Trademarks Regulations (SOR/2018-227) (as amended up to June 17, 2019), Canada, WIPO Lex

Main text(s)

English Trademarks Regulations (SOR/2018-227) (as amended up to June 17, 2019)

French Règlement sur les marques de commerce (DORS/2018-227) (tel que modifié jusqu'au 17 juin 2019)

https://laws-lois.justice.gc.ca/eng/regulations/SOR-2018-227/Fu

Trademarks Regulations

(SOR /2018-227)

(as amended up to June 17, 2019)

Registration 2018-10-30

Trademarks Regulations

P.C. 2018-1330 2018-10-29

Her Excellency the Governor General in Council, on the recommendation of the

Minister of Industry, pursuant to sections 65 , 65.1 and 65.2 of the Trademarks

Act , makes the annexed Trademarks Regulations.

S.C. 2015, c. 36, s. 67

S.C. 2014, c. 20, s. 358

S.C. 2017, c. 6, s. 75

R.S., c. T-13; S.C. 2014, c. 20, s. 318

PART 1

Rules of General Application

Interpretation

Definitions

1 The following definitions apply in these Regulations.

Act means the Trademarks Act. (Loi)

associate trademark agent means a trademark agent that is appointed by another

trademark agent under subsection 22(2) or (3). (agent de marques de commerce

associé)

International Bureau means the International Bureau of the World Intellectual

Property Organization. (Bureau international)

a b c

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;

(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;

(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;

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

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

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;

(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;

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;

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;

the application beyond the scope of

(i) that statement on the filing date of the application, determined without

taking into account section 34 of the Act or subsection 106(2) of these

Regulations,

(ii) the narrower of that statement as advertised under subsection 37(1) of the

Act and that statement as amended after that advertisement, and

(iii) in the case of a Protocol application as defined in section 96, the list of

goods or services, in respect of Canada, contained — at the time of the

amendment, if it were made — in the international registration on which the

application is based;

(d) to add an indication that it is a divisional application;

(e) to add or delete a statement referred to in paragraph 31(b) of the Act or

paragraph 31(e), (f) or (g) of these Regulations, unless the application has not

been advertised under subsection 37(1) of the Act and the trademark remains

substantially the same; or

(f) after the application is advertised under subsection 37(1) of the Act, to add or

delete a statement referred to in paragraph 31(h) of these Regulations.

Exceptions to exceptions

(3) Despite subsection (2), an amendment referred to in that subsection may be

made in accordance with section 107, 111, 114 or 117.

SOR/2019-116, s. 1.

Transfer of Application for Registration of a Trademark

Fee

36 A person that requests the recording under subsection 48(3) of the Act of the

transfer of an application for the registration of a trademark must pay the fee set out

in item 8 of the schedule to these Regulations.

Required information

37 The Registrar must not record the transfer of an application for the registration of

a trademark under subsection 48(3) of the Act unless the Registrar has been

provided with the transferee’s name and postal address.

Effect of transfer — separate applications

38 If the transfer to a person of an application for the registration of a trademark is,

under subsection 48(3) of the Act or section 146 of these Regulations, recorded in

respect of at least one but not all of the goods or services specified in the initial

application,

(a) that person is deemed to be the applicant in respect of a separate application;

(b) the separate application is deemed to have the same filing date as that initial

application; and

to the initial application is deemed to have been taken in relation to that separate

application.

Divisional Application

Manner of identifying corresponding original application

39 For the purpose of subsection 39(2) of the Act, the corresponding original

application must be identified in a divisional application by means of its application

number, if known.

Steps deemed taken

40 Any action taken in respect of the corresponding original application, on or before

the day on which the divisional application is filed, is deemed to be an action taken in

respect of the divisional application, except

(a) an amendment of the statement of the goods or services contained in the

original application; and

(b) the payment of the applicable fee set out in item 7 of the schedule to these

Regulations.

SOR/2019-116, s. 2.

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;

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;

(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.

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;

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;

(d) by the sending of a notice to the other party advising that the document to be

served has been filed with or submitted to the Registrar, if the party seeking to

effect service does not have the information necessary to serve the other party in

accordance with any of paragraphs (a) to (c); or

(e) in any manner that is agreed to by the parties.

Service on trademark agent

(2) Despite section 70, if a party to be served appoints a trademark agent that

resides in Canada in respect of a proceeding under section 45 of the Act, service

must be effected on that agent unless the parties agree otherwise.

Effective date of service

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

the document is delivered.

Exception — service by registered mail

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

mailed.

Exception — service by courier

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

the courier.

Exception — service by electronic means

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

transmitted.

Exception — service by sending of notice

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

on which the notice is sent.

Notice of manner and date of service

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

the effective date of service.

Proof of service

(9) A party that serves a document must, on request of the Registrar, provide proof

of service within one month after the date of the request. If proof of service is not

provided within that month, the document is deemed not to have been served.

Validity of irregular service

(10) Service of a document other than in accordance with subsection (1) is

nonetheless valid if the Registrar determines that the document has been provided to

the party being served and informs the parties of that determination. The service is

effective on the day on which the document was provided to the party being served.

Evidence — timing

72 For the purpose of subsection 45(2.1) of the Act, the time within which the

registered owner of the trademark must serve their evidence on the person at whose

request the notice was given is the three-month period referred to in subsection 45

(1) of the Act.

Written representations

73 (1) After the registered owner has furnished an affidavit or statutory declaration to

the Registrar in response to a notice given under subsection 45(1) of the Act, the

Registrar must give the parties notice that they may submit written representations to

the Registrar.

Timing if notice given at Registrar’s initiative

(2) For the purpose of subsection 45(2) of the Act, if the notice referred to in

subsection 45(1) of the Act was given on the Registrar’s own initiative, the time

within which the registered owner may submit written representations to the

Registrar is two months after the date of the notice given under subsection (1) of this

section.

Statement of registered owner

(3) If the registered owner does not wish to submit written representations in respect

of a notice referred to in subsection 45(1) of the Act that was given on the Registrar’s

own initiative, they may submit a statement to that effect to the Registrar within the

two-month period referred to in subsection (2) of this section.

Timing if notice given on request

(4) For the purpose of subsections 45(2) and (2.1) of the Act, if the notice referred to

in subsection 45(1) of the Act was given at the request of a person, the time within

which that person may submit written representations to the Registrar and must

serve those representations on the registered owner is two months after the date of

the notice given under subsection (1) of this section.

Statement of person requesting notice

(5) If that person does not wish to submit written representations, they may submit a

statement to that effect to the Registrar within the two-month period referred to in

subsection (4) and, if so, they must serve it on the registered owner within that

period.

Timing of registered owner’s written representations

(6) For the purpose of subsections 45(2) and (2.1) of the Act, if the notice referred to

in subsection 45(1) of the Act was given at the request of a person, the time within

which the registered owner may submit written representations to the Registrar and

must serve those representations on that person is

(a) in the case that a service referred to in subsection (4) or (5) of this section, as

the case may be, is effective within the two-month period referred to in that

subsection (4), two months after the day on which that service is effective; and

(b) in any other case, two months after the end of the two-month period referred

to in that subsection (4).

Statement of registered owner

(7) If the registered owner does not wish to submit written representations in respect

of a notice referred to in subsection (6), they may submit a statement to that effect to

the Registrar within the two-month period determined under subsection (6) for their

submission of written representations and, if so, they must serve it on the person

requesting the notice within that period.

Request for hearing

74 (1) Every party that wishes to make representations to the Registrar at a hearing

must file with the Registrar a request that indicates

(a) whether the party intends to make representations in English or French and

whether they will require simultaneous interpretation if another party makes

representations in the other official language; and

(b) whether the party wishes to make representations in person, by telephone, by

video conference or by another means of communication offered by the Registrar

and that sets out any information necessary to permit the use of the chosen

means of communication.

Period

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

(a) if the notice referred to in subsection 45(1) of the Act was given on the

Registrar’s own initiative, one month after the day on which the registered owner

submits to the Registrar written representations or a statement that they do not

wish to make written representations or, if no such submission is made within the

two-month period referred to in subsection 73(2) of these Regulations, one month

after the end of that two-month period; and

(b) if the notice referred to in subsection 45(1) of the Act was given at the request

of a person, one month after the day on which the registered owner’s service of

written representations or of a statement that they do not wish to make written

representations is effective or, if no such service is effective within the two-month

period determined under 73(6) of these Regulations for their submission of

written representations, one month after the end of that two-month period.

When representations may be made

(3) A party may make representations at the hearing only if they file a request in

accordance with this section.

Changes

(4) If a party, at least one month before the date of the hearing, notifies the Registrar

of changes to be made in respect of any of the information provided under

subsection (1), the Registrar must modify the administrative arrangements for the

hearing accordingly.

Renewal of Registration

Fee

75 For the purpose of section 46 of the Act, the renewal fee to be paid is that set out

in item 14 of the schedule to these Regulations.

Period

76 For the purpose of section 46 of the Act, the period within which the renewal fee

is to be paid

(a) begins on the day that is six months before the end of the initial period or the

renewal period, as the case may be, and

(b) ends at the later of

(i) the end of the six-month period that begins after the end of that initial or

renewal period, and

(ii) if a notice is sent under subsection 46(2) of the Act, the end of the two-

month period that begins after the date of that notice.

Deemed date — merged registrations

77 For the purpose of a renewal under section 46 of the Act, the deemed day of

registration in respect of a registration of a trademark that results from the merger of

registrations under paragraph 41(1)(f) of the Act is the day that is 10 years before the

earliest day, after the day of the merger, on which the initial period or the renewal

period, as the case may be, in respect of any of the registrations being merged

would have expired, had the merger not occurred.

Objection Proceeding Under Section 11.13 of Act

Fee

78 For the purpose of subsection 11.13(1) of the Act, the fee to be paid for filing a

statement of objection is that set out in item 15 of the schedule to these Regulations.

Correspondence

79 A person that corresponds with the Registrar in respect of an objection

proceeding must clearly indicate that the correspondence relates to that proceeding.

Forwarding copies of documents

80 A party to an objection proceeding that, on a given day after a statement of

objection has been filed with the Registrar under subsection 11.13(1) of the Act,

provides to the Registrar a document, other than a document that they are otherwise

required to serve on another party, that relates to that proceeding must, on that day,

forward a copy of it to the other party.

Manner of service

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

(a) by personal service in Canada;

(b) by registered mail to an address in Canada;

(d) by the sending of a notice to the other party advising that the document to be

served has been filed with or submitted to the Registrar, if the party seeking to

effect service does not have the information necessary to serve the other party in

accordance with any of paragraphs (a) to (c); or

(e) in any manner that is agreed to by the parties.

Service on trademark agent

(2) If a party to be served appoints a trademark agent that resides in Canada in

respect of an objection proceeding,

(a) that agent is deemed, in respect of any party that has been served with notice

of the appointment, to replace any person or firm set out in a statement by the

Minister or a statement of objection as a person on whom or a firm on which

service of any document may be made with the same effect as if it had been

served on the party directly; and

(b) service must be effected on that agent unless the parties agree otherwise.

Effective date of service

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

the document is delivered.

Exception — service by registered mail

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

mailed.

Exception — service by courier

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

the courier.

Exception — service by electronic means

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

transmitted.

Exception — service by sending of notice

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

on which the notice is sent.

Notice of manner and date of service

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

the effective date of service.

Proof of service

(9) A party that serves a document must, on request of the Registrar, provide proof

of service within one month after the date of the request. If proof of service is not

provided within that month, the document is deemed not to have been served.

Validity of irregular service

(10) Service of a document other than in accordance with subsection (1) is

nonetheless valid if the Registrar determines that the document has been provided to

the party being served and informs the parties of that determination. The service is

effective on the day on which the document was provided to the party being served.

Amendment

82 (1) No amendment to a statement of objection or counter statement may be made

except with leave of the Registrar on terms that the Registrar considers to be

appropriate.

Interests of justice

(2) The Registrar must grant leave under subsection (1) if it is in the interests of

justice to do so.

Manner of submitting evidence

83 Evidence in respect of an objection proceeding, other than evidence referred to in

subsection 91(3) of these Regulations, is to be submitted to the Registrar by way of

affidavit or statutory declaration. However, if the evidence consists of a document or

extract from a document that is in the official custody of the Registrar, it may be

submitted by way of a certified copy referred to in section 54 of the Act.

Timing of objector’s evidence

84 (1) The objector may submit evidence referred to in subsection 11.13(5) of the Act

to the Registrar within a period of four months after the day on which the responsible

authority’s service on the objector of a copy of the counter statement is effective.

Timing of service

(2) For the purpose of subsection 11.13(5.1) of the Act, the time within which the

objector must serve that evidence on the responsible authority is during that four-

month period.

Objector’s statement

(3) If the objector does not wish to submit evidence, they may submit a statement to

that effect to the Registrar within the four-month period referred to in subsection (1)

and, if so, they must serve it on the responsible authority within that period.

Circumstances — deemed withdrawal of objection

85 For the purpose of subsection 11.13(6) of the Act, the circumstances under which

the objector’s not submitting and serving evidence or a statement referred to in that

subsection results in their objection being deemed to have been withdrawn are that

neither that evidence nor that statement has been submitted and served by the

objector by the end of the four-month period referred to in section 84 of these

Regulations.

