Marginal note:Applications based on registration abroad
31 (1) An applicant whose right to registration of a trade-mark is based on a registration of the trade-mark in another country of the Union shall, before the date of advertisement of his application in accordance with section 37, furnish a copy of the registration certified by the office in which it was made, together with a translation thereof into English or French if it is in any other language, and such other evidence as the Registrar may require to establish fully his right to registration under this Act.
Marginal note:Evidence required in certain cases
(2) An applicant whose trade-mark has been duly registered in his country of origin and who claims that the trade-mark is registrable under paragraph 14(1)(b) shall furnish such evidence as the Registrar may require by way of affidavit or statutory declaration establishing the circumstances on which he relies, including the length of time during which the trade-mark has been used in any country.
- R.S., c. T-10, s. 30.
Marginal note:Further information in certain cases
32 (1) An applicant who claims that his trade-mark is registrable under subsection 12(2) or section 13 shall furnish the Registrar with evidence by way of affidavit or statutory declaration establishing the extent to which and the time during which the trade-mark has been used in Canada and with any other evidence that the Registrar may require in support of the claim.
Marginal note:Registration to be restricted
(2) The Registrar shall, having regard to the evidence adduced, restrict the registration to the goods or services in association with which the trade-mark is shown to have been so used as to have become distinctive and to the defined territorial area in Canada in which the trade-mark is shown to have become distinctive.
- R.S., 1985, c. T-13, s. 32;
- 2014, c. 32, ss. 53, 56(F).
Marginal note:Applications by trade unions, etc.
33 Every trade union or commercial association that applies for the registration of a trade-mark may be required to furnish satisfactory evidence that its existence is not contrary to the laws of the country in which its headquarters are situated.
- R.S., c. T-10, s. 32.
Marginal note:Date of application abroad deemed date of application in Canada
34 (1) When an application for the registration of a trade-mark has been made in or for any country of the Union other than Canada and an application is subsequently made in Canada for the registration for use in association with the same kind of goods or services of the same or substantially the same trade-mark by the same applicant or the applicant’s successor in title, the date of filing of the application in or for the other country is deemed to be the date of filing of the application in Canada, and the applicant is entitled to priority in Canada accordingly notwithstanding any intervening use in Canada or making known in Canada or any intervening application or registration if
(a) the application in Canada, including or accompanied by a declaration setting out the date on which and the country of the Union in or for which the earliest application was filed for the registration of the same or substantially the same trade-mark for use in association with the same kind of goods or services, is filed within a period of six months after that date, which period shall not be extended;
(b) the applicant or, if the applicant is a transferee, the applicant’s predecessor in title by whom any earlier application was filed in or for any country of the Union was at the date of the application a citizen or national of or domiciled in that country or had therein a real and effective industrial or commercial establishment; and
(c) the applicant furnishes, in accordance with any request under subsections (2) and (3), evidence necessary to establish fully the applicant’s right to priority.
Marginal note:Evidence requests
(2) The Registrar may request the evidence before the day on which the application is allowed pursuant to section 39.
Marginal note:How and when evidence must be furnished
(3) The Registrar may specify in the request the manner in which the evidence must be furnished and the period within which it must be furnished.
- R.S., 1985, c. T-13, s. 34;
- 1992, c. 1, s. 133;
- 1993, c. 15, s. 65;
- 1994, c. 47, s. 199;
- 2014, c. 32, s. 53.
35 The Registrar may require an applicant for registration of a trade-mark to disclaim the right to the exclusive use apart from the trade-mark of such portion of the trade-mark as is not independently registrable, but the disclaimer does not prejudice or affect the applicant’s rights then existing or thereafter arising in the disclaimed matter, nor does the disclaimer prejudice or affect the applicant’s right to registration on a subsequent application if the disclaimed matter has then become distinctive of the applicant’s goods or services.
- R.S., 1985, c. T-13, s. 35;
- 2014, c. 32, s. 53.
36 Where, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act or any Act relating to trade-marks in force prior to July 1, 1954, the Registrar may, after giving notice to the applicant of the default, treat the application as abandoned unless the default is remedied within the time specified in the notice.
- R.S., c. T-10, s. 35.
Marginal note:When applications to be refused
(a) the application does not conform to the requirements of section 30,
(b) the trade-mark is not registrable, or
(c) the applicant is not the person entitled to registration of the trade-mark because it is confusing with another trade-mark for the registration of which an application is pending,
and where the Registrar is not so satisfied, he shall cause the application to be advertised in the manner prescribed.
Marginal note:Notice to applicant
(2) The Registrar shall not refuse any application without first notifying the applicant of his objections thereto and his reasons for those objections, and giving the applicant adequate opportunity to answer those objections.
Marginal note:Doubtful cases
(3) Where the Registrar, by reason of a registered trade-mark, is in doubt whether the trade-mark claimed in the application is registrable, he shall, by registered letter, notify the owner of the registered trade-mark of the advertisement of the application.
- R.S., c. T-10, s. 36.
Marginal note:Statement of opposition
38 (1) Within two months after the advertisement of an application for the registration of a trade-mark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.
(2) A statement of opposition may be based on any of the following grounds:
(3) A statement of opposition shall set out
(a) the grounds of opposition in sufficient detail to enable the applicant to reply thereto; and
(b) the address of the opponent’s principal office or place of business in Canada, if any, and if the opponent has no office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm on whom service of any document in respect of the opposition may be made with the same effect as if it had been served on the opponent himself.
Marginal note:Frivolous opposition
(4) If the Registrar considers that the opposition does not raise a substantial issue for decision, he shall reject it and shall give notice of his decision to the opponent.
Marginal note:Substantial issue
(5) If the Registrar considers that the opposition raises a substantial issue for decision, he shall forward a copy of the statement of opposition to the applicant.
Marginal note:Counter statement
(6) The applicant shall file a counter statement with the Registrar and serve a copy on the opponent in the prescribed manner and within the prescribed time after a copy of the statement of opposition has been served on the applicant.
Marginal note:Evidence and hearing
(7) Both the opponent and the applicant shall be given an opportunity, in the prescribed manner, to submit evidence and to make representations to the Registrar unless
Marginal note:Withdrawal of opposition
(7.1) The opposition shall be deemed to have been withdrawn if, in the prescribed circumstances, the opponent does not submit either evidence under subsection (7) or a statement that the opponent does not wish to submit evidence.
Marginal note:Abandonment of application
(7.2) The application shall be deemed to have been abandoned if the applicant does not file and serve a counter statement within the time referred to in subsection (6) or if, in the prescribed circumstances, the applicant does not submit either evidence under subsection (7) or a statement that the applicant does not wish to submit evidence.
(8) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application or reject the opposition and notify the parties of the decision and the reasons for the decision.
- R.S., 1985, c. T-13, s. 38;
- 1992, c. 1, s. 134;
- 1993, c. 15, s. 66.
- Date modified: