canadian Intellectual Property Office a notice that specifies the date of the next qualifying examination and indicates that a person must meet the requirements set out in section 16 in order to be eligible to sit for the examination.

Designation of place of examination

(3) The Registrar must designate the place or places where the qualifying examination is to be held and must, at least 14 days before the first day of the examination, notify every person that has met the requirements set out in paragraph 16(b) of the designated place or places.

Listing of trademark agents

19 The Registrar must, on written request and payment of the fee set out in item 3 of the schedule, enter on the list of trademark agents that is kept under section 28 of the Act the name of

(a) each resident of Canada who has passed the qualifying examination for trademark agents;
(b) each resident of another country who is authorized to act as a trademark agent under the law of that country; and
(c) each firm with at least one member who has their name entered on the list as a trademark agent.

Maintenance of name on list

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

(a) a resident of Canada whose name is on the list of trademark agents must, to maintain their name on the list, pay the fee set out in item 4 of the schedule;
(b) a resident of another country whose name is on that list must, to maintain their name on the list, file a declaration, signed by them, indicating their country of residence and that they are authorized to act as a trademark agent under the law of that country; and
(c) a firm whose name is on that list must, to maintain its name on the list, file a declaration, signed by one of its members whose name is on the list, indicating all of its members whose names are on the list.

Removal from list

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

(a) fails to comply with subsection (1); or
(b) no longer meets the requirements under which their name was entered on the list unless the trademark agent is a person referred to in paragraph 19(a) or (b) or a firm referred to in paragraph 19(c).

Reinstatement

21 If the name of a trademark agent has been removed from the list of trademark agents under subsection 20(2), it may be reinstated if the trademark agent

(a) applies to the Registrar, in writing, for reinstatement within one year after the day on which their name was removed from the list; and
(b) as the case may be,
- (i) is a person referred to in paragraph 19(a) and pays the fees set out in items 4 and 5 of the schedule,
- (ii) is a person referred to in paragraph 19(b) and files the declaration referred to in paragraph 20(1)(b), or
- (iii) is a firm referred to in paragraph 19(c) and files the declaration referred to in paragraph 20(1)(c).

Representation

Power to appoint trademark agent

22 (1) An applicant, registered owner or other person may appoint a trademark agent to represent them in any business before the Office of the Registrar of Trademarks.

Requirement to appoint associate trademark agent

(2) A trademark agent that does not reside in Canada must appoint a trademark agent that resides in Canada as an associate trademark agent to represent the person that appointed them in any business before the Office of the Registrar of Trademarks.

Power to appoint associate trademark agent

(3) A trademark agent that resides in Canada, other than an associate trademark agent, may appoint another trademark agent that resides in Canada as an associate trademark agent to represent the person that appointed them in any business before the Office of the Registrar of Trademarks.

Notice of appointment or revocation

23 The appointment of a trademark agent or the revocation of such an appointment is effective starting on the day on which the Registrar receives notice of the appointment or revocation, including, in the case of an appointment, the postal address of the trademark agent.

Acts done by or in relation to trademark agent

24 (1) In any business before the Office of the Registrar of Trademarks, any act done by or in relation to a trademark agent that resides in Canada, other than an associate trademark agent, has the same effect as an act done by or in relation to the person that appointed them in respect of that business.

Acts done by or in relation to associate trademark agent

(2) In any business before the Office of the Registrar of Trademarks, any act done by or in relation to an associate trademark agent has the same effect as an act done by or in relation to the person that appointed, in respect of that business, the trademark agent that appointed the associate trademark agent.

Persons authorized to act

25 (1) Subject to subsection (4), in any business before the Office of the Registrar of Trademarks, a person may be represented by another person only if that other person is a trademark agent.

Cases involving trademark agents

(2) Subject to subsections (3) and (4), in any business before the Office of the Registrar of Trademarks in respect of which a person has appointed a trademark agent

(a) the person must not represent themselves; and
(b) no one other than the trademark agent, if that agent resides in Canada, or an associate trademark agent appointed by that trademark agent, is permitted to represent that person.

Exceptions

(3) A person that has appointed a trademark agent may represent themselves for the purpose of

(a) filing an application for the registration of a trademark, an application for international registration referred to in sections 98 to 100 or a transformation application referred to in section 147;
(b) paying a fee;
(c) giving notice under section 23;
(d) renewing the registration of a trademark under section 46 of the Act; or
(e) making a request or providing evidence under section 48 of the Act.

Exceptions

(4) With respect to any business referred to in paragraphs (3)(a) to (e), a person may be represented by another person authorized by them, whether or not that other person is a trademark agent.

Prohibited Marks

Fee

26 Any person or entity that requests the giving of public notice under paragraph 9(1)(n) or (n.1) of the Act must pay the fee set out in item 6 of the schedule to these Regulations.

Application for Registration of Trademark

Scope

27 A separate application must be filed for the registration of each trademark.

Language

28 An application for the registration of a trademark, with the exception of the trademark itself, must be in English or French.

Manner of describing goods or services

29 The statement of the goods or services referred to in paragraph 30(2)(a) of the Act must describe each of those goods or services in a manner that identifies a specific good or service.

Representation or description

30 The following requirements are prescribed for the purpose of paragraph 30(2)(c) of the Act:

(a) a representation may contain more than one view of the trademark only if the multiple views are necessary for the trademark to be clearly defined;
(b) a two-dimensional representation must not exceed 8 cm by 8 cm;
(c) if the trademark consists in whole or in part of a three-dimensional shape, a representation must be a two-dimensional graphic or photographic representation;
(d) if colour is claimed as a feature of the trademark or if the trademark consists exclusively of a single colour or a combination of colours without delineated contours, a visual representation must be in colour;
(e) if colour is not claimed as a feature of the trademark or if the trademark does not consist exclusively of a single colour or a combination of colours without delineated contours, a visual representation must be in black and white;
(f) if the trademark consists in whole or in part of a sound, a representation must include a recording of the sound in a format that is designated by the Registrar as being accepted for that purpose; and
(g) a description must be clear and concise.

Contents

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

(a) the applicant’s name and postal address;
(b) if the trademark consists in whole or in part of characters other than Latin characters, a transliteration of those other characters into Latin characters following the phonetics of the language of the application;
(c) if the trademark consists in whole or in part of numerals other than Arabic or Roman numerals, a transliteration of those other numerals into Arabic numerals;
(d) a translation into English or French of any words in any other language that are contained in the trademark;
(e) if the trademark consists in whole or in part of a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture or the positioning of a sign, a statement to that effect;
(f) if colour is claimed as a feature of the trademark, a statement to that effect, along with the name of each colour claimed and an indication of the principal parts of the trademark that are in that colour;
(g) if the trademark consists exclusively of a single colour or a combination of colours without delineated contours, a statement to that effect, along with the name of each colour; and
(h) if the trademark is a certification mark, a statement to that effect.

Fee

32 (1) A person that files an application for the registration of a trademark, other than a Protocol application as defined in section 96 or a divisional application, must pay the applicable fee set out in item 7 of the schedule.

Fee for divisional application

(2) A person that files a divisional application that does not stem from a Protocol application as defined in section 96 must pay the applicable fee set out in item 7 of the schedule for

(a) in the case that the corresponding original application is itself a divisional application,
- (i) if the filed divisional application stems from a series of divisional applications, the original application from which the series stems, and
- (ii) if the filed divisional application does not stem from a series of divisional applications, the original application from which the corresponding original application stems; and
(b) in any other case, the corresponding original application.

Deemed payment of fees

(3) If all or part of the applicable fee set out in item 7 of the schedule is paid in respect of an application, the applicable fee referred to in that item, or part of it, as the case may be, is deemed to have been paid for

(a) when that application is itself a divisional application,
- (i) in the case that it stems from a series of divisional applications, the original application from which stems the series and every divisional application that stems from that original application, and
- (ii) in the case that it does not stem from a series of divisional applications, its corresponding original application and every divisional application that stems from it; and
(b) when that application is not itself a divisional application, every divisional application that stems from it.

Fees for filing date

(4) For the purpose of paragraph 33(1)(f) of the Act, the prescribed fees are those fees set out in subparagraphs 7(a)(i) and (b)(i) of the schedule to these Regulations.

Request for Priority

Time of filing

33 (1) For the purpose of paragraph 34(1)(b) of the Act, a request for priority must be filed within six months after the filing date of the application on which the request is based.

Time and manner of withdrawal

(2) For the purpose of subsection 34(4) of the Act, a request for priority may be withdrawn by filing a request to that effect before the application is advertised under subsection 37(1) of the Act.

Default in Prosecution of Application

Time for remedying default

34 For the purpose of section 36 of the Act, the time within which a default in the prosecution of an application may be remedied is two months after the date of the notice of the default.

Amendment of Application for Registration of a Trademark

Before registration

35 (1) An application for the registration of a trademark may be amended before the trademark is registered.

Exceptions

(2) Despite subsection (1), the application must not be amended

(a) to change the identity of the applicant, unless the change results from the recording of a transfer of the application by the Registrar or, in the case of an application other than a Protocol application as defined in section 96, to correct an error in the applicant’s identification;
(b) to change the representation or description of the trademark, unless the application has not been advertised under subsection 37(1) of the Act and the trademark remains substantially the same;
(c) to broaden the scope of the statement of the goods or services contained in the application beyond the scope of
- (i) that statement on the filing date of the application without regard to section 34 of the Act or subsection 106(2) of these Regulations,
- (ii) the narrower of that statement as advertised under subsection 37(1) of the Act and that statement as amended after that advertisement, and
- (iii) in the case of a Protocol application as defined in section 96, the list of goods or services, in respect of Canada, contained — at the time of the amendment, if it were made — in the international registration on which the application is based;
(d) to add an indication that it is a divisional application;
(e) to add or delete a statement referred to in paragraph 31(b) of the Act or paragraph 31(e), (f) or (g) of these Regulations, unless the application has not been advertised under subsection 37(1) of the Act and the trademark remains substantially the same; or
(f) after the application is advertised under subsection 37(1) of the Act, to add or delete a statement referred to in paragraph 31(h) of these Regulations.

Exceptions to exceptions

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

Transfer of Application for Registration of a Trademark

Fee

36 A person that requests the recording under subsection 48(3) of the Act of the transfer of an application for the registration of a trademark must pay the fee set out in item 8 of the schedule to these Regulations.

Required information

37 The Registrar must not record the transfer of an application for the registration of a trademark under subsection 48(3) of the Act unless the Registrar has been provided with the transferee’s name and postal address.

Effect of transfer — separate applications

38 If the transfer to a person of an application for the registration of a trademark is, under subsection 48(3) of the Act or section 146 of these Regulations, recorded in respect of at least one but not all of the goods or services specified in the initial application,

(a) that person is deemed to be the applicant in respect of a separate application;
(b) the separate application is deemed to have the same filing date as that initial application; and
(c) any action taken, before the day on which the transfer is recorded, in relation to the initial application is deemed to have been taken in relation to that separate application.

Divisional Application

Manner of identifying corresponding original application

39 For the purpose of subsection 39(2) of the Act, the corresponding original application must be identified in a divisional application by means of its application number, if known.

Steps deemed 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:

(a) an amendment of the statement of the goods or services contained in the original application;
(b) a withdrawal or rejection of an opposition in respect of the original application;
(c) the advertisement of the original application, except if all of the goods or services specified in the divisional application, on the day referred to in subsection (1), cease to be within the scope of the original application after the end of the two-month period referred to in subsection 38(1) of the Act, read without regard to any extension to that period under section 47 of the Act; and
(d) the payment of the applicable fee set out in item 7 of the schedule to these Regulations.

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.

