Trade-marks Regulations (SOR/96-195)

Regulations are current to 2017-09-14 and last amended on 2014-04-01. Previous Versions

Application for Registration

 A separate application shall be filed for the registration of each trade-mark, but a single application is sufficient where the trade-mark is used, made known or proposed to be used in association with both wares and services.

 Subject to section 34 of the Act, the date of filing of an application for the registration of a trade-mark is the date on which the following are delivered to the Registrar:

  • (a) an application setting out the following information, namely,

    • (i) the name and address of the applicant,

    • (ii) the wares or services in association with which the trade-mark is proposed to be used, or has been used or made known, and

    • (iii) in the case of a trade-mark other than a proposed trade-mark,

      • (A) the date of first use or making known of the trade-mark in Canada, or

      • (B) the name of a country in which the trade-mark has been used and information respecting the registration or application for registration in or for a country of the Union on which the right to registration is based;

  • (b) the application fee set out in item 1 of the schedule; and

  • (c) a drawing of the trade-mark, unless the trade-mark consists solely of a word or words not depicted in a special form.

  • SOR/99-292, s. 2.
  •  (1) Paragraph 25(a) applies in respect of an application to extend the statement of wares or services in respect of which a trade-mark is registered.

  • (2) The application referred to in subsection (1) shall be accompanied by the fee set out in item 3 of the schedule.

  •  (1) Where a drawing of a trade-mark is required by paragraph 30(h) of the Act, the drawing shall be in black and white, no larger than 2 3/4 inches by 2 3/4 inches or 7 cm x 7 cm, and shall not include any matter that is not part of the trade-mark, and may be on paper that satisfies the requirements of section 13.

  • (2) Where the drawing of the trade-mark on file is not suitable for reproduction in the Journal, the Registrar may require an applicant to file a new drawing.

  •  (1) Where the applicant claims a colour as a feature of the trade-mark, the colour shall be described.

  • (2) Where the description referred to in subsection (1) is not clear, the Registrar may require the applicant to file a drawing lined for colour in accordance with the following colour chart:

    Colour chart consisting of nine circles with different patterns inside representing the colours red or pink, brown, black, gray or silver, violet or purple, blue, green, yellow or gold and orange.

 The Registrar may require an applicant for the registration of a trade-mark to furnish to the Registrar, as applicable,

  • (a) a translation into English or French of any words in any other language contained in the trade-mark;

  • (b) where the trade-mark contains matter expressed in characters other than Latin characters or in numerals other than Arabic or Roman numerals, a transliteration of the matter in Latin characters and Arabic numerals; and

  • (c) a specimen of the trade-mark as used.

Amendment of Application for Registration

 Except as provided in sections 31 and 32, an application for the registration of a trade-mark may be amended either before or after the application is advertised pursuant to subsection 37(1) of the Act.

 No application for the registration of a trade-mark may be amended where the amendment would change

  • (a) the identity of the applicant, except after recognition of a transfer by the Registrar;

  • (b) the trade-mark, except in respects that do not alter its distinctive character or affect its identity;

  • (c) the date of first use or making known in Canada of the trade-mark to an earlier date, except where the evidence proves that the change is justified by the facts;

  • (d) the application from one not alleging use or making known of the trade-mark in Canada before the filing of the application to one alleging such use or making known; or

  • (e) the statement of wares or services so as to be broader than the statement of wares or services contained in the application at the time the application was filed pursuant to section 30 of the Act.

 No application for the registration of a trade-mark may be amended, after it has been advertised in the Journal, to change

  • (a) the trade-mark in any manner whatsoever;

  • (b) the date of first use or making known in Canada of the trade-mark;

  • (c) the application from one alleging use or making known to one for a proposed trade-mark;

  • (d) the application from one that does not allege that the trade-mark has been used and registered in or for a country of the Union to one that does so allege; or

  • (e) the statement of wares or services so as to be broader than the statement of wares or services contained in the application at the time of advertisement.

  • SOR/99-292, s. 3.
  •  (1) The Registrar may correct a clerical error in any instrument of record where

    • (a) the clerical error is discovered by the Registrar; or

    • (b) a request for correction is made by an applicant, registered owner or trade-mark agent of the applicant or registered owner.

  • (2) [Repealed, SOR/2003-209, s. 2]

  • SOR/2003-209, s. 2.

Advertisement of Application for Registration

 Where the Registrar is not satisfied that an application for registration of a trade-mark should be refused pursuant to subsection 37(1) of the Act, the Registrar shall advertise the particulars of the application in the Journal.

Opposition

 A person who corresponds with the Registrar in respect of an opposition proceeding shall clearly state that the correspondence relates to the opposition proceeding.

 After the Registrar has forwarded a copy of a statement of opposition to the applicant in accordance with subsection 38(5) of the Act, a party corresponding with the Registrar shall forward a copy of any correspondence in respect of the opposition, with the exception of a written argument filed pursuant to subsection 46(3), to the other party in the opposition proceeding.

  •  (1) Any statement or other material required to be served on a party in an opposition proceeding under section 38 of the Act or these Regulations may be served on the party or their trade-mark agent or representative for service

    • (a) by personal service;

    • (b) by registered mail;

    • (c) by courier; or

    • (d) in any other manner with the consent of the party or their agent.

  • (2) For the purposes of subsection (1), unless the parties are agreed otherwise, if the party being served has appointed a trade-mark agent or has named a representative for service, service shall be effected on that agent or that representative for service.

  • (3) If service is effected by registered mail, service is deemed to be effected on the later of

    • (a) the date of mailing of the statement or material, and

    • (b) the day on which the party effecting service submits to the Registrar a notice in accordance with subsection (6).

  • (4) If service is effected by courier, service is deemed to be effected on the later of

    • (a) the date of delivery of the statement or material to the courier, and

    • (b) the day on which the party effecting service submits to the Registrar a notice in accordance with subsection (6).

  • (5) If service is effected by personal service or in any other manner with the consent of the party or their agent, service is deemed to be effected on the later of

    • (a) the date of delivery of the statement or material to the person being served, and

    • (b) the day on which the party effecting service submits to the Registrar a notice in accordance with subsection (6).

  • (6) The party effecting service shall notify the Registrar of the manner of service and

    • (a) in the case of service by registered mail, the date of mailing of the statement or material;

    • (b) in the case of service by courier, the date of delivery of the statement or material to the courier; or

    • (c) in any other case, the date of delivery of the statement or material to the person being served.

  • SOR/2007-91, s. 3.
 
Date modified: