Trade-marks Regulations (SOR/96-195)

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

 A statement of opposition shall be filed with the Registrar in duplicate.

 Within two months after a copy of a statement of opposition has been forwarded to an applicant under subsection 38(5) of the Act, the applicant shall file a counter statement with the Registrar and serve a copy of the counter statement on the opponent.

  • SOR/2007-91, s. 4.

 No amendment to a statement of opposition or counter statement shall be allowed except with leave of the Registrar and on such terms as the Registrar determines to be appropriate.

  •  (1) Within four months after service of the counter statement, the opponent shall

    • (a) submit to the Registrar, by way of affidavit or statutory declaration, or in accordance with section 54 of the Act, the evidence that the opponent is relying on to support the opposition, or a statement that the opponent does not wish to submit evidence; and

    • (b) serve the applicant, where evidence is submitted, with a copy of the evidence or, where the opponent does not wish to submit evidence, with a copy of a statement that the opponent does not wish to submit evidence.

  • (2) Where the opponent does not submit either the evidence under subsection 38(7) of the Act or a statement that the opponent does not wish to submit evidence, within the time set out in subsection (1), the opposition shall be deemed to have been withdrawn for the purposes of subsection 38(7.1) of the Act.

  • SOR/2007-91, s. 5.
  •  (1) Within four months after service of the opponent’s evidence or statement referred to in paragraph 41(1)(a), the applicant shall

    • (a) submit to the Registrar by way of affidavit or statutory declaration, or in accordance with section 54 of the Act, the evidence that the applicant is relying on to support the application, or a statement that the applicant does not wish to submit evidence; and

    • (b) serve the opponent, where evidence is submitted, with a copy of the evidence or, where the applicant does not wish to submit evidence, with a copy of a statement that the applicant does not wish to submit evidence.

  • (2) Where the applicant does not submit either the evidence under subsection 38(7) of the Act or a statement that the applicant does not wish to submit evidence, within the time set out in subsection (1), the application shall be deemed to have been abandoned for the purposes of subsection 38(7.2) of the Act.

  • SOR/2007-91, s. 6.

 Within one month after service on the opponent of the applicant’s evidence referred to in section 42, the opponent

  • (a) may submit to the Registrar, by way of affidavit or statutory declaration, or in accordance with section 54 of the Act, evidence strictly confined to matters in reply; and

  • (b) shall, where submitting the evidence referred to in paragraph (a), serve the applicant with a copy of the evidence.

  •  (1) No further evidence shall be adduced by any party except with leave of the Registrar and on such terms as the Registrar determines to be appropriate.

  • (2) Before giving notice in accordance with subsection 46(1), the Registrar may, on the application of any party and on such terms as the Registrar may direct, order the cross-examination under oath of any affiant or declarant on an affidavit or declaration that has been filed with the Registrar and is being relied on as evidence in the opposition.

  • (3) A cross-examination ordered pursuant to subsection (2) shall be held at a time, date and place and before a person agreed to by the parties or, in the absence of an agreement, as designated by the Registrar.

  • (4) A transcript of the cross-examination and exhibits to the cross-examination, and any documents or material undertaken to be submitted by the party whose affiant or declarant is being cross-examined, shall be filed with the Registrar by the party conducting the cross-examination, within the time fixed by the Registrar.

  • (5) If an affiant or declarant declines or fails to attend for cross-examination, the affidavit or declaration shall not be part of the evidence and shall be returned to the party who filed it.

  •  (1) Every exhibit to an affidavit or declaration filed in an opposition shall be filed with the affidavit or declaration.

  • (2) Subject to subsection (3), all materials filed in an opposition shall be open to public inspection at the Office of the Registrar of Trade-marks.

  • (3) Written arguments shall not be open to public inspection until after they have been forwarded by the Registrar in accordance with subsection 46(3).

  • (4) A copy, photograph or sample of an exhibit referred to in subsection (1) shall be served on the other party unless the Registrar directs otherwise.

  •  (1) Not less than 14 days after completion of the evidence, the Registrar shall give the parties written notice that they may, within one month after the date of the notice, file written arguments with the Registrar.

  • (2) No written argument shall be filed after the expiration of the period of one month referred to in subsection (1), except with leave of the Registrar.

  • (3) Written arguments, if any, shall be filed in duplicate and, after the written arguments of both parties have been filed or the period for filing written arguments has expired, the Registrar shall forward

    • (a) a copy of any written argument filed to every other party; and

    • (b) a notice to each party that a hearing may be requested.

  • (4) A party wishing to be heard by the Registrar shall give the Registrar written notice within one month after the date of the Registrar’s notice referred to in paragraph (3)(b) and, on receipt of a notice from the party, the Registrar shall send the parties a written notice setting out the time, date and location of the hearing.

 Where in an opposition proceeding any extension of time is granted to a party, the Registrar may thereafter grant a reasonable extension of time to the other party for the taking of any subsequent step.

Transfer

 The Registrar shall recognize a transfer of an application for registration of a trade-mark on receipt of a written request for recognition together with

  • (a) evidence of the transfer; and

  • (b) the information required by paragraph 30(g) of the Act in the case of a first application.

  •  (1) Where, as a result of a transfer of a trade-mark that is the subject of an application for registration, the trade-mark becomes the property of one person for use in association with some of the wares or services specified in the application and of another person for use in association with other such wares or services, and the Registrar recognizes the transfer, each person shall file an amendment of that application restricted to those wares and services for use in respect of which the person owns the trade-mark.

  • (2) Each amendment referred to in subsection (1) is a continuation of the application for the purpose of preserving the benefit of the date of filing of the application, but shall otherwise be treated in subsequent proceedings as a separate application.

 Where, as a result of a transfer, a registered trade-mark becomes the property of one person for use in association with some of the wares or services specified in the registration, and of another person for use in association with other such wares or services, and the transfer is registered by the Registrar, each person

  • (a) for the purposes of the Act, is deemed to be a separate registered owner of the trade-mark for use in association with the wares and services in respect of which the person has acquired or retained ownership of the trade-mark; and

  • (b) for the purposes of sections 43 to 46 of the Act, is deemed to have a separate registration of the trade-mark.

Register

 A summary of an application for registration referred to in paragraph 26(2)(b) of the Act shall include the following information, where applicable:

  • (a) the name and address of the registered owner at the time of registration of the trade-mark;

  • (b) the trade-mark and any disclaimer with respect to that trade-mark;

  • (c) the wares and services in respect of which registration of the trade-mark has been requested and, in the case of a proposed trade-mark, in respect of which the declaration of use of the trade-mark in Canada required by subsection 40(2) of the Act has been filed;

  • (d) the number of the application for registration;

  • (e) the date of filing of the application and, where priority is claimed, the date of the priority filing of the application;

  • (f) the date or dates of first use of the trade-mark in Canada;

  • (g) the date or dates of first making known of the trade-mark in Canada; and

  • (h) the country of origin of the applicant or the applicant’s predecessor in title and the name of a country other than Canada in which the trade-mark has been used.

 
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