Manner

41 For the purpose of subsection 37(1) of the Act, an application is advertised by publishing on the website of the Canadian Intellectual Property Office

(a) the application number;
(b) the name and postal address of the applicant and of the applicant’s trademark agent, if any;
(c) any representation or description of the trademark contained in the application;
(d) if the trademark is in standard characters, a note to that effect;
(e) if the trademark is a certification mark, a note to that effect;
(f) the filing date of the application;
(g) if the applicant filed a request for priority in accordance with paragraph 34(1)(b) of the Act, the filing date and country or office of filing of the application on which the request for priority is based;
(h) the statement of the goods or services in association with which the trademark is used or proposed to be used, grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification;
(i) any disclaimer made under section 35 of the Act; and
(j) if the Registrar has restricted the registration to a defined territorial area in Canada under subsection 32(2) of the Act, a note to that effect.

Opposition Proceeding Under Section 38 of Act

Fee

42 For the purpose of subsection 38(1) of the Act, the fee to be paid for filing a statement of opposition is that set out in item 9 of the schedule to these Regulations.

Correspondence

43 A person that corresponds with the Registrar in respect of an opposition proceeding must clearly indicate that the correspondence relates to that proceeding.

Forwarding copies of documents

44 A party to an opposition proceeding that, on a given day, after the Registrar has forwarded a copy of the statement of opposition to the applicant under subsection 38(5) of the Act, provides to the Registrar a document, other than a document that they are otherwise required to serve, that relates to that proceeding must, on that day, forward a copy of it to the other party.

Service on representative of applicant

45 Unless they have appointed a trademark agent, an applicant may in their counter statement under subsection 38(7) of the Act set out, or may file with the Registrar and serve on the opponent a separate notice setting out, the name and address in Canada of a person on whom or a firm on which service of any document in respect of the opposition may be made with the same effect as if it had been served on the applicant.

Manner of service

46 (1) Service of a document in respect of an opposition proceeding must be effected

(a) by personal service in Canada;
(b) by registered mail to an address in Canada;
(c) by courier to an address in Canada;
(d) by the sending of a notice to the other party advising that the document to be served has been filed with or provided to the Registrar, if the party seeking to effect service does not have the information necessary to serve the other party in accordance with any of paragraphs (a) to (c); or
(e) in any manner that is agreed to by the parties.

Service on trademark agent

(2) If a party to be served appoints a trademark agent that resides in Canada in respect of an opposition proceeding,

(a) that agent is deemed to replace any person or firm set out in a statement of opposition, counter statement or notice as a person on whom or a firm on which service of any document in respect of the opposition may be made with the same effect as if it had been served on the party directly; and
(b) service must be effected on that agent unless the parties agree otherwise.

Effective date of service

(3) Subject to subsections (4) to (7) and (10), service is effective on the day on which the document is delivered.

Exception — service by registered mail

(4) Service by registered mail is effective on the day on which the document is mailed.

Exception — service by courier

(5) Service by courier is effective on the day on which the document is provided to the courier.

Exception — service by electronic means

(6) Service by an electronic means is effective on the day on which the document is transmitted.

Exception — service by sending of notice

(7) Service by the sending of a notice under paragraph (1)(d) is effective on the day on which the notice is sent.

Notice of manner and date of service

(8) The party effecting service must notify the Registrar of the manner of service and the effective date of service.

Proof of service

(9) A party that serves a document must, on request of the Registrar, provide proof of service within one month after the date of the request. If proof of service is not provided within that month, the document is deemed not to have been served.

Validity of irregular service

(10) Service of a document other than in accordance with subsection (1) is nonetheless valid if the Registrar determines that the document has been provided to the party being served and informs the parties of that determination. The service is effective on the day on which the document was provided to the party being served.

Counter statement — timing

47 For the purpose of subsection 38(7) of the Act, the time is two months.

Amendment

48 (1) No amendment to a statement of opposition or counter statement may be made except with leave of the Registrar on terms that the Registrar considers to be appropriate.

Interests of justice

(2) The Registrar must grant leave under subsection (1) if it is in the interests of justice to do so.

Manner of submitting evidence

49 Evidence in respect of an opposition proceeding, other than evidence referred to in subsection 56(3) of these Regulations, is to be submitted to the Registrar by way of affidavit or statutory declaration. However, if the evidence consists of a document or extract from a document that is in the official custody of the Registrar, it may be submitted by way of a certified copy referred to in section 54 of the Act.

Timing of opponent’s evidence

50 (1) The opponent may submit evidence referred to in subsection 38(8) of the Act to the Registrar within a period of four months after the day on which the applicant’s service on the opponent of a copy of the counter statement is effective.

Timing of service

(2) For the purpose of subsection 38(9) of the Act, the time within which the opponent must serve that evidence on the applicant is during that four-month period.

Opponent’s statement

(3) If the opponent does not wish to submit evidence referred to in subsection 38(8) of the Act, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) of this section and, if so, they must serve it on the applicant within that period.

Circumstances — deemed withdrawal of opposition

51 For the purpose of subsection 38(10) of the Act, the circumstances under which the opponent’s not submitting and serving evidence referred to in subsection 38(8) of the Act or a statement that the opponent does not wish to submit evidence results in their opposition being deemed to have been withdrawn are that neither that evidence nor that statement has been submitted and served by the opponent by the end of the four-month period referred to in section 50 of these Regulations.

Timing of applicant’s evidence

52 (1) The applicant may submit evidence referred to in subsection 38(8) of the Act to the Registrar within a period of four months after the day on which the opponent’s service under section 50 of these Regulations is effective.

Timing of service

(2) For the purpose of subsection 38(9) of the Act, the time within which the applicant must serve that evidence on the opponent is during that four-month period.

Statement of applicant

(3) If the applicant does not wish to submit evidence referred to in subsection 38(8) of the Act, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) of this section and, if so, they must serve it on the opponent within that period.

Circumstances — deemed abandonment of application

53 For the purpose of subsection 38(11) of the Act, the circumstances under which the applicant’s not submitting and serving evidence referred to in subsection 38(8) of the Act or a statement that the applicant does not wish to submit evidence results in their application being deemed to have been abandoned are that neither that evidence nor that statement has been submitted and served by the applicant by the end of the four-month period referred to in section 52 of these Regulations.

Reply evidence — timing

54 Within one month after the day on which the service on the opponent under section 52 is effective, the opponent may submit to the Registrar reply evidence and, if so, they must serve it on the applicant within that one-month period.

Additional evidence

55 (1) A party may submit additional evidence with leave of the Registrar on terms that the Registrar considers to be appropriate.

Interests of justice

(2) The Registrar must grant leave under subsection (1) if it is in the interests of justice to do so.

Ordering of cross-examination

56 (1) On the application of a party made before the Registrar gives notice in accordance with subsection 57(1), the Registrar must order the cross-examination under oath or solemn affirmation, within the period specified by the Registrar, of any affiant or declarant on an affidavit or statutory declaration that has been submitted to the Registrar as evidence in the opposition proceeding.

Conduct of cross-examination

(2) The cross-examination is to be conducted as agreed to by the parties or, in the absence of an agreement, as specified by the Registrar.

Transcript and undertakings

(3) Within the period specified by the Registrar for conducting the cross-examination,

(a) the party that conducted the cross-examination must submit to the Registrar and serve on the other party the transcript of the cross-examination and the exhibits to the cross-examination; and
(b) the party that was cross-examined must submit to the Registrar and serve on the other party any information, document or material that they undertook to provide in the course of the cross-examination.

Inadmissibility in absence of cross-examination

(4) An affidavit or statutory declaration is not to be part of the evidence if the affiant or declarant declines or fails to attend for cross-examination.

Written representations

57 (1) After all evidence has been filed, the Registrar must give the parties notice that they may submit written representations to the Registrar.

Timing of opponent’s written representations

(2) The opponent may submit written representations to the Registrar within a period of two months after the date of that notice.

Timing of service

(3) For the purpose of subsection 38(9) of the Act, the time within which the opponent must serve their written representations on the applicant is during that two-month period.

Statement of opponent

(4) If the opponent does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period referred to in subsection (2) and, if so, they must serve it on the applicant within that period.

Timing of applicant’s written representations

(5) The applicant may submit written representations to the Registrar within the following period:

(a) if service referred to in subsection (3) or (4), as the case may be, is effective within the two-month period referred to in subsection (2), two months after the day on which that service is effective; and
(b) in any other case, two months after the end of the two-month period referred to in subsection (2).

Timing of service

(6) For the purpose of subsection 38(9) of the Act, the time within which the applicant must serve their written representations on the opponent is during the two-month period determined under subsection (5) of this section for their submission of written representations.

Statement of applicant

(7) If the applicant does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period determined under subsection (5) for their submission of written representations and, if so, they must serve it on the opponent within that period.

Request for hearing

58 (1) Within one month after the day on which the applicant’s service on the opponent of written representations or of a statement that the applicant does not wish to make written representations is effective — or, if no such service is effective within the two-month period determined under subsection 57(5) for their submission of written representations, within one month after the end of that two-month period — a party that wishes to make representations to the Registrar at a hearing must file with the Registrar a request that indicates

(a) whether they intend to make representations in English or French and whether they will require simultaneous interpretation if the other party makes representations in the other official language; and
(b) whether they wish to make representations in person, by telephone, by video conference or by another means of communication offered by the Registrar, and that sets out any information necessary to permit the use of the chosen means of communication.

When representations may be made

(2) A party may make representations at the hearing only if they file a request in accordance with subsection (1).

Changes

(3) If a party, at least one month before the date of the hearing, notifies the Registrar of changes to be made in respect of any of the information provided under subsection (1), the Registrar must modify the administrative arrangements for the hearing accordingly.

Register

Particulars

59 For the purpose of paragraph 26(2)(f) of the Act, the following are other particulars that are required to be entered on the register:

(a) the registration number;
(b) the name and postal address of the registered owner on the date of registration;
(c) any representation or description of the trademark that is contained in the application for the registration of the trademark;
(d) if the trademark is in standard characters, a note to that effect;
(e) if the trademark is a certification mark, a note to that effect; and
(f) if the Registrar has restricted the registration to a defined territorial area in Canada under subsection 32(2) of the Act, a note to that effect.

Fee for extending statement of goods or services

60 For the purpose of subsection 41(1) of the Act, the fee to be paid by a registered owner that makes an application to extend the statement of goods or services in respect of which a trademark is registered is that set out in item 10 of the schedule to these Regulations.

Merger of registrations

61 The Registrar may merge registrations under paragraph 41(1)(f) of the Act only if the trademarks to which the registrations apply are the same and have the same registered owner.

Fee for the giving of notice

62 For the purpose of subsection 44(1) of the Act, the fee to be paid by a person that requests that a notice be given under that subsection is that set out in item 11 of the schedule to these Regulations.

Requested statement of goods or services — timing

63 For the purpose of subsection 44.1(1) of the Act, the time within which a registered owner must furnish the Registrar with a statement of goods and services grouped in the manner described in subsection 30(3) of the Act is six months after the date of the notice that was given to them.

Transfer of Registered Trademark

Fee

64 A person that requests the registration of the transfer of a registered trademark under subsection 48(4) of the Act must pay the fee set out in item 12 of the schedule to these Regulations.

Required information

65 The Registrar must not register the transfer of a registered trademark under subsection 48(4) of the Act unless the Registrar has been provided with the transferee’s name and postal address.

Effect of transfer — separate registrations

66 If the transfer to a person of a registered trademark is, under subsection 48(4) of the Act or section 146 of these Regulations, registered in respect of at least one but not all of the goods or services that are specified in the initial registration, that person is deemed to be the registered owner of a separate registration that is deemed to have the same registration date as that initial registration.

Proceeding Under Section 45 of Act

Fee

67 For the purpose of subsection 45(1) of the Act, the fee to be paid by a person that requests that a notice be given under that subsection is that set out in item 13 of the schedule to these Regulations.

Correspondence

68 A person that corresponds with the Registrar in respect of a proceeding under section 45 of the Act must clearly indicate that the correspondence relates to that proceeding.

Forwarding copies of documents

69 A party to a proceeding under section 45 of the Act that, on a given day after the Registrar has given notice under subsection 45(1) of the Act, provides to the Registrar a document, other than a document that they are otherwise required to serve, that relates to that proceeding must, on that day, forward a copy of it to any other party.

