Marginal note:1994, c. 47, s. 199

• 340. (1) Subsection 34(1) of the Act is replaced by the following:

  Marginal note:Date of application abroad deemed date of application in Canada

  • 34. (1) Despite subsection 33(1), when an applicant files an application for the registration of a trademark in Canada after the applicant or the applicant’s predecessor in title has 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 application in Canada 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 filing date of the application in Canada 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;

    • (b) the applicant files a request for priority in the prescribed time and manner and informs the Registrar of the filing date and country or office of filing of the application on which the request is based;

    • (c) the applicant, at the filing date of the application in Canada, is a citizen or national of or domiciled in a country of the Union or has a real and effective industrial or commercial establishment in a country of the Union; and

    • (d) the applicant furnishes, in accordance with any request under subsections (2) and (3), evidence necessary to fully establish the applicant’s right to priority.

• (2) Subsection 34(2) is replaced by the following:

  • Marginal note:Evidence requests

    (2) The Registrar may request the evidence before the day on which the trademark is registered under section 40.

• (3) Section 34 of the Act is amended by adding the following after subsection (3):

  • Marginal note:Withdrawal of request

    (4) An applicant may, in the prescribed time and manner, withdraw a request for priority.

  • Marginal note:Extension

    (5) An applicant is not permitted to apply under section 47 for an extension of the six-month period referred to in paragraph (1)(a) until that period has ended, and the Registrar is not permitted to extend the period by more than seven days.

341. Section 36 of the Act is replaced by the following:

• 342. (1) Paragraph 37(1)(a) of the Act is replaced by the following:

  • (a) the application does not conform to the requirements of subsection 30(2);

• (2) Subsection 37(1) of the Act is amended by striking out “or” at the end of paragraph (b), by adding “or” at the end of paragraph (c) and by replacing the portion after paragraph (c) with the following:

  • (d) the trademark is not distinctive.

  If the Registrar is not so satisfied, the Registrar shall cause the application to be advertised in the prescribed manner.

• (3) Section 37 of the Act is amended by adding the following after subsection (3):

  • Marginal note:Withdrawal of advertisement

    (4) If, after the application has been advertised but before the trademark is registered, the Registrar is satisfied that the application should not have been advertised or was incorrectly advertised and the Registrar considers it reasonable to do so, the Registrar may withdraw the advertisement. If the Registrar withdraws the advertisement, the application is deemed never to have been advertised.

• 343. (1) Paragraph 38(2)(a) of the Act is replaced by the following:

  • (a) that the application does not conform to the requirements of subsection 30(2), without taking into account if it meets the requirement in subsection 30(3);

• (2) Subsection 38(2) of the Act is amended by striking out “or” at the end of paragraph (c) and by adding the following after paragraph (d):

  • (e) that, at the filing date of the application in Canada, the applicant was not using and did not propose to use the trademark in Canada in association with the goods or services specified in the application; or

  • (f) that, at the filing date of the application in Canada, the applicant was not entitled to use the trademark in Canada in association with those goods or services.

• Marginal note:1993, c. 15, s. 66(2)

  (3) Subsections 38(6) to (8) of the Act are replaced by the following:

  • Marginal note:Power to strike

    (6) At the applicant’s request, the Registrar may  —  at any time before the day on which the applicant files a counter statement  —  strike all or part of the statement of opposition if the statement