Trade-marks Regulations (SOR/96-195)

Regulations are current to 2017-11-06 and last amended on 2014-04-01. Previous Versions

General

 The fees set out in the schedule are payable to the Receiver General and shall be forwarded to the Registrar.

 Except as otherwise provided in these Regulations, all documents filed with the Office of the Registrar of Trade-marks shall be on white paper that measures at least 8 inches by 11 inches, or 21 cm x 28 cm, but not more than 8 1/2 inches by 14 inches, or 22 cm x 35 cm, on one side only, with left and upper margins of at least 1 inch or 2.5 cm.

  •  (1) An application for the registration of a trade-mark shall contain the information required by section 30 of the Act, and shall be presented clearly and legibly, in the manner specified by the Registrar in the Journal and on the appropriate form published by the Registrar in the Journal, or in any other form that allows for the furnishing of the same information.

  • (2) Any document to be submitted to the Registrar relating to the registration of a trade-mark or a registered trade-mark shall be presented clearly and legibly, in the manner specified by the Registrar in the Journal and on the appropriate form published by the Registrar in the Journal, or in any other form that allows for the furnishing of the same information.

Journal

 The Registrar shall publish, on a weekly basis, the Journal, which shall include

  • (a) every advertisement made pursuant to subsection 37(1) of the Act;

  • (b) the particulars of every registration of a trade-mark made or extended pursuant to the Act;

  • (c) the particulars of the Registrar’s rulings required to be published pursuant to section 64 of the Act;

  • (d) every public notice required pursuant to subsection 9(1) of the Act; and

  • (e) every order made by the Minister pursuant to subsection 66(2) of the Act.

 Every advertisement of an application published pursuant to subsection 37(1) of the Act shall set out

  • (a) the trade-mark claimed;

  • (b) a note of any disclaimer;

  • (c) the name and address of the applicant and the representative for service, if any;

  • (d) the application number;

  • (e) the date of filing of the application and the date of priority claimed pursuant to section 34 of the Act, if any;

  • (f) a summary of the information filed by the applicant pursuant to paragraphs 30(a) to (d) and (g) of the Act;

  • (g) in the case of an application for a proposed trade-mark, a certification mark or a distinguishing guise, a note to that effect;

  • (h) where the benefit of subsection 12(2) or section 14 of the Act is claimed, a note to that effect;

  • (i) the particulars of any territorial restriction applicable pursuant to subsection 32(2) of the Act; and

  • (j) the particulars of any translation or transliteration furnished to the Registrar in accordance with paragraph 29(a) or (b).

 The particulars published in the Journal of a registration of a trade-mark made or extended pursuant to the Act shall include

  • (a) the number and date of the registration;

  • (b) the name of the registered owner;

  • (c) the application number; and

  • (d) the issue number and date of the issue of the Journal in which the application was advertised.

Eligibility for Examination

 A person is eligible to sit for the qualifying examination for trade-mark agents if the person,

  • (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 Trade-marks either on the examining staff or as a delegate of the Registrar’s powers under section 38 or 45 of the Act,

    • (ii) has worked in Canada in the area of Canadian trade-mark law and practice, including the preparation and prosecution of applications for the registration of trade-marks, for at least 24 months, or

    • (iii) has worked in the area of trade-mark law and practice, including the preparation and prosecution of applications for the registration of trade-marks, for at least 24 months, at least 12 of which were worked in Canada and the rest of which were worked in another country where the person was registered as a trade-mark agent in good standing with a trade-mark office of that country; and

  • (b) within two months after the day on which the notice referred to in subsection 20(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 20 of the schedule, and

    • (iii) furnishes the Registrar with evidence establishing that they meet the requirements set out in paragraph (a).

  • SOR/2013-232, s. 2.

Examining Board

 The members of an examining board shall be appointed by the Registrar and at least two members of the board shall be trade-mark agents nominated by the Intellectual Property Institute of Canada.

  • SOR/2003-209, s. 1.

Qualifying Examination

[SOR/2013-232, s. 3(F)]
  •  (1) The examining board shall administer a qualifying examination for trade-mark agents at least once a year.

  • (2) The Registrar shall publish on the web site of the Canadian Intellectual Property Office a notice that specifies the date of the next qualifying examination and that indicates that any person who intends to sit for the examination shall comply with the requirements set out in paragraph 18(b).

  • (3) The Registrar shall designate the place or places where the qualifying examination is to be held and shall notify, at least two weeks before the first day of the examination, every person who has met the requirements set out in section 18.

  • SOR/2013-232, s. 4.

Listing of Trade-Mark Agents

 The Registrar shall, on written request and payment of the fee set out in item 19 of the schedule, enter on the list of trade-mark agents the name of

  • (a) any resident of Canada who has passed the qualifying examination for trade-mark agents;

  • (b) [Repealed, SOR/2013-232, s. 5]

  • (c) a resident of any other country who is entitled to practise before the trade-marks office of that country; and

  • (d) any firm having the name of at least one of its members entered on the list as a trade-mark agent.

  • SOR/2013-232, s. 5.

Renewal

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

    • (a) a resident of Canada whose name is entered on the list of trade-mark agents shall, in order to maintain the resident’s name on the list, pay the fee set out in item 21 of the schedule;

    • (b) a resident of any other country whose name is entered on the list of trade-mark agents shall, in order to maintain the resident’s name on the list, file a statement signed by the agent setting out the agent’s country of residence and declaring that the agent is in good standing before the trade-mark office of that country; and

    • (c) a firm having the name of at least one of its members entered on the list of trade-mark agents shall, in order to maintain the firm’s name on the list, file a statement signed by one of its members whose name is on the list, indicating all of its members whose names are on the list.

  • (2) The Registrar shall remove from the list of trade-mark agents the name of any trade-mark agent who

    • (a) fails to comply with subsection (1); or

    • (b) no longer meets the requirements under which the name of the trade-mark agent was entered on the list unless the trade-mark agent is a person referred to in paragraph 21(a) or (c) or a firm referred to in paragraph 21(d).

  • (3) [Repealed, SOR/2013-232, s. 6]

  • SOR/2013-232, s. 6.

 If the name of a trade-mark agent has been removed from the list of trade-mark agents under subsection 22(2), it may be reinstated on the list if the trade-mark agent

  • (a) applies to the Registrar, in writing, for reinstatement within the one-year period after the date on which the name of the trade-mark agent was removed from the list; and

  • (b) either

    • (i) is a person referred to in paragraph 21(a) and pays the fees set out in items 21 and 22 of the schedule,

    • (ii) is a person referred to in paragraph 21(c) and files the statement referred to in paragraph 22(1)(b), or

    • (iii) is a firm referred to in paragraph 21(d) and files the statement referred to in paragraph 22(1)(c).

  • SOR/2013-232, s. 7.
 
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