Service on representative of party

70 A party to a proceeding under section 45 of the Act may file with the Registrar and serve on any other party to the proceeding a notice setting out the name and address in Canada of a person on whom or a firm on which service of any document in respect of the proceeding may be made with the same effect as if it had been served on them.

Manner of service

71 (1) Service of a document in respect of a proceeding under section 45 of the Act must be effected

(a) by personal service in Canada;
(b) by registered mail to an address in Canada;
(c) by courier to an address in Canada;
(d) by the sending of a notice to the other party advising that the document to be served has been filed with or submitted to the Registrar, if the party seeking to effect service does not have the information necessary to serve the other party in accordance with any of paragraphs (a) to (c); or
(e) in any manner that is agreed to by the parties.

Service on trademark agent

(2) Despite section 70, if a party to be served appoints a trademark agent that resides in Canada in respect of a proceeding under section 45 of the Act, service must be effected on that agent unless the parties agree otherwise.

Effective date of service

(3) Subject to subsections (4) to (7) and (10), service is effective on the day on which the document is delivered.

Exception — service by registered mail

(4) Service by registered mail is effective on the day on which the document is mailed.

Exception — service by courier

(5) Service by courier is effective on the day on which the document is provided to the courier.

Exception — service by electronic means

(6) Service by an electronic means is effective on the day on which the document is transmitted.

Exception — service by sending of notice

(7) Service by the sending of a notice under paragraph (1)(d) is effective on the day on which the notice is sent.

Notice of manner and date of service

(8) The party effecting service must notify the Registrar of the manner of service and the effective date of service.

Proof of service

Validity of irregular service

Evidence — timing

72 For the purpose of subsection 45(2.1) of the Act, the time within which the registered owner of the trademark must serve their evidence on the person at whose request the notice was given is the three-month period referred to in subsection 45(1) of the Act.

Written representations

73 (1) After the registered owner has furnished an affidavit or statutory declaration to the Registrar in response to a notice given under subsection 45(1) of the Act, the Registrar must give the parties notice that they may submit written representations to the Registrar.

Timing if notice given at Registrar’s initiative

(2) For the purpose of subsection 45(2) of the Act, if the notice referred to in subsection 45(1) of the Act was given on the Registrar’s own initiative, the time within which the registered owner may submit written representations to the Registrar is two months after the date of the notice given under subsection (1) of this section.

Statement of registered owner

(3) If the registered owner does not wish to submit written representations in respect of a notice referred to in subsection 45(1) of the Act that was given on the Registrar’s own initiative, they may submit a statement to that effect to the Registrar within the two-month period referred to in subsection (2) of this section.

Timing if notice given on request

(4) For the purpose of subsections 45(2) and (2.1) of the Act, if the notice referred to in subsection 45(1) of the Act was given at the request of a person, the time within which that person may submit written representations to the Registrar and must serve those representations on the registered owner is two months after the date of the notice given under subsection (1) of this section.

Statement of person requesting notice

(5) If that person does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period referred to in subsection (4) and, if so, they must serve it on the registered owner within that period.

Timing of registered owner’s written representations

(6) For the purpose of subsections 45(2) and (2.1) of the Act, if the notice referred to in subsection 45(1) of the Act was given at the request of a person, the time within which the registered owner may submit written representations to the Registrar and must serve those representations on that person is

(a) in the case that a service referred to in subsection (4) or (5) of this section, as the case may be, is effective within the two-month period referred to in that subsection (4), two months after the day on which that service is effective; and
(b) in any other case, two months after the end of the two-month period referred to in that subsection (4).

Statement of registered owner

(7) If the registered owner does not wish to submit written representations in respect of a notice referred to in subsection (6), they may submit a statement to that effect to the Registrar within the two-month period determined under subsection (6) for their submission of written representations and, if so, they must serve it on the person requesting the notice within that period.

Request for hearing

74 (1) Every party that wishes to make representations to the Registrar at a hearing must file with the Registrar a request that indicates

(a) whether the party intends to make representations in English or French and whether they will require simultaneous interpretation if another party makes representations in the other official language; and
(b) whether the party wishes to make representations in person, by telephone, by video conference or by another means of communication offered by the Registrar and that sets out any information necessary to permit the use of the chosen means of communication.

Period

(2) The request must be filed within the following period:

(a) if the notice referred to in subsection 45(1) of the Act was given on the Registrar’s own initiative, one month after the day on which the registered owner submits to the Registrar written representations or a statement that they do not wish to make written representations or, if no such submission is made within the two-month period referred to in subsection 73(2) of these Regulations, one month after the end of that two-month period; and
(b) if the notice referred to in subsection 45(1) of the Act was given at the request of a person, one month after the day on which the registered owner’s service of written representations or of a statement that they do not wish to make written representations is effective or, if no such service is effective within the two-month period determined under 73(6) of these Regulations for their submission of written representations, one month after the end of that two-month period.

When representations may be made

(3) A party may make representations at the hearing only if they file a request in accordance with this section.

Changes

(4) If a party, at least one month before the date of the hearing, notifies the Registrar of changes to be made in respect of any of the information provided under subsection (1), the Registrar must modify the administrative arrangements for the hearing accordingly.

Renewal of Registration

Fee

75 For the purpose of section 46 of the Act, the renewal fee to be paid is that set out in item 14 of the schedule to these Regulations.

Period

76 For the purpose of section 46 of the Act, the period within which the renewal fee is to be paid

(a) begins on the day that is six months before the end of the initial period or the renewal period, as the case may be, and
(b) ends at the later of
- (i) the end of the six-month period that begins after the end of that initial or renewal period, and
- (ii) if a notice is sent under subsection 46(2) of the Act, the end of the two-month period that begins after the date of that notice.

Deemed date — merged registrations

77 For the purpose of a renewal under section 46 of the Act, the deemed day of registration in respect of a registration of a trademark that results from the merger of registrations under paragraph 41(1)(f) of the Act is the day that is 10 years before the earliest day, after the day of the merger, on which the initial period or the renewal period, as the case may be, in respect of any of the registrations being merged would have expired, had the merger not occurred.

Objection Proceeding Under Section 11.13 of Act

Fee

78 For the purpose of subsection 11.13(1) of the Act, the fee to be paid for filing a statement of objection is that set out in item 15 of the schedule to these Regulations.

Correspondence

79 A person that corresponds with the Registrar in respect of an objection proceeding must clearly indicate that the correspondence relates to that proceeding.

Forwarding copies of documents

80 A party to an objection proceeding that, on a given day after a statement of objection has been filed with the Registrar under subsection 11.13(1) of the Act, provides to the Registrar a document, other than a document that they are otherwise required to serve on another party, that relates to that proceeding must, on that day, forward a copy of it to the other party.

Manner of service

81 (1) Service of a document in respect of an objection proceeding must be effected

(a) by personal service in Canada;
(b) by registered mail to an address in Canada;
(c) by courier to an address in Canada;
(d) by the sending of a notice to the other party advising that the document to be served has been filed with or submitted to the Registrar, if the party seeking to effect service does not have the information necessary to serve the other party in accordance with any of paragraphs (a) to (c); or
(e) in any manner that is agreed to by the parties.

Service on trademark agent

(2) If a party to be served appoints a trademark agent that resides in Canada in respect of an objection proceeding,

(a) that agent is deemed, in respect of any party that has been served with notice of the appointment, to replace any person or firm set out in a statement by the Minister or a statement of objection as a person on whom or a firm on which service of any document may be made with the same effect as if it had been served on the party directly; and
(b) service must be effected on that agent unless the parties agree otherwise.

Effective date of service

(3) Subject to subsections (4) to (7) and (10), service is effective on the day on which the document is delivered.

Exception — service by registered mail

(4) Service by registered mail is effective on the day on which the document is mailed.

Exception — service by courier

(5) Service by courier is effective on the day on which the document is provided to the courier.

Exception — service by electronic means

(6) Service by an electronic means is effective on the day on which the document is transmitted.

Exception — service by sending of notice

(7) Service by the sending of a notice under paragraph (1)(d) is effective on the day on which the notice is sent.

Notice of manner and date of service

(8) The party effecting service must notify the Registrar of the manner of service and the effective date of service.

Proof of service

Validity of irregular service

Amendment

82 (1) No amendment to a statement of objection or counter statement may be made except with leave of the Registrar on terms that the Registrar considers to be appropriate.

Interests of justice

(2) The Registrar must grant leave under subsection (1) if it is in the interests of justice to do so.

Manner of submitting evidence

83 Evidence in respect of an objection proceeding, other than evidence referred to in subsection 91(3) of these Regulations, is to be submitted to the Registrar by way of affidavit or statutory declaration. However, if the evidence consists of a document or extract from a document that is in the official custody of the Registrar, it may be submitted by way of a certified copy referred to in section 54 of the Act.

Timing of objector’s evidence

84 (1) The objector may submit evidence referred to in subsection 11.13(5) of the Act to the Registrar within a period of four months after the day on which the responsible authority’s service on the objector of a copy of the counter statement is effective.

Timing of service

(2) For the purpose of subsection 11.13(5.1) of the Act, the time within which the objector must serve that evidence on the responsible authority is during that four-month period.

Objector’s statement

(3) If the objector does not wish to submit evidence, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) and, if so, they must serve it on the responsible authority within that period.

Circumstances — deemed withdrawal of objection

85 For the purpose of subsection 11.13(6) of the Act, the circumstances under which the objector’s not submitting and serving evidence or a statement referred to in that subsection results in their objection being deemed to have been withdrawn are that neither that evidence nor that statement has been submitted and served by the objector by the end of the four-month period referred to in section 84 of these Regulations.

Timing of responsible authority’s evidence

86 (1) The responsible authority may submit evidence referred to in subsection 11.13(5) of the Act to the Registrar within a period of four months after the day on which the objector’s service under section 84 of these Regulations is effective.

Timing of service

(2) For the purpose of subsection 11.13(5.1) of the Act, the time within which the responsible authority must serve that evidence on the objector is during that four-month period.

Statement of responsible authority

(3) If the responsible authority does not wish to submit evidence, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) and, if so, they must serve it on the objector within that period.

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

87 For the purpose of paragraph 11.13(5)(a) of the Act, the circumstances under which the responsible authority’s not submitting evidence or a statement that they do not wish to submit evidence results in the loss of the opportunity to submit evidence and to make representations to the Registrar are that neither that evidence nor that statement has been submitted and served by the responsible authority by the end of the four-month period referred to in section 86 of these Regulations.

Circumstances — indication or translation not entered on list

88 For the purpose of subsection 11.13(6.1) of the Act, the circumstances under which the responsible authority’s not submitting and serving evidence or a statement that they do not wish to submit evidence results in the indication or the translation not being entered on the list are that neither that evidence nor that statement has been submitted and served by the responsible authority by the end of the four-month period referred to in section 86 of these Regulations.

Reply evidence — timing

89 Within one month after the day on which the service on the objector under section 86 is effective, the objector may submit to the Registrar reply evidence and, if so, they must serve it on the responsible authority within that one-month period.

Additional evidence

90 (1) A party may submit additional evidence with leave of the Registrar on terms that the Registrar considers to be appropriate.

Interests of justice

(2) The Registrar must grant leave under subsection (1) if it is in the interests of justice to do so.

Ordering of cross-examination

91 (1) On the application of a party made before the Registrar gives notice in accordance with subsection 92(1), the Registrar must order the cross-examination under oath or solemn affirmation, within the period specified by the Registrar, of any affiant or declarant on an affidavit or statutory declaration that has been submitted to the Registrar as evidence in the objection proceeding.

Conduct of cross-examination

(2) The cross-examination is to be conducted as agreed to by the parties or, in the absence of an agreement, as specified by the Registrar.

Transcript and undertakings

(3) Within the period specified by the Registrar for conducting the cross-examination,

(a) the party that conducted the cross-examination must submit to the Registrar and serve on the other party the transcript of the cross-examination and exhibits to the cross-examination; and
(b) the party that was cross-examined must submit to the Registrar and serve on the other party any information, document or material that they undertook to provide in the course of the cross-examination.

Inadmissibility in absence of cross-examination

(4) An affidavit or statutory declaration is not to be part of the evidence if an affiant or declarant declines or fails to attend for cross-examination.

Written representations

92 (1) After all evidence has been filed, the Registrar must give the parties notice that they may submit written representations to the Registrar.

Timing of objector’s written representations

(2) The objector may submit written representations to the Registrar within a period of two months after the date of that notice.

Timing of service

(3) For the purpose of subsection 11.13(5.1) of the Act, the time within which the objector must serve their written representations on the responsible authority is during that two-month period.

Statement of objector

(4) If the objector does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period referred to in subsection (2) and, if so, they must serve it on the responsible authority within that period.

Timing of responsible authority’s written representations

(5) The responsible authority may submit written representations to the Registrar within the following period:

(a) if service referred to in subsection (3) or (4), as the case may be, is effective within the two-month period referred to in that subsection, two months after the day on which that service is effective; and
(b) in any other case, two months after the end of the two-month period referred to in subsection (2).

Timing of service

(6) For the purpose of subsection 11.13(5.1) of the Act, the time within which the responsible authority must serve their written representations on the objector is during the two-month period determined under subsection (5) of this section for their submission of written representations.

Statement of responsible authority

(7) If the responsible authority does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period determined under subsection (5) for their submission of written representations and, if so, they must serve it on the objector within that period.

Request for hearing

93 (1) Within one month after the day on which the responsible authority’s service on the objector of written representations or of a statement that the responsible authority does not wish to make written representations is effective — or, if no such service is effective within the two-month period determined under subsection 92(5) for their submission of written representations, within one month after the end of that two-month period — a party that wishes to make representations to the Registrar at a hearing must file with the Registrar a request that indicates

(a) whether they intend to make representations in English or French and whether they will require simultaneous interpretation if the other party makes representations in the other official language; and
(b) whether they wish to make representations in person, by telephone, by video conference or by another means of communication offered by the Registrar, and that sets out any information necessary to permit the use of the chosen means of communication.

When representations may be made

(2) A party may make representations at the hearing only if they file a request in accordance with subsection (1).

Changes

Copies of Documents

Fee for certified copies

94 (1) A person that requests a certified copy of a document that is in the Registrar’s possession must pay the fee set out in item 16 or 17 of the schedule, as applicable.

Exception

(2) Subsection (1) does not apply in respect of a certified copy that is transmitted under section 60 of the Act or rule 318 of the Federal Courts Rules, including as modified by rule 350 of those Rules.

Fee for non-certified copies

95 A person that requests a non-certified copy of a document that is in the Registrar’s possession must pay the fee set out in item 18 or 19 of the schedule, as applicable.

PART 2

Implementation of Madrid Protocol

General

Interpretation

96 The following definitions apply in this Part.

basic application means an application for the registration of a trademark that has been filed under subsection 30(1) of the Act and that constitutes the basis for an application for international registration, but does not include a Protocol application. (demande de base)

basic registration means a registration of a trademark that is on the register and that constitutes the basis for an application for international registration, but does not include a Protocol registration. (enregistrement de base)

Common Regulations means the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement, as modified from time to time. (Règlement d’exécution commun)

contracting party means any state or intergovernmental organization that is a party to the Protocol. (partie contractante)

date of international registration means the date borne by an international registration under Rule 15 of the Common Regulations. (date de l’enregistrement international)

date of notification of territorial extension means the day on which the International Bureau notifies the Registrar of a request made under Article 3ter(1) or (2) of the Protocol. (date de la notification d’extension territoriale)

holder means the person in whose name an international registration is recorded in the International Register. (titulaire)

opposition period means the two-month period referred to in subsection 38(1) of the Act. (délai d’opposition)

Protocol means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989, including any amendments, modifications and revisions made from time to time to which Canada is a party. (Protocole)

Protocol application means an application referred to in subsection 103(1) or (2) or a divisional application referred to in subsection 124(1). (demande prévue au Protocole)

Protocol registration means the registration of a trademark under subsection 132(1). (enregistrement prévu au Protocole)

Non-application of section 66 of Act

97 (1) Section 66 of the Act does not apply in respect of periods fixed by this Part, except

(a) the two-month period fixed by subsections 117(2) and (3) of these Regulations;
(b) the maximum four-month extension fixed by section 125 of these Regulations; and
(c) the three-month period fixed by section 147 of these Regulations.

Application of Rule 4(4) of Common Regulations

(2) Rule 4(4) of the Common Regulations applies to all periods fixed by this Part other than those referred to in paragraphs (1)(a) to (c) of this section.

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

Qualification

Conditions

98 A person may file with the Registrar an application for international registration of a trademark for presentation to the International Bureau if they meet the following conditions:

(a) the person is a national of or is domiciled in Canada or has a real and effective industrial or commercial establishment in Canada; and
(b) the person is the applicant in respect of a basic application for the trademark or, if there is a basic registration in respect of the trademark, the registered owner of the trademark.

Contents and Form

Contents

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

(a) the applicant’s name and postal address;
(b) the number and filing date of the basic application or the number and date of registration of the basic registration;
(c) a statement that
- (i) the applicant is a national of Canada,
- (ii) the applicant is domiciled in Canada, accompanied by the address of the applicant’s domicile in Canada if the address filed under paragraph (a) is not in Canada, or
- (iii) the applicant has a real and effective industrial or commercial establishment in Canada, accompanied by the address of the applicant’s industrial or commercial establishment in Canada if the address filed under paragraph (a) is not in Canada;
(d) if colour is claimed as a feature of the trademark in the basic application or basic registration, the same claim;
(e) a reproduction of the trademark, which must be in colour if the trademark is in colour in the basic application or basic registration or if colour is claimed as a feature of the trademark in the basic application or the basic registration;
(f) if the trademark in the basic application or basic registration is a certification mark, it consists in whole or in part of a three-dimensional shape or a sound or it consists exclusively of a single colour or a combination of colours without delineated contours, an indication to that effect;
(g) a list of the goods or services for which international registration is sought that must
- (i) include only goods or services that are within the scope of the basic application or basic registration, and
- (ii) group the goods or services according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification; and
(h) the names of the contracting parties for which the extension of protection is requested under Article 3ter(1) of the Protocol.

Language

(2) The application, with the exception of the trademark itself, must be in English or French.

Manner of filing

(3) The application must be filed by

(a) using the online service that is designated by the Registrar as being accepted for that purpose; or
(b) completing the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar.

Functions of Registrar

Office of origin

100 On receipt of an application for international registration that is filed in accordance with section 99 by a person that meets the conditions set out in section 98, the Registrar must, in respect of that application, act as the Office of origin in accordance with the Protocol and the Common Regulations, including by

(a) certifying that the information included in the application for international registration corresponds to the information included in the basic application or basic registration;
(b) presenting the application for international registration to the International Bureau; and
(c) in the case that the application for international registration results in an international registration, notifying the International Bureau to the following effect:
- (i) if, in respect of all or any of the goods or services listed in the international registration, the basic application is withdrawn, abandoned or refused or the basic registration is cancelled or expunged before the end of five years after its date of international registration, and
- (ii) if a proceeding that began before the end of that five-year period leads, in respect of all or any of the goods or services listed in the international registration, to the withdrawal, abandonment or refusal of the basic application or to the cancellation or expungement of the basic registration after that period.

Change in Ownership of International Registration

Request for recording

101 (1) A transferee of an international registration may file with the Registrar a request for the recording of a change in ownership of the international registration for presentation to the International Bureau if they meet the following requirements:

(a) the transferee is a national of or is domiciled in Canada or has a real and effective industrial or commercial establishment in Canada; and
(b) the transferee has been unable to obtain, on a request for the recording of a change in ownership of the international registration, the signature of the holder of the international registration or of the holder’s representative recorded in accordance with Rule 3(4)(a) of the Common Regulations.

Manner of filing

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

(a) using the online service that is designated by the Registrar as being accepted for that purpose; or
(b) completing the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar.

Accompanying documents

(3) The request must be accompanied by

(a) evidence of the transfer; and
(b) a statement to the effect that the transferee made efforts to obtain the signature of the holder of the international registration or that of their representative recorded in accordance with Rule 3(4)(a) of the Common Regulations and that their efforts were not successful.

Transmission to International Bureau

102 The Registrar must transmit to the International Bureau a request for the recording of a change in ownership that is filed in accordance with section 101 if the Registrar considers the evidence of the transfer to be satisfactory.

Territorial Extension to Canada

Protocol Application

Request under Article 3ter(1) of the Protocol

103 (1) On the registration of a trademark in the International Register on the basis of an application that contains a request made under Article 3ter(1) of the Protocol for the extension to Canada of the protection of a trademark resulting from its international registration, an application is deemed to have been filed under subsection 30(1) of the Act by the holder of the international registration for the registration of the trademark and in respect of the same goods or services that are listed in that request.

Request under Article 3ter(2) of the Protocol

(2) On the recording in the International Register of a request made under Article 3ter(2) of the Protocol for the extension to Canada of the protection of a trademark resulting from its international registration, an application is deemed to have been filed under subsection 30(1) of the Act by the holder of the international registration for the registration of the trademark and in respect of the same goods or services that are listed in that request.

Deemed application for certification mark

(3) An application referred to in subsection (1) or (2) is deemed to be an application for the registration of a certification mark if the international registration relates to a collective mark, a certification mark or a guarantee mark.

Non-Registrable Trademarks

Goods or services outside scope of international registration

104 A trademark that is the subject of a Protocol application is not registrable if the goods or services specified in the Protocol application are not within the scope of the international registration.

Filing Date

Non-application of sections 33 and 34 of Act

105 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

(a) if the Protocol application results from a request made under Article 3ter(1) of the Protocol, the date of international registration of the corresponding international registration; and
(b) if the Protocol application results from a request made under Article 3ter(2) of the Protocol, the date borne by the subsequent designation under Rule 24(6) of the Common Regulations.

Exception — priority

(2) Despite subsection (1), in the case that, before the filing date of a Protocol application as determined under that subsection, the applicant of the Protocol application or the applicant’s predecessor in title had applied, in or for any country of the Union other than Canada, for the registration of the same or substantially the same trademark in association with the same kind of goods or services, the filing date of the application in or for the other country is deemed to be the filing date of the Protocol application and the applicant is entitled to priority in Canada accordingly despite any intervening use in Canada or making known in Canada or any intervening application or registration, if

(a) the international registration on which the Protocol application is based contains a declaration claiming the priority of the application in or for the other country, along with an indication of the name of the country or office where the filing was made and of the filing date;
(b) the filing date of the Protocol application as determined under subsection (1) is within a period of six months after the date on which the earliest application was filed in or for any country of the Union for the registration of the same or substantially the same trademark in association with the same kind of goods or services; and
(c) the applicant of the Protocol application, at the filing date of the Protocol application as determined under subsection (1), is a citizen or national of or is domiciled in a country of the Union or has a real and effective industrial or commercial establishment in a country of the Union.

Amendment or Withdrawal of Protocol Application

Recording resulting in deletion

107 (1) If the International Bureau notifies the Registrar of the recording in the International Register under Rule 27(1)(a) of the Common Regulations of a limitation of the list of goods or services, in respect of Canada, of an international registration on which a Protocol application is based,

(a) in the case that the recording results in a deletion of all goods or services from that list without giving rise to a resulting new list, the Protocol application is deemed to be withdrawn;
(b) subject to paragraph (a), in the case that the recording results in a deletion of all goods or services from that list of a particular class of the Nice Classification without giving rise to a resulting new list for that particular class of the Nice Classification, the Protocol application is deemed to be amended accordingly; and
(c) in the case that the recording results in a deletion of one or more of the goods or services from a list of a particular class of the Nice Classification and gives rise to a resulting new list for that particular class of the Nice Classification, the Registrar must determine, with respect to each good or service in that resulting new list for that particular class, whether the following requirements are met:
- (i) the good or service is within the scope of the Protocol application on its filing date, not taking into account subsection 106(2), and on the date of the recording in the International Register,
- (ii) the good or service is within the scope of the Protocol application as advertised, if the date of the recording in the International Register is on or after the day on which the application is advertised under subsection 37(1) of the Act,
- (iii) the good or service is within the scope of the Protocol application as amended, if the Protocol application is amended on or after the day on which the application is advertised under subsection 37(1) of the Act and if the date of the recording in the International Register is on or after the day of the amendment, and
- (iv) the good or service is described in ordinary commercial terms and in a manner that identifies a specific good or service.

Recording resulting in new list

(2) In the case that the recording results in a deletion of one or more of the goods or services from a list of a particular class of the Nice Classification and gives rise to a resulting new list for that particular class of the Nice Classification,

(a) if the Registrar determines that the requirements set out in paragraph (1)(c) are not met for any good or service in that resulting list for that particular class, the Registrar must, in accordance with Rule 27(5) of the Common Regulations, send to the International Bureau a declaration to the effect that the limitation has no effect in Canada in respect of all of the goods and services in that class; and
(b) if the Registrar determines that the requirements set out in paragraph (1)(c) are met for all of the goods or services in that resulting list for that particular class, the Protocol application is deemed to be amended accordingly.

Complete renunciation

108 If, in respect of an international registration on which a Protocol application is based, the International Bureau notifies the Registrar of the recording in the International Register of a renunciation in respect of Canada for all of the goods or services that are listed in the international registration, the Protocol application is deemed to be withdrawn.

Complete cancellation

109 If, in respect of an international registration on which a Protocol application is based, the International Bureau notifies the Registrar of the recording in the International Register of a cancellation of the international registration for all of the goods or services that are listed in the international registration, the Protocol application is deemed to be withdrawn.

Partial cancellation

110 If, in respect of an international registration on which a Protocol application is based, the International Bureau notifies the Registrar of the recording in the International Register of a cancellation of the international registration for at least one but not all of the goods or services that are listed in the international registration, the Protocol application is deemed to be amended or withdrawn accordingly.

Change of name or address

111 If, in respect of an international registration on which a Protocol application is based, the International Bureau notifies the Registrar of the recording in the International Register of a change of name or address of the holder, the Protocol application is deemed to be amended accordingly.

Effective date of amendment or withdrawal

112 An amendment or withdrawal of a Protocol application under any of sections 107 to 111 is deemed to have taken effect on the date of the limitation, renunciation, cancellation or change, as the case may be, as recorded in the International Register.

Non-renewal of international registration

113 If the international registration on which a Protocol application is based is not renewed in respect of Canada and the International Bureau so notifies the Registrar, the Protocol application is deemed to have been withdrawn at the expiry of the international registration in respect of Canada.

Effect of Correction of International Registration on Protocol Application

Deemed amendment to application

114 If the International Bureau notifies the Registrar of a correction of an international registration affecting a Protocol application, the Protocol application is deemed to be amended accordingly.

Amendment to non-advertised application

115 If a Protocol application has not been advertised under subsection 37(1) of the Act before the date of notification of a correction of an international registration on which the Protocol application is based and if the Registrar determines that the deemed amendment to the Protocol application is substantive in respect of at least one of the goods or services specified in the amended Protocol application and is not limited to narrowing the scope of the statement of goods or services, then a reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph 132(1)(d)(i) of these Regulations to “date of notification of territorial extension” is to be read as “day on which the International Bureau sent to the Registrar the notification of a correction of an international registration on which the Protocol application is based” in respect of that Protocol application.

Amendment to advertised application — all goods or services

116 If a Protocol application has been advertised under subsection 37(1) of the Act before the date of notification of a correction of an international registration on which the Protocol application is based and if the Registrar determines that the deemed amendment to the Protocol application is substantive in respect of all of the goods or services specified in the amended Protocol application and is not limited to narrowing the scope of the statement of goods or services,

(a) the application is deemed to never have been advertised; and
(b) a reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph 132(1)(d)(i) of these Regulations to “date of notification of territorial extension” is to be read as “day on which the International Bureau sent to the Registrar the notification of a correction of an international registration on which the Protocol application is based” in respect of that Protocol application.

Amendment to advertised application — some goods or services

117 (1) If a Protocol application has been advertised under subsection 37(1) of the Act before the date of notification of a correction of an international registration on which the Protocol application is based and if the Registrar determines that the deemed amendment to the Protocol application is substantive in respect of at least one but not all of the goods or services specified in the amended Protocol application and is not limited to narrowing the scope of the statement of goods or services, then the Registrar must, by notice, invite the applicant to elect one of the following options:

(a) that the Protocol application be amended to delete those goods or services; or
(b) that the Protocol application be deemed to never have been advertised.

Deletion of goods or services

(2) If the applicant elects the option referred to in paragraph (1)(a) or does not make an election within two months after the date of the notice, the Protocol application is deemed to be amended to delete those goods or services.

Deemed non-advertisement of application

(3) If the applicant selects the option referred to in paragraph (1)(b) within two months after the date of the notice

(a) the Protocol application is deemed never to have been advertised; and
(b) a reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph 132(1)(d)(i) to “date of notification of territorial extension” is to be read as “day on which the International Bureau sent to the Registrar the notification of a correction of an international registration on which the Protocol application is based” in respect of that Protocol application.

Effective date of amendment

118 An amendment to a Protocol application under section 114 or subsection 117(2) is deemed to have taken effect on the later of the filing date of the Protocol application and the day on which the error was made that gave rise to the correction of the international registration.

Abandonment

Statement of confirmation of total provisional refusal

119 If the Registrar treats a Protocol application as abandoned under section 36 of the Act, the Registrar must send a statement of confirmation of total provisional refusal to the International Bureau.

Examination

Notification of provisional refusal

120 The Registrar must not refuse a Protocol application under subsection 37(1) of the Act without first sending to the International Bureau, before the end of 18 months after the date of notification of territorial extension, a notification of provisional refusal stating the Registrar’s objections.

Statement of confirmation of total provisional refusal

121 If the Registrar refuses a Protocol application under subsection 37(1) of the Act, the Registrar must send a statement of confirmation of total provisional refusal to the International Bureau.

Divisional Application

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

122 Subsections 39(1), (2) and (5) of the Act do not apply in respect of a Protocol application.

Filing of request for division

123 (1) The applicant in respect of a Protocol application may limit the original Protocol application to one or more of the goods or services that were within its scope and file with the Registrar for presentation to the International Bureau a request for the division, in respect of Canada, of the international registration on which the original Protocol application is based for any other goods or services that were within the scope of

(a) the original Protocol application on its filing date;
(b) the original Protocol application as advertised, if the request is filed on or after the day on which the Protocol application is advertised under subsection 37(1) of the Act; and
(c) the international registration in respect of Canada on the day on which the request is filed.

Manner of filing

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

(a) using the online service that is designated by the Registrar as being accepted for that purpose; or
(b) completing the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar.

Contents

(3) The request must indicate

(a) the number of the international registration on which the original Protocol application is based;
(b) the name of the holder of that international registration;
(c) the name of the goods or services to be set apart, grouped according to the classes of the Nice Classification; and
(d) the amount of the fee being paid to the International Bureau and the method of payment, or instructions to debit the required amount to an account opened with the International Bureau, and the name of the person effecting the payment or giving the instructions.

Sending of request to International Bureau

(4) The Registrar must send to the International Bureau any request that is filed in accordance with subsections (1) to (3).

Deemed divisional application

124 (1) If, following receipt of a request under section 123, the International Bureau notifies the Registrar of the creation of a divisional international registration in respect of Canada, the applicant is deemed to have filed a divisional application for the registration of the same trademark as in the divisional international registration and in respect of the same goods or services that are listed in the divisional international registration in respect of Canada.

Division of divisional application

(2) The divisional application may itself be divided under subsection (1) and section 123, in which case those provisions apply as if that divisional application were an original Protocol application.

Opposition

Limitation of extension

125 In respect of a Protocol application, the Registrar is not permitted, on application made to the Registrar, to extend, under section 47 of the Act, the two-month period referred to in subsection 38(1) of the Act by more than four months.

Filing of statement of opposition

126 A statement of opposition under section 38 of the Act in respect of a Protocol application must be in English or French and be filed by using the online service that is designated by the Registrar as being accepted for that purpose.

Notification of provisional refusal

127 If, in respect of a Protocol application, a statement of opposition is filed, the Registrar must send to the International Bureau a notification of provisional refusal.

No new ground of opposition

128 If the Registrar sends to the International Bureau a notification of provisional refusal based on an opposition, the statement of opposition may not be amended to add a new ground of opposition.

Notice of opposition period

129 If, in respect of a Protocol application, it is likely that the opposition period will extend beyond the end of 18 months after the date of notification of territorial extension, the Registrar must so inform the International Bureau.

Statement of confirmation of total provisional refusal

130 The Registrar must send a statement of confirmation of total provisional refusal in respect of a Protocol application to the International Bureau if

(a) the Protocol application is deemed to have been abandoned under subsection 38(11) of the Act; or
(b) the Registrar refuses the Protocol application under subsection 38(12) of the Act with respect to all of the goods or services specified in it and either the period for filing an appeal has ended and no appeal has been filed or, if an appeal has been taken, the final judgment has been decided in favour of the opponent.

Registration of Trademarks

Non-application of section 40 of Act

131 Section 40 of the Act does not apply in respect of a Protocol application.

Obligations of Registrar

132 (1) In respect of a trademark that is the subject of a Protocol application, the Registrar must register the trademark in the name of the applicant, issue a certificate of its registration and send a statement to the International Bureau that protection is granted to the trademark if

(a) the Protocol application has not been opposed and the opposition period has ended;
(b) the Protocol application has been opposed and the opposition has been decided in favour of the applicant and either the period for filing an appeal has ended and no appeal has been filed or, if an appeal has been taken, the final judgment has been decided in favour of the applicant;
(c) 18 months have passed after the date of notification of territorial extension and, within that 18-month period, the Registrar did not inform the International Bureau that it was likely that the opposition period would extend beyond that 18-month period and
- (i) did not send to the International Bureau a notification of provisional refusal, or
- (ii) did send to the International Bureau a notification of provisional refusal, but not one based on an opposition, and is not satisfied that any of paragraphs 37(1)(a) to (d) of the Act apply; or
(d) the Protocol application has been opposed, the following periods have ended, the Registrar informed the International Bureau, in the period referred to in subparagraph (i), that it was likely that the opposition period would extend beyond that period and the Registrar did not send to the International Bureau, before the end of the period referred to in subparagraph (ii), a notification of provisional refusal based on an opposition:
- (i) the 18-month period after the date of notification of territorial extension, and
- (ii) the period that ends at the earlier of the end of the seven-month period after the day on which the opposition period began and the end of the one-month period after the day on which the opposition period ended.

Non-advertisement

(2) Despite subsection 37(1) of the Act, the Registrar must not cause the Protocol application to be advertised if the trademark was registered under subsection (1) of this section without the Protocol application having been advertised.

Amendment of Register

Non-application of statutory provisions

133 Paragraphs 41(1)(a) to (c) and (f), subsections 41(2) and (4) and section 44.1 of the Act do not apply in respect of a Protocol registration.

Filing of request for merger

134 (1) The holder of a divisional international registration in respect of Canada may file with the Registrar for presentation to the International Bureau a request to merge the divisional international registration with the international registration from which it was divided if there is at least one Protocol registration based on each of those international registrations and

(a) all of the Protocol registrations stem from the same original Protocol application;
(b) they relate to the same trademark; and
(c) their registered owner is the holder of the international registrations.

Manner of filing

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

(a) using the online service that is designated by the Registrar as being accepted for that purpose; or
(b) completing the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar.

Contents

(3) The request must indicate the number of each of the international registrations to be merged and the name of the holder of those international registrations.