Timing of responsible authority’s evidence

86 (1) The responsible authority may submit evidence referred to in subsection 11.13

(5) of the Act to the Registrar within a period of four months after the day on which

the objector’s service under section 84 of these Regulations is effective.

Timing of service

(2) For the purpose of subsection 11.13(5.1) of the Act, the time within which the

responsible authority must serve that evidence on the objector is during that four-

month period.

Statement of responsible authority

(3) If the responsible authority does not wish to submit evidence, they may submit a

statement to that effect to the Registrar within the four-month period referred to in

subsection (1) and, if so, they must serve it on the objector within that period.

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

87 For the purpose of paragraph 11.13(5)(a) of the Act, the circumstances under

which the responsible authority’s not submitting evidence or a statement that they do

not wish to submit evidence results in the loss of the opportunity to submit evidence

and to make representations to the Registrar are that neither that evidence nor that

statement has been submitted and served by the responsible authority by the end of

the four-month period referred to in section 86 of these Regulations.

Circumstances — indication or translation not entered on list

88 For the purpose of subsection 11.13(6.1) of the Act, the circumstances under

which the responsible authority’s not submitting and serving evidence or a statement

that they do not wish to submit evidence results in the indication or the translation not

being entered on the list are that neither that evidence nor that statement has been

submitted and served by the responsible authority by the end of the four-month

period referred to in section 86 of these Regulations.

Reply evidence — timing

89 Within one month after the day on which the service on the objector under section

86 is effective, the objector may submit to the Registrar reply evidence and, if so,

they must serve it on the responsible authority within that one-month period.

Additional evidence

90 (1) A party may submit additional evidence with leave of the Registrar on terms

that the Registrar considers to be appropriate.

Interests of justice

(2) The Registrar must grant leave under subsection (1) if it is in the interests of

justice to do so.

Ordering of cross-examination

91 (1) On the application of a party made before the Registrar gives notice in

accordance with subsection 92(1), the Registrar must order the cross-examination

under oath or solemn affirmation, within the period specified by the Registrar, of any

affiant or declarant on an affidavit or statutory declaration that has been submitted to

the Registrar as evidence in the objection proceeding.

Conduct of cross-examination

(2) The cross-examination is to be conducted as agreed to by the parties or, in the

absence of an agreement, as specified by the Registrar.

Transcript and undertakings

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

(a) the party that conducted the cross-examination must submit to the Registrar

and serve on the other party the transcript of the cross-examination and exhibits

to the cross-examination; and

(b) the party that was cross-examined must submit to the Registrar and serve on

the other party any information, document or material that they undertook to

provide in the course of the cross-examination.

Inadmissibility in absence of cross-examination

(4) An affidavit or statutory declaration is not to be part of the evidence if an affiant or

declarant declines or fails to attend for cross-examination.

Written representations

92 (1) After all evidence has been filed, the Registrar must give the parties notice

that they may submit written representations to the Registrar.

Timing of objector’s written representations

(2) The objector may submit written representations to the Registrar within a period

of two months after the date of that notice.

Timing of service

(3) For the purpose of subsection 11.13(5.1) of the Act, the time within which the

objector must serve their written representations on the responsible authority is

during that two-month period.

Statement of objector

(4) If the objector does not wish to submit written representations, they may submit a

statement to that effect to the Registrar within the two-month period referred to in

subsection (2) and, if so, they must serve it on the responsible authority within that

period.

Timing of responsible authority’s written representations

(5) The responsible authority may submit written representations to the Registrar

within the following period:

(a) if service referred to in subsection (3) or (4), as the case may be, is effective

within the two-month period referred to in that subsection, two months after the

day on which that service is effective; and

(b) in any other case, two months after the end of the two-month period referred

to in subsection (2).

Timing of service

(6) For the purpose of subsection 11.13(5.1) of the Act, the time within which the

responsible authority must serve their written representations on the objector is

during the two-month period determined under subsection (5) of this section for their

submission of written representations.

Statement of responsible authority

(7) If the responsible authority does not wish to submit written representations, they

may submit a statement to that effect to the Registrar within the two-month period

determined under subsection (5) for their submission of written representations and,

if so, they must serve it on the objector within that period.

Request for hearing

93 (1) Within one month after the day on which the responsible authority’s service on

the objector of written representations or of a statement that the responsible authority

does not wish to make written representations is effective — or, if no such service is

effective within the two-month period determined under subsection 92(5) for their

submission of written representations, within one month after the end of that two-

month period — a party that wishes to make representations to the Registrar at a

hearing must file with the Registrar a request that indicates

(a) whether they intend to make representations in English or French and

whether they will require simultaneous interpretation if the other party makes

representations in the other official language; and

(b) whether they wish to make representations in person, by telephone, by video

conference or by another means of communication offered by the Registrar, and

that sets out any information necessary to permit the use of the chosen means of

communication.

When representations may be made

(2) A party may make representations at the hearing only if they file a request in

accordance with subsection (1).

Changes

(3) If a party, at least one month before the date of the hearing, notifies the Registrar

of changes to be made in respect of any of the information provided under

subsection (1), the Registrar must modify the administrative arrangements for the

hearing accordingly.

Copies of Documents

Fee for certified copies

94 (1) A person that requests a certified copy of a document that is in the Registrar’s

possession must pay the fee set out in item 16 or 17 of the schedule, as applicable.

Exception

(2) Subsection (1) does not apply in respect of a certified copy that is transmitted

under section 60 of the Act or rule 318 of the Federal Courts Rules, including as

modified by rule 350 of those Rules.

Fee for non-certified copies

95 A person that requests a non-certified copy of a document that is in the

Registrar’s possession must pay the fee set out in item 18 or 19 of the schedule, as

applicable.

PART 2

Implementation of Madrid Protocol

General

Interpretation

96 The following definitions apply in this Part.

basic application means an application for the registration of a trademark that has

been filed under subsection 30(1) of the Act and that constitutes the basis for an

application for international registration, but does not include a Protocol application.

(demande de base)

basic registration means a registration of a trademark that is on the register and

that constitutes the basis for an application for international registration, but does not

include a Protocol registration. (enregistrement de base)

Common Regulations means the Common Regulations under the Madrid

Agreement Concerning the International Registration of Marks and the Protocol

Relating to that Agreement, as modified from time to time. (Règlement d’exécution

commun)

contracting party means any state or intergovernmental organization that is a party

to the Protocol. (partie contractante)

date of international registration means the date borne by an international

registration under Rule 15 of the Common Regulations. (date de l’enregistrement

international)

date of notification of territorial extension means the day on which the

International Bureau notifies the Registrar of a request made under Article 3ter(1) or

(2) of the Protocol. (date de la notification d’extension territoriale)

holder means the person in whose name an international registration is recorded in

the International Register. (titulaire)

opposition period means the two-month period referred to in subsection 38(1) of

the Act. (délai d’opposition)

Protocol means the Protocol Relating to the Madrid Agreement Concerning the

International Registration of Marks, adopted at Madrid on June 27, 1989, including

any amendments, modifications and revisions made from time to time to which

Canada is a party. (Protocole)

Protocol application means an application referred to in subsection 103(1) or (2) or

a divisional application referred to in subsection 124(1). (demande prévue au

Protocole)

Protocol registration means the registration of a trademark under subsection 132

(1). (enregistrement prévu au Protocole)

Non-application of section 66 of Act

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

except

(a) the two-month period fixed by subsections 117(2) and (3) of these

Regulations;

(b) the maximum four-month extension fixed by section 125 of these Regulations;

and

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;

(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

international registration, notifying the International Bureau to the following effect:

(i) if, in respect of all or any of the goods or services listed in the international

registration, the basic application is withdrawn, abandoned or refused or the

basic registration is cancelled or expunged before the end of five years after

its date of international registration, and

(ii) if a proceeding that began before the end of that five-year period leads, in

respect of all or any of the goods or services listed in the international

registration, to the withdrawal, abandonment or refusal of the basic application

or to the cancellation or expungement of the basic registration after that

period.

Change in Ownership of International Registration

Request for recording

101 (1) A transferee of an international registration may file with the Registrar a

request for the recording of a change in ownership of the international registration for

presentation to the International Bureau if they meet the following requirements:

(a) the transferee is a national of or is domiciled in Canada or has a real and

effective industrial or commercial establishment in Canada; and

(b) the transferee has been unable to obtain, on a request for the recording of a

change in ownership of the international registration, the signature of the holder

of the international registration or of the holder’s representative recorded in

accordance with Rule 3(4)(a) of the Common Regulations.

Manner of filing

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

(a) using the online service that is designated by the Registrar as being accepted

for that purpose; or

(b) completing the form issued by the International Bureau and providing it to the

Registrar by an electronic means specified by the Registrar.

Accompanying documents

(3) The request must be accompanied by

(a) evidence of the transfer; and

(b) a statement to the effect that the transferee made efforts to obtain the

signature of the holder of the international registration or that of their

representative recorded in accordance with Rule 3(4)(a) of the Common

Regulations and that their efforts were not successful.

Transmission to International Bureau

102 The Registrar must transmit to the International Bureau a request for the

recording of a change in ownership that is filed in accordance with section 101 if the

Registrar considers the evidence of the transfer to be satisfactory.

Territorial Extension to Canada

Protocol Application

Request under Article 3ter(1) of the Protocol

103 (1) On the registration of a trademark in the International Register on the basis

of an application that contains a request made under Article 3ter(1) of the Protocol

for the extension to Canada of the protection of a trademark resulting from its

international registration, an application is deemed to have been filed under

subsection 30(1) of the Act by the holder of the international registration for the

registration of the trademark and in respect of the same goods or services that are

listed in that request.

Request under Article 3ter(2) of the Protocol

(2) On the recording in the International Register of a request made under Article

3ter(2) of the Protocol for the extension to Canada of the protection of a trademark

resulting from its international registration, an application is deemed to have been

filed under subsection 30(1) of the Act by the holder of the international registration

for the registration of the trademark and in respect of the same goods or services

that are listed in that request.

Deemed application for certification mark

(3) An application referred to in subsection (1) or (2) is deemed to be an application

for the registration of a certification mark if the international registration relates to a

collective mark, a certification mark or a guarantee mark.

Non-Registrable Trademarks

Goods or services outside scope of international registration

104 A trademark that is the subject of a Protocol application is not registrable if the

goods or services specified in the Protocol application are not within the scope of the

international registration.

Filing Date

Non-application of sections 33 and 34 of Act

105 (1) Sections 33 and 34 of the Act do not apply in respect of a Protocol

application.

References to subsection 34(1) of the Act

(2) In respect of the filing date of a Protocol application, the reference in subsections

12(3) and 32(1) and paragraphs 38(2)(e) and (f) of the Act to “subsection 34(1)” is to

be read as “subsection 106(2) of the Trademark Regulations”.

SOR/2019-116, s. 3.

Date of international registration

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

(a) if the Protocol application results from a request made under Article 3ter(1) of

the Protocol, the date of international registration of the corresponding

international registration; and

(b) if the Protocol application results from a request made under Article 3ter(2) of

the Protocol, the date borne by the subsequent designation under Rule 24(6) of

the Common Regulations.

Exception — priority

(2) Despite subsection (1), in the case that, before the filing date of a Protocol

application as determined under that subsection, the applicant of the Protocol

application or the applicant’s predecessor in title had applied, in or for any country of

the Union other than Canada, for the registration of the same or substantially the

same trademark in association with the same kind of goods or services, the filing

date of the application in or for the other country is deemed to be the filing date of the

Protocol application and the applicant is entitled to priority in Canada accordingly

despite any intervening use in Canada or making known in Canada or any

intervening application or registration, if

(a) the international registration on which the Protocol application is based

contains a declaration claiming the priority of the application in or for the other

country, along with an indication of the name of the country or office where the

filing was made and of the filing date;

(b) the filing date of the Protocol application as determined under subsection (1)

is within a period of six months after the date on which the earliest application

was filed in or for any country of the Union for the registration of the same or

substantially the same trademark in association with the same kind of goods or

services; and

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

or services from a list of a particular class of the Nice Classification and gives rise

to a resulting new list for that particular class of the Nice Classification, the

Registrar must determine, with respect to each good or service in that resulting

new list for that particular class, whether the following requirements are met:

(i) the good or service is within the scope of the Protocol application on its

filing date, determined without taking into account subsection 106(2), and on

the date of the recording in the International Register,

(ii) the good or service is within the scope of the Protocol application as

advertised, if the date of the recording in the International Register is on or

after the day on which the application is advertised under subsection 37(1) of

the Act,

(iii) the good or service is within the scope of the Protocol application as

amended, if the Protocol application is amended on or after the day on which

the application is advertised under subsection 37(1) of the Act and if the date

of the recording in the International Register is on or after the day of the

amendment, and

(iv) the good or service is described in ordinary commercial terms and in a

manner that identifies a specific good or service.

Recording resulting in new list

(2) In the case that the recording results in a deletion of one or more of the goods or

services from a list of a particular class of the Nice Classification and gives rise to a

resulting new list for that particular class of the Nice Classification,

(a) if the Registrar determines that the requirements set out in paragraph (1)(c)

are not met for any good or service in that resulting list for that particular class,

the Registrar must, in accordance with Rule 27(5) of the Common Regulations,

send to the International Bureau a declaration to the effect that the limitation has

no effect in Canada in respect of all of the goods and services in that class; and

(b) if the Registrar determines that the requirements set out in paragraph (1)(c)

are met for all of the goods or services in that resulting list for that particular

class, the Protocol application is deemed to be amended accordingly.

SOR/2019-116, s. 4.

Complete renunciation

108 If, in respect of an international registration on which a Protocol application is

based, the International Bureau notifies the Registrar of the recording in the

International Register of a renunciation in respect of Canada for all of the goods or

services that are listed in the international registration, the Protocol application is

deemed to be withdrawn.

Complete cancellation

109 If, in respect of an international registration on which a Protocol application is

based, the International Bureau notifies the Registrar of the recording in the

International Register of a cancellation of the international registration for all of the

goods or services that are listed in the international registration, the Protocol

application is deemed to be withdrawn.

Partial cancellation

110 If, in respect of an international registration on which a Protocol application is

based, the International Bureau notifies the Registrar of the recording in the

International Register of a cancellation of the international registration for at least one

but not all of the goods or services that are listed in the international registration, the

Protocol application is deemed to be amended or withdrawn accordingly.

Change of name or address

111 If, in respect of an international registration on which a Protocol application is

based, the International Bureau notifies the Registrar of the recording in the

International Register of a change of name or address of the holder, the Protocol

application is deemed to be amended accordingly.

Effective date of amendment or withdrawal

112 An amendment or withdrawal of a Protocol application under any of sections 107

to 111 is deemed to have taken effect on the date of the limitation, renunciation,

cancellation or change, as the case may be, as recorded in the International

Non-renewal of international registration

113 If the international registration on which a Protocol application is based is not

renewed in respect of Canada and the International Bureau so notifies the Registrar,

the Protocol application is deemed to have been withdrawn at the expiry of the

international registration in respect of Canada.

Effect of Correction of International Registration on Protocol Application

Deemed amendment to application

114 If the International Bureau notifies the Registrar of a correction of an

international registration affecting a Protocol application, the Protocol application is

deemed to be amended accordingly.

Amendment to non-advertised application

115 If a Protocol application has not been advertised under subsection 37(1) of the

Act before the date of notification of a correction of an international registration on

which the Protocol application is based and if the Registrar determines that the

deemed amendment to the Protocol application is substantive in respect of at least

one of the goods or services specified in the amended Protocol application and is not

limited to narrowing the scope of the statement of goods or services, then a

reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph 132(1)(d)

(i) of these Regulations to “date of notification of territorial extension” is to be read as

“day on which the International Bureau sent to the Registrar the notification of a

correction of an international registration on which the Protocol application is based”

in respect of that Protocol application.

Amendment to advertised application — all goods or services

116 If a Protocol application has been advertised under subsection 37(1) of the Act

before the date of notification of a correction of an international registration on which

the Protocol application is based and if the Registrar determines that the deemed

amendment to the Protocol application is substantive in respect of all of the goods or

services specified in the amended Protocol application and is not limited to narrowing

the scope of the statement of goods or services,

(a) the application is deemed to never have been advertised; and

(b) a reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph

132(1)(d)(i) of these Regulations to “date of notification of territorial extension” is

to be read as “day on which the International Bureau sent to the Registrar the

notification of a correction of an international registration on which the Protocol

application is based” in respect of that Protocol application.

Amendment to advertised application — some goods or services

117 (1) If a Protocol application has been advertised under subsection 37(1) of the

Act before the date of notification of a correction of an international registration on

which the Protocol application is based and if the Registrar determines that the

deemed amendment to the Protocol application is substantive in respect of at least

one but not all of the goods or services specified in the amended Protocol application

and is not limited to narrowing the scope of the statement of goods or services, then

the Registrar must, by notice, invite the applicant to elect one of the following

options:

(a) that the Protocol application be amended to delete those goods or services; or

(b) that the Protocol application be deemed to never have been advertised.

Deletion of goods or services

(2) If the applicant elects the option referred to in paragraph (1)(a) or does not make

an election within two months after the date of the notice, the Protocol application is

deemed to be amended to delete those goods or services.

Deemed non-advertisement of application

(3) If the applicant selects the option referred to in paragraph (1)(b) within two

months after the date of the notice

(a) the Protocol application is deemed never to have been advertised; and

(b) a reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph

132(1)(d)(i) to “date of notification of territorial extension” is to be read as “day on

which the International Bureau sent to the Registrar the notification of a correction

of an international registration on which the Protocol application is based” in

respect of that Protocol application.