Sending of request to International Bureau

(4) The Registrar must send to the International Bureau any request that is filed in accordance with subsections (1) to (3).

Merger of Protocol registrations

(5) If, following receipt of the request, the International Bureau notifies the Registrar of the merger of a divisional international registration in respect of Canada into the international registration from which it was divided, the Registrar must amend the register to merge the Protocol registrations that are based on those international registrations and that stem from the same original Protocol application.

Recording resulting in deletion

135 (1) If the International Bureau notifies the Registrar of the recording in the International Register under Rule 27(1)(a) of the Common Regulations of a limitation of the list of goods or services, in respect of Canada, of an international registration on which a Protocol registration is based,

(a) in the case that the recording results in a deletion of all goods or services from that list without giving rise to a resulting new list, the Registrar must cancel the Protocol registration; and
(b) subject to paragraph (a), in the case that the recording results in a deletion of all goods or services from that list of a particular class of the Nice Classification without giving rise to a resulting new list for that particular class of the Nice Classification, the Registrar must amend the register accordingly; and
(c) in the case that the recording results in a deletion of one or more of the goods or services from a list of a particular class of the Nice Classification and gives rise to a resulting new list for that particular class of the Nice Classification, the Registrar must determine, with respect to each good or service in that resulting new list for that particular class, whether the following requirements are met:
- (i) the good or service is within the scope of the Protocol registration on the date of the recording in the International Register, and
- (ii) the good or service is described in ordinary commercial terms and in a manner that identifies a specific good or service.

Recording resulting in new list

(a) if the Registrar determines that the requirements set out in paragraph (1)(c) are not met for any good or service in that resulting list for that particular class, the Registrar must, in accordance with Rule 27(5) of the Common Regulations, send to the International Bureau a declaration to the effect that the limitation has no effect in Canada in respect of all of the goods and services in that class; and
(b) if the Registrar determines that the requirements set out in paragraph 1(c) are met for all of the goods or services in that resulting list for that particular class, the Registrar must amend the register accordingly.

Complete renunciation

136 If, in respect of an international registration on which a Protocol registration is based, the International Bureau notifies the Registrar of the recording in the International Register of a renunciation in respect of Canada for all of the goods or services that are listed in the international registration, the Registrar must cancel the Protocol registration.

Complete cancellation

137 If, in respect of an international registration on which a Protocol registration is based, the International Bureau notifies the Registrar of the recording in the International Register of a cancellation of the international registration for all of the goods or services that are listed in the international registration, the Registrar must cancel the Protocol registration.

Partial cancellation

138 If, in respect of an international registration on which a Protocol registration is based, the International Bureau notifies the Registrar of the recording in the International Register of a cancellation of the international registration for at least one but not all of the goods or services that are listed in the international registration, the Registrar must cancel the Protocol registration or amend the register accordingly.

Change of name or address

139 If, in respect of an international registration on which a Protocol registration is based, the International Bureau notifies the Registrar of the recording in the International Register of a change of name or address of the holder, the Registrar must amend the register accordingly.

Correction of international registration

140 (1) If the International Bureau notifies the Registrar of a correction of an international registration affecting a Protocol registration and

(a) if the Registrar considers that protection can still be granted to the international registration as corrected, the Registrar must amend the register accordingly; or
(b) if the Registrar considers that protection cannot, or can no longer, be granted to the international registration as corrected, the Registrar must so declare and state their grounds in a notification of provisional refusal sent to the International Bureau within 18 months after the date on which the notification of the correction was sent.

Period to respond

(2) The Registrar must by notice invite the registered owner to respond to a declaration made under paragraph (1)(b) within the period specified in the notice.

Protection granted

(3) If — after considering any response received within the specified period or, if there is none, at the end of that period — the Registrar considers that protection can be granted to the international registration as corrected, the Registrar must so notify the International Bureau and amend the register accordingly.

Protection not granted

(4) If — after considering any response received within the specified period or, if there is none, at the end of that period — the Registrar still considers that protection cannot, or can no longer, be granted to the international registration as corrected, the Registrar must so notify the International Bureau and amend the register or cancel the Protocol registration accordingly.

Effective date of cancellation or amendment

141 A cancellation of a Protocol registration or an amendment of the register under any of sections 135 to 140 is deemed to take effect on the date of the limitation, renunciation, cancellation, change or correction, as the case may be, as recorded in the International Register.

Failure to consider request for extension of time

142 (1) The Registrar may remove a Protocol registration from the register if the Registrar registered the trademark without considering a previously filed request for an extension of time to file a statement of opposition, unless the time limit under Article 5(2) of the Protocol to make a notification of provisional refusal based on an opposition has ended.

Notification

(2) If the Registrar removes a Protocol registration from the register under subsection (1), the Registrar must so notify the International Bureau.

Renewal

Non-application of section 46 of Act

143 Section 46 of the Act does not apply in respect of a Protocol registration.

Period of registration

144 (1) Subject to the Act and any other provision of these Regulations, a Protocol registration is on the register for the period that begins on the day of the registration and that ends at the moment of its cancellation or expungement.

Expungement

(2) If the international registration on which a Protocol registration is based is not renewed in respect of Canada and the International Bureau so notifies the Registrar, the Registrar must expunge the Protocol registration. The Protocol registration is deemed to have been expunged at the expiry of the international registration in respect of Canada.

Transfer

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

145 Subsections 48(3) to (5) of the Act do not apply in respect of a Protocol application or a Protocol registration.

Recording or registration

146 If the International Bureau notifies the Registrar of the recording in the International Register of a change in ownership in respect of Canada of an international registration on which a Protocol application or a Protocol registration is based, the Registrar must record the transfer of the Protocol application or register the transfer of the Protocol registration accordingly.

Transformation

Application

147 (1) If an international registration on which a Protocol application or Protocol registration is based is cancelled under Article 6(4) of the Protocol for all or any of the goods or services listed in the international registration, the person that was the holder of the international registration on the date of cancellation recorded in the International Register, or their successor in title, may, within three months after that date, file with the Registrar an application (referred to in these Regulations as a “transformation application”) to revive the former Protocol application as an application for the registration of the trademark or the former Protocol registration as a registration of the trademark.

Single application or registration

(2) The transformation application may only be filed in respect of a single Protocol application or Protocol registration.

List of goods or services — scope

(3) The statement of the goods or services in the transformation application may only include goods or services that are within the scope of

(a) goods or services that were cancelled from the international registration in respect of Canada; and
(b) goods or services in the Protocol application or Protocol registration on the date of cancellation recorded in the International Register.

Contents of application

(4) The transformation application must include the following:

(a) a statement to the effect that the application is for transformation of an international registration;
(b) a statement of the goods or services in respect of which the registration of the trademark is sought;
(c) the international registration number of the cancelled international registration; and
(d) information that permits the Registrar to identify the Protocol application or Protocol registration that was based on the cancelled international registration.

Manner of filing

(5) The transformation application must be in English or French and be filed by an electronic means specified by the Registrar.

No extension

(6) The applicant may not apply under section 47 of the Act for an extension of the three-month period referred to in subsection (1) of this section.

Consequences — trademark subject of cancelled Protocol application

148 If a transformation application is filed in accordance with section 147 for the revival of a Protocol application,

(a) an application is deemed to have been filed under subsection 30(1) of the Act by the person that, on the date of cancellation recorded in the International Register, was the holder of the same trademark as in the cancelled international registration and in respect of the goods or services specified in the transformation application;
(b) the deemed application is deemed to include any document or information contained in the Protocol application, other than the statement of goods or services;
(c) the deemed application is deemed to have the same filing date as the Protocol application; and
(d) any steps taken in relation to the Protocol application before the day on which the International Bureau notifies the Registrar of the recording of the cancellation of the international registration are deemed to have been taken in relation to the deemed application.

Consequences — trademark subject of cancelled Protocol registration

149 If a transformation application is filed in accordance with section 147 for the revival of a Protocol registration,

(a) the Registrar must, in respect of the goods or services specified in the transformation application, register the trademark in the name of the applicant and issue a certificate of its registration;
(b) the registration of the trademark is deemed to have resulted from the Protocol application that resulted in the Protocol registration;
(c) the day of registration of the trademark is deemed to be the day of registration of the Protocol registration;
(d) despite subsection 46(1) of the Act and subject to any other provision of the Act, the registration of the trademark is or is deemed to be on the register for
- (i) an initial period that begins on the day of registration of the trademark and ends when the international registration’s term of protection would have expired had the international registration not been cancelled, and
- (ii) subsequent renewal periods of 10 years if the fee set out in item 14 of the schedule to these Regulations is paid
  - (A) for the first renewal period, within the period referred to in section 76 or within six months after the day on which the trademark is registered under paragraph (a), not taking into account paragraph (c), whichever ends later, and
  - (B) for each subsequent renewal period, within the period referred to in section 76; and
(e) any steps taken in relation to the Protocol registration before the day on which the International Bureau notifies the Registrar of the recording of the cancellation of the international registration are deemed to have been taken in relation to the registration made under paragraph (a).

Denunciation

Application of Article 15(5) of Protocol

150 Article 15(5) of the Protocol applies to a holder of an international registration on which a Protocol application or a Protocol registration is based if that holder is no longer entitled to file international applications under Article 2(1) of the Protocol because of the denunciation of the Protocol by a contracting party.

PART 3

Transitional Provisions, Repeal and Coming into Force

Transitional Provisions

Definitions

151 The following definitions apply in this Part.

coming-into-force day means the day on which these Regulations come into force under subsection 162(1). (date d’entrée en vigueur)

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

Filing date already determined

152 If, before the coming-into-force day, the date of filing of an application for the registration of a trademark has been determined in accordance with section 25 of the former Regulations, the filing date of the application is that date of filing.

Filing date — coming into force

153 If, in respect of an application for the registration of a trademark, all of the items set out in subsection 33(1) of the Act have been received by the Registrar before the coming-into-force day but not all of the items set out in section 25 of the former Regulations have been delivered to the Registrar before that day, the filing date of the application is, subject to section 34 of the Act as it read immediately before the day on which section 339 of the Economic Action Plan 2014 Act, No. 1 comes into force:

(a) the coming-into-force day, in the case that the difference between the fee set out in item 7 of the schedule to these Regulations and the fee referred to in section 1 of the schedule to the former Regulations has been paid before the coming-into-force day; and
(b) the date on which that difference is paid, in the case that that difference has not been paid before the coming-into-force day.

Exception to subsections 32(1) and (2)

154 (1) If the filing date, 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

(a) when that application is itself a divisional application,
- (i) in the case that it stems from a series of divisional applications, the original application from which stems the series and every divisional application that stems from that original application, and
- (ii) in the case that it does not stem from a series of divisional applications, its corresponding original application and every divisional application that stems from it; and
(b) when that application is not itself a divisional application, every divisional application that stems from it.

Exception to subsection 32(4)

155 If, before the coming-into-force day, in respect of an application for the registration of a trademark, the items set out in paragraphs 33(1)(a) to (e) of the Act have been received by the Registrar, the fee for the purpose of paragraph 33(1)(f) of the Act, referred to in section 69.1 of the Act, in respect of that application is, despite subsection 32(4) of these Regulations, the fee set out in item 1 of the schedule to the former Regulations.

Exception to section 34

156 Despite section 34, if the date of a notice of a default in the prosecution of an application precedes the coming-into-force day, the time within which the default may be remedied is that specified in the notice.

Exception to paragraph 35(2)(e)

157 Despite paragraph 35(2)(e) of these Regulations, an application for registration referred to in section 69.1 of the Act may, if the trademark remains substantially the same, be amended to add a statement referred to in paragraph 31(b) of the Act or paragraph 31(e), (f) or (g) of these Regulations.

Exception to section 75

158 Despite section 75 of these Regulations, for the purpose of section 46 of the Act, the renewal fee for a registration in respect of which the day of the last renewal — or, if the registration has never been renewed, the day of the registration — is more than 15 years before the coming-into-force day is the fee set out in item 7 of the schedule to the former Regulations.

Exception to section 76 — first renewal

159 Despite section 76 of these Regulations and subject to section 160 of these Regulations, for the purpose of subsections 46(2) to (5) of the Act, in respect of the first renewal, on or after the coming-into-force day, of a registration that is on the register on the day before the coming-into-force day, the period within which the renewal fee must be paid

(a) begins on the later of the day of registration and the day of last renewal, and
(b) ends on the later of
- (i) the end of the period of 15 years and six months that begins after the later day described in paragraph (a), and
- (ii) if a notice is sent under subsection 46(2) of the Act, the end of the two-month period that begins after the date of that notice.

Exception to section 76 — goods or services not grouped

160 Despite section 76 of these Regulations, if the goods or services in respect of which a trademark is registered are not, at the end of the period established by section 76 or 159 of these Regulations, as the case may be, grouped on the register in accordance with paragraph 26(2)(e.1) of the Act, the period within which the fees set out in subparagraphs 14(a)(ii) and (b)(ii) of the schedule to these Regulations must be paid ends on the expiry of the two-month period that begins after the day on which the Registrar sends to the registered owner a notice stating that the register has been amended to so group the goods or services and that the registration will be expunged in the event that the fees are not paid within the prescribed period, in the case where that two-month period ends later than that period established by section 76 or 159 of these Regulations.

Repeal

161 The Trade-marks Regulations ^{footnote 1} are repealed.

Coming into Force

S.C. 2015, c. 36

162 (1) Subject to subsection (2), these Regulations come into force on the day on which section 67 of the Economic Action Plan 2015 Act, No. 1, 2015 comes into force.

February 1, 2019

(2) If section 67 of the Economic Action Plan 2015 Act, No. 1 comes into force before February 1, 2019, sections 123, 124 and 134 come into force on February 1, 2019.

SCHEDULE

(Section 14, subparagraph 16(b)(ii), section 19, paragraph 20(1)(a), subparagraph 21(b)(i), sections 26, 32 and 36, paragraph 40(2)(d), sections 42, 60, 62, 64, 67, 75 and 78, subsection 94(1), section 95, subparagraph 149(d)(ii), paragraph 153(a) and section 160)

Tariff of Fees

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
3		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
4		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 as of the filing date
10		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
16		35.00 1.00
17	Certified copy in electronic form (a) for each certification (b) for each trademark to which the request relates
17		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
18		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
19		10.00 10.00 10.00

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 will be in a position to join the treaties, thereby reducing costs and complexity for all trademark applicants, both domestic and foreign.

Description: The Trademarks Regulations (the Regulations) will 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 will 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 Regulations will 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 will increase for some users of the TMOB system and for trademark agents, estimated at $5.08 million (TPV), this will be balanced by estimated overall administrative savings that will be experienced by direct stakeholders of $8.89 million (TPV). Some of the associated fees in the Regulations will be changed to align with a proposal reviewed by Parliament in February 2017. This will save all applicants $0.65 million per year. However, registered trademark owners will see costs rise 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 Regulations will 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 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, as there are no significant changes in costs to small business.

Domestic and international coordination and cooperation: The 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 will 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 intellectual property (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 (the Singapore Treaty), the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the 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 will align Canada’s trademark regime with international norms and provide access to a single-window international trademark registration system that will allow registration in up to 102 jurisdictions through one application.

In addition, aspects of the Trade-marks 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 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 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-European Union 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.

The Regulations also contain 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 Regulations reflect changes brought about by the treaties, while others are meant to modernize and align the three types of proceedings where possible. The current Trade-marks 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 Regulations will complete the next steps towards modernizing Canada’s trademark framework.

Objectives

The primary objective of the Regulations is to carry out the amendments that were made to the Act in order to allow Canada’s accession to the treaties. This will 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 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 will increase market certainty and help maintain balance in the marketplace by providing reasonably swift and cost-effective administrative decisions.

The 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 Regulations can be summarized according to four main themes: changes to the rules of general application for trademarks (contained in Part 1 of the Regulations), new rules concerning applications filed under the Madrid Protocol (Part 2 of the 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 Regulations in order to modernize the regulatory text. In addition, references to concepts that are no longer found in the Act will be removed, 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 Regulations will modernize and streamline the 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 provisions relating to communications and correspondence aim to simplify communications with CIPO and reflect modern communication practices. The Regulations include the following key changes:

An application can be filed in the name of more than one person. In the case of joint applicants, opponents, or objectors doing business before the Office, a single address for correspondence must be provided.
New exceptions will be added to the rule that written communications to the Registrar of Trademarks (the Registrar, i.e. the CIPO official designated under the Act who is responsible for administering the trademarks regime) must relate only to one application or registration. These exceptions will allow certain actions to be taken on multiple files with one piece of correspondence, including payment of a renewal fee, appointment or revocation of a trademark agent, correction of errors, and certain communications related to proceedings before the TMOB.
The Registrar will not be required to have regard to any submitted document or part of a document that is not in English or French, unless a translation is provided.
Electronic communications will be considered to be received on the date that the Office receives the communication, including on days when the Office is closed for business such as weekends and holidays.
If an affidavit or statutory declaration submitted to the Registrar is not an original, the submitter will be required to retain the original for a prescribed period and to submit it to the Registrar upon request during that period.
Trademark applications and notices of the date of qualifying examinations for trademark agents will be published on the CIPO website, rather than in the Trade-marks Journal.

(2) General requirements concerning fees

New provisions will 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 will 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 will remain largely unchanged.

The Regulations include the following key changes:

Following changes to the Act that broaden the scope of business for which trademark agents may represent clients before the Office, the Regulations will explicitly permit agents to represent parties in any business before the Office, including section 45 proceedings.
Trademark agents who are residents of Canada will be explicitly permitted to appoint an associate trademark agent.
The Regulations will clarify and make explicit that individuals who have appointed an agent will be permitted to represent themselves, or be represented by another person they authorize, for the purposes of filing certain applications, paying a fee, appointing or revoking appointment of an agent, or renewing a trademark registration.

(4) Application for registration of a trademark

Changes to this section will 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 Regulations include the following key changes:

In order to modernize the requirements for how trademarks are described or presented in applications, the requirement to provide a “drawing” will be replaced with the broader concept of a “representation” or “description” that clearly defines the trademark. When a representation is filed, the Regulations specify requirements including the number of views (e.g. to show a three-dimensional shape from different sides), the size of two-dimensional representations allowed, and methods of representing three-dimensional shapes and colours.
Additional information and statements will be required for certain types of trademarks, including a statement indicating the type of trademark (that the trademark is a three-dimensional shape, a hologram, a sound, etc.). For trademarks consisting solely of a colour itself or combination of colours (as opposed to a word or logo trademark featuring specific colours), a statement to that effect is required, along with the name of each colour.
The current application and registration fees will be merged into one application fee, which includes the first class of goods or services (Nice class) under the Nice Classification, plus a new fee for each additional class of goods or services found in the application at the time of filing. If the examiner determines that there are more Nice classes than were identified at the time of filing, the applicant will be required to pay the additional fees (or, conversely, could request a refund if the examiner determines there are fewer classes).

(5) Priority requests

The Regulations will 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 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 Registrar in a notice. This two-month period will be codified in the Regulations to provide greater certainty.

(7) Amending a trademark application

Many of the existing provisions will remain unchanged; however, the Regulations will provide applicants with more flexibility to amend an application prior to registration, with some restrictions and qualifications. Subject to certain exceptions related to Protocol applications, the following key changes will apply:

An application can be amended to correct an error in the identification of the applicant. Any other change to the identity of the applicant can only be made as a result of a transfer of the application to a new owner.
An amendment to the description or representation of the trademark can only be made prior to advertisement of the application and only if the trademark remains substantially the same.
Restrictions concerning amendment of the statement of goods or services after advertisement will explicitly prevent an applicant from later adding goods and services back into an application that were deleted during the course of an opposition proceeding.
New conditions on amendments related to nontraditional trademarks and trademarks in standard characters will be added in order to prevent applicants from introducing changes to the type of trademark being requested after advertisement. Similarly, to ensure that proper procedures for dividing applications are followed, applicants will not be permitted to add a statement referring to it as a divisional application.

(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 Regulations will reflect these changes, and will 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 Regulations will 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 will 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 will be treated as independent from the original application. With some exceptions, the steps taken on the original application will be deemed to have been taken on the divisional application. Any filing fees that have not been paid on the earliest original application will have to be paid.

The Regulations will also establish conditions under which a divisional application, once registered, can be merged back into the registration that resulted from the original application. The resultant merged registration will 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 will remain largely the same. The only 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 Regulations will 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, the period for renewing registrations will be limited to a window around the renewal date. The prescribed period to pay the renewal fee will 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 will still have up to two months from the notice to pay the renewal fee.

The Regulations will introduce a fee per Nice class at renewal. The base renewal fee covering one class will 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

A new Part 2 will be added to specify the rules governing trademark applications that are filed under the Madrid Protocol. These sections 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. 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 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 Regulations will clarify that provisions in the Act extending deadlines on designated or prescribed days, including when CIPO is closed for business, generally do not apply to time limits set out in Part 2 of the Regulations, with some exceptions.

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

The provisions in this section will 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 Regulations set out eligibility requirements to apply for an international registration from Canada. The contents of the application for international registration will comply with the requirements of the International Bureau. The applicant will 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 will certify that the particulars included in the application (e.g. the mark itself, goods and services) correspond to the basic application or registration, and will 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 will be reported to the International Bureau by the Registrar; this will 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 will receive and transmit to the International Bureau changes in ownership of international registrations upon request in certain cases. The provisions will set out the eligibility requirements and the contents and form of the request.

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

The provisions in this section will 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 will 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 will be deemed to be filed for the registration of a trademark in Canada (“Protocol application”). The Regulations describe how the filing date of the Protocol application will be determined, including with respect to any priority claim. Generally, the domestic examination process will 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 Regulations will 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 will 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 will be issued to the International Bureau. The total provisional refusal will not be a final refusal in Canada; the applicant will have the opportunity to respond. Final refusal of the application in Canada cannot 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 will be sent to the International Bureau. This will 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 will be issued to the applicant and a statement of grant of protection will be sent to the International Bureau specifying the goods and services protected in Canada. At this point in time, the Protocol application will 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 will 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 Regulations explain the effects of various types of amendments or corrections that can be made to the international registration on the Protocol application or registration. The International Bureau will notify the Registrar in the event of a change of name or address of the holder of the international registration, of the correction of an error in the international registration or of an amendment affecting all of the goods and services, or some of them, included in the Canadian designation.

The Regulations describe how the Registrar will 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 Protocol application at the time of the notification. In some cases, the Protocol application or the register will 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 Regulations will indicate how the effective date of an amendment or correction will be determined in cases where it is accepted.

The International Bureau will 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 will be recorded on the Canadian register.

If the international registration is not renewed, the International Bureau will notify the Registrar. In this case, the Protocol application will be deemed to have been withdrawn or the Protocol registration will 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 will be recorded or the transfer of the Protocol registration will be registered automatically.

(e) Divisions and mergers

New provisions under the Madrid Protocol permitting division and merger of international registrations will come into force on February 1, 2019. The Regulations will 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 will take to forward the request to the International Bureau.

A divided Protocol application will 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 will only be possible if the international registration is cancelled by the International Bureau following a notification by the Office of origin that the basic application or registration is cancelled, but 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 provisions concerning transformation will set out the conditions under which a transformation request can 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 will be deemed to have been taken in relation to the domestic application or registration.