Effective date of amendment

118 An amendment to a Protocol application under section 114 or subsection 117(2)

is deemed to have taken effect on the later of the filing date of the Protocol

application and the day on which the error was made that gave rise to the correction

of the international registration.

Abandonment

Statement of confirmation of total provisional refusal

119 If the Registrar treats a Protocol application as abandoned under section 36 of

the Act, the Registrar must send a statement of confirmation of total provisional

refusal to the International Bureau.

Examination

Notification of provisional refusal

120 The Registrar must not refuse a Protocol application under subsection 37(1) of

the Act without first sending to the International Bureau, before the end of 18 months

after the date of notification of territorial extension, a notification of provisional refusal

stating the Registrar’s objections.

Statement of confirmation of total provisional refusal

121 If the Registrar refuses a Protocol application under subsection 37(1) of the Act,

the Registrar must send a statement of confirmation of total provisional refusal to the

International Bureau.

Divisional Application

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

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

application.

Filing of request for division

123 (1) The applicant in respect of a Protocol application may limit the original

Protocol application to one or more of the goods or services that were within its

scope and file with the Registrar for presentation to the International Bureau a

request for the division, in respect of Canada, of the international registration on

which the original Protocol application is based for any other goods or services that

were within the scope of

(a) the original Protocol application on its filing date, determined without taking

into account subsection 106(2);

(b) the original Protocol application on the day on which the request is filed, if the

request is filed on or after the day on which the Protocol application is advertised

under subsection 37(1) of the Act; and

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;

classes of the Nice Classification; and

(d) the amount of the fee being paid to the International Bureau and the method

of payment, or instructions to debit the required amount to an account opened

with the International Bureau, and the name of the person effecting the payment

or giving the instructions.

Sending of request to International Bureau

(4) The Registrar must send to the International Bureau any request that is filed in

accordance with subsections (1) to (3).

SOR/2019-116, s. 5.

Deemed divisional application

124 (1) If, following receipt of a request under section 123, the International Bureau

notifies the Registrar of the creation of a divisional international registration in

respect of Canada, the applicant is deemed to have filed a divisional application for

the registration of the same trademark as in the divisional international registration

and in respect of the same goods or services that are listed in the divisional

international registration in respect of Canada.

Division of divisional application

(2) The divisional application may itself be divided under subsection (1) and section

123, in which case those provisions apply as if that divisional application were an

original Protocol application.

Opposition

Limitation of extension

125 In respect of a Protocol application, the Registrar is not permitted, on application

made to the Registrar, to extend, under section 47 of the Act, the two-month period

referred to in subsection 38(1) of the Act by more than four months.

Filing of statement of opposition

126 A statement of opposition under section 38 of the Act in respect of a Protocol

application must be in English or French and be filed by using the online service that

is designated by the Registrar as being accepted for that purpose.

Notification of provisional refusal

127 If, in respect of a Protocol application, a statement of opposition is filed, the

Registrar must send to the International Bureau a notification of provisional refusal.

No new ground of opposition

128 If the Registrar sends to the International Bureau a notification of provisional

refusal based on an opposition, the statement of opposition may not be amended to

add a new ground of opposition.

Notice of opposition period

129 If, in respect of a Protocol application, it is likely that the opposition period will

extend beyond the end of 18 months after the date of notification of territorial

extension, the Registrar must so inform the International Bureau.

Statement of confirmation of total provisional refusal

130 The Registrar must send a statement of confirmation of total provisional refusal

in respect of a Protocol application to the International Bureau if

(a) the Protocol application is deemed to have been abandoned under subsection

38(11) of the Act; or

(b) the Registrar refuses the Protocol application under subsection 38(12) of the

Act with respect to all of the goods or services specified in it and either the period

for filing an appeal has ended and no appeal has been filed or, if an appeal has

been taken, the final judgment has been decided in favour of the opponent.

Registration of Trademarks

Non-application of section 40 of Act

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

Obligations of Registrar

132 (1) In respect of a trademark that is the subject of a Protocol application, the

Registrar must register the trademark in the name of the applicant, issue a certificate

of its registration and send a statement to the International Bureau that protection is

granted to the trademark if

(a) the Protocol application has not been opposed and the opposition period has

ended;

(b) the Protocol application has been opposed and the opposition has been

decided in favour of the applicant and either the period for filing an appeal has

ended and no appeal has been filed or, if an appeal has been taken, the final

judgment has been decided in favour of the applicant;

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,

(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

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

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

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