(g) Denunciation

The Regulations will provide that if a country or regional IP office withdraws from the Madrid Protocol, the denunciation provisions of the Madrid Protocol will 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 will 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 for an opponent to file two copies of a statement of opposition in an opposition proceeding will 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 Regulations will 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 will 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 Regulations will clarify the permitted methods of serving documents and effective dates of service for each of the following methods:

Existing methods (in person, courier, registered mail) will continue to be allowed, but will be limited to Canada, to mitigate concerns about the costs of serving documents outside of Canada. Service will also be permitted in certain cases by notifying the other party that the document has been filed with the Registrar.
In cases where no Canadian address for service is provided in an application or registration, a party can notify the Registrar and the other party of the name and address in Canada of a person or firm on whom documents can be served in place of serving them on that party.
In the interests of ensuring procedural fairness, if a document was not properly served but was still provided to the party being served, the Registrar could consider it to have been validly served. This change is intended to address situations where improper service could lead to consequences for the party serving the document even though it was clear that it came to the other party’s attention.
The Registrar can require parties to provide proof of service upon request, otherwise the document will be deemed not to have been served.

(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 Regulations will 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 can continue to file what is commonly referred to as “state of the register” evidence that consists of search results extracted from the Canadian Trademarks Database, either as certified copies or by way of affidavits or statutory declarations.

No substantive changes will be made 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 will 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 Regulations will 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 Regulations will provide clarity with respect to cross-examination. There is no cross-examination in a proceeding under section 45.

The Regulations will require parties to serve documents related to a cross-examination on each other. Responsibility for service will 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 a request for cross-examination or fails to attend, resulting in their evidence not being considered part of the record, the Registrar will 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 Regulations will provide that the Registrar must grant such leave if it is in the interest of justice to do so. This provision will 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 Regulations will 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 will 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: Under the Regulations, parties will file and serve their written representations sequentially rather than concurrently (as is already the case for proceedings under section 45), as this will allow the second party’s written representation to be responsive to that of the first party. Filing representations in duplicate will no longer be required. Parties will have up to two months each to prepare their written representations, rather than the current one month; the Regulations indicate how these time periods will be calculated. Finally, parties will no longer be able to request leave to file additional written representations, in view of the sequential filing; additional representations can be made orally at a hearing upon request.

Section 45: In order to align all three proceedings, the Regulations will 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. A two-month period will 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 Regulations aim to establish a prescribed time for parties to request a hearing and to align the practices in all three types of proceedings.

Under the Regulations, the Registrar will no longer notify parties that they may request a hearing, as is currently the practice for opposition and objection proceedings. Instead, all parties will 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 will not be permitted to make oral representations at a hearing. The Registrar will 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 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 interpretation needs, and the method of appearance. The Registrar will accommodate any changes to this information submitted at least one month before the date of the hearing.

(8) Extensions of time

The provisions in the current Trade-marks Regulations related to extensions of time that are being repealed will not be replaced in the new Regulations, as extensions of time are already addressed in the Act.

(9) Treatment of divisional applications in opposition

The Regulations will 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 will be advertised so that the public has the opportunity to oppose the new application. Otherwise, any ongoing opposition on the original application will be deemed to have been filed against the divisional application and all steps taken in that opposition proceeding will apply to the divisional application. However, to ensure fairness in processing the divisional application, the TMOB will reassess any previously withdrawn or rejected opposition.

(10) Opposition to Protocol applications

For the purposes of opposition, a Protocol application will 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:

A statement of opposition to a Protocol application will be required to be filed with the Registrar using an online service designated for this purpose.
To ensure that the deadlines under the Madrid Protocol are met, extensions of time requested by an opponent to file a statement of opposition will be limited to four months. Despite this limitation, the Registrar will retain discretion to extend the deadline further when warranted (e.g. following disruptions to the electronic filing system).
Similar to the treatment of domestic applications, the Registrar may remove a registration to allow an opposition to be filed in the case where a Protocol application is registered before a request for an extension of time to file a statement of opposition was considered, as long as the deadline to notify the International Bureau of a provisional refusal based on an opposition has not yet expired.
Once the International Bureau has been notified of a provisional refusal based on the filing of an opposition, the opponent will not be able to amend the statement of opposition to add a new ground of opposition. This is because the final refusal of a Protocol application can only be based on a ground of opposition that was contained in the provisional refusal.
An additional ground of opposition will be that the goods or services in the Protocol application are not within the scope of the international registration.
Once an opposition has concluded and the decision is final, the Registrar will notify the International Bureau accordingly.

(11) Proceedings under section 45 and Protocol registrations

For the purposes of proceedings under section 45, a Protocol registration will 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 will be expunged or amended accordingly.

D. Transitional provisions

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

(1) Filing dates

An application that was given a filing date prior to the coming into force of the Regulations will keep that filing date. If an application was not granted a filing date prior to the coming-into-force date, the Regulations will 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

Applications filed prior to the coming-into-force date that are not yet registered at that date will 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 will 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 Regulations provide that the fee for the first Nice class will 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 will 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 will 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 will apply.

(4) Amendments

For applications filed prior to the coming-into-force date that have not yet been advertised at that date, so long as the trademark remains substantially the same, the application can be amended to add any of the newly required statements concerning colour, standard characters, and the type of trademark for non-traditional trademarks. This will 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

There will 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 can renew at any time up to six months after the expiration date. If for any reason a renewal notice is issued late, the owner will 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 Regulations are not approved, Canada will be unable to proceed with accession to the treaties.

Benefits and costs

To assess the incremental impacts of the 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 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 will benefit Canadian businesses wishing to expand into foreign markets, who will 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 will 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 will also be benefits to the economy by making Canada a more attractive destination for foreign businesses that will find it easier to protect their trademarks in Canada with minimal incremental burden.

Trademark applicants and registrants

For users of the trademark system, the Regulations will 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 will 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 will not be required. Applicants will 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 will see additional benefits equal to $0.29 million under the Regulations.

The users of the trademark system with matters before the TMOB will face an increased cost, as they will 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 is expected that this group will 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 will 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 will 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 will only need to spend a short time verifying the information. Over 10 years, this system will 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 will pay less under the new fee regime than they do currently. There will be a corresponding loss in revenue for CIPO.

The single largest cost of the Regulations will 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 will 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 will 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 is 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 will also be incurred by trademark agents having to learn about the changes to the Trade-marks Regulations and associated practices. 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 Regulations are published, it is estimated that $0.93 million (2012 dollars) in IT expenditures will remain that are 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 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) will 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 will 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 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. Therefore, the Regulations are 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 pplication 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
Trademark applicants using the Madrid System	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 Regulations will improve the situation for all and will not impact diverse groups of women or men differently. In fact, the Regulations 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 will be lowered.

Existing data shows that currently there does not appear to be a gender disparity with respect to the propensity of small-medium 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 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 Year dollars.

The following elements of the Regulations will reduce burden on applicants:

Applicants and registrants will be allowed to take certain actions across a portfolio of trademarks using a single piece of correspondence, saving almost 1 hour of an IP agent’s time over a 10-year period for any business that has multiple trademark applications or registrations.
Clients will be allowed to take certain actions without using their appointed agents. Currently, approximately 80% of clients use an agent and will save 0.5 hours of that agent’s time for taking some routine actions (e.g. using their own clerical staff to update their address or representation instead of paying their agent to do so).
The requirement to submit evidence of a transfer will be removed in cases where the transfer request is submitted by the current applicant or owner. Approximately 15 000 transfer requests are submitted to the Office each year, and roughly half of these will save time under the proposed changes (assumed to be worth 0.5 hours of an agent’s time).
The requirement to file statements of opposition in duplicate will be removed, saving all opposition parties 0.3 hours of an agent’s time, and electronic submission of evidence will be allowed in proceedings before the TMOB, saving 2 hours of an agent’s time (2.5 in cases where reply evidence is filed).

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

Two elements of the Regulations will increase cost to businesses: requirements 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 section 45 proceeding, which will add both the administrative cost of preparing the service documents and the cost of hiring a process server.

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

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

The total savings of the Regulations 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 related to 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 Regulations, CIPO consulted selected stakeholders (i.e. IP agents and business representatives who are heavy users of the trademark system). Overall, they were largely favourable to the changes and were very pleased that Canada was acceding to the treaties. CIPO incorporated much of the feedback received in these sessions into the 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 clarity of the provisions and the need for additional guidance concerning new processes related to the Madrid System. CIPO took these comments into consideration to the extent possible in the 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 the Regulations will be taken into consideration with respect to future policy development.

On February 10, 2018, the proposed Regulations were published in the Canada Gazette, Part I, for a public comment period of 30 days. CIPO received a total of 11 submissions from IP agents, representatives from businesses, and IP associations. The feedback was similar to comments received in previous consultations on these Regulations. Stakeholders expressed general support for Canada’s accession to the three international IP treaties and for other modernization measures. Many of the submissions raised concerns over the difficulty to understand certain sections due to their highly technical nature.

CIPO also considered feedback received from stakeholders during discussions with IP professionals on office practice notices. These notices provide guidance on how CIPO examiners and officers handle specific situations, and also provide clarity on how CIPO interprets the relevant legislation. Several sessions were held with stakeholders across the country between February and April 2018 in order to share and receive feedback on these notices. While the focus of these discussions was on the practice notices, comments about the Regulations were considered as well.

After carefully considering all comments received, CIPO made additional changes to the Regulations. Specifically, at the request of a large segment of the IP agent community, a provision allowing third parties to be able to submit written communications against the registrability of a pending trademark in examination was removed. There was some concern that this provision could introduce a tactic of flooding CIPO with letters of protest in order to slow down the trademark registration process particularly at examination. In addition, it was clarified that “state of the register” evidence could be provided by affidavit or statutory declaration as well as by certified copies, as originally proposed. This matched the initial policy intent of CIPO and the change was made to clarify the requirements. The Regulations were also amended, where possible, to simplify the language in an attempt to better explain the intent of the provisions. Specifically, some sections relating to proceedings before the TMOB have been edited with a view to increase their clarity. Finally, minor amendments were made to keep technical wording consistent with what is used in the Industrial Design Regulations and planned changes to the Patent Rules.

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, which they have proposed could be mitigated by providing in the Regulations for voluntary submission by applicants of information concerning use of the trademark, which could be entered onto 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 section 45 proceedings, which have been strengthened in the Act, including making it clearer that the Registrar may commence these proceedings on its 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 them during the regulatory development process.

Regulatory cooperation

The Regulations are designed to increase regulatory coordination between Canada and its major trading partners. Canada is not harmonizing with 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 102 members of the Madrid Protocol, 47 of the Singapore Treaty, and 85 of the Nice Agreement, including the United States and many European countries. The European Union is a member of the Madrid Protocol, as well as the earlier Trademark Law Treaty on which the Singapore Treaty builds. Acceding to the treaties will increase the alignment of Canada’s Regulations with similar regulations for the registration of trademarks in all of these member countries.

Rationale

Joining the Treaties will reduce cost and complexity for users of Canada’s trademark regime, both domestic and foreign. Export-oriented Canadian businesses will have access to the international registration system provided for in the Madrid Protocol, which will allow them to apply for trademark protection in up to 102 jurisdictions with one application and one set of fees. This streamlined process will reduce the costs and administrative burden associated with filing individually in each jurisdiction where protection is sought. International clients seeking trademark protection in Canada will 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 will reduce the compliance burden for applicants, for example by simplifying the requirements to obtain a filing date. There will also be benefits to the economy by making Canada a more attractive destination for foreign businesses who will find Canada’s trademark regime to be better aligned with those of its major trading partners.

The measures relating to trademark opposition, objection and section 45 proceedings will remove inefficiencies and outdated requirements, and align the three proceedings to the extent possible. Harmonizing the procedures and codifying existing practices in the Regulations will 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 Trade-marks Act and Trade-marks Regulations must be amended to comply with the requirements set out under the treaties. The necessary amendments to the Act have already been made. However, the Government is unable to bring these legislative amendments into force and proceed with Canada’s accession to the treaties unless 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 Regulations. Stakeholders will be encouraged to participate in the development of office practices to support implementation of the Regulations. CIPO will also conduct training and education and awareness activities to help facilitate understanding of the new requirements, and will 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 Regulations will be supported by an improved modern IT system and tools that will 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 will be developed for trademark examiners, operations staff, Client Service Centre staff, and members and hearing officers of the TMOB. Each group will receive training tailored to their 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 CIPO’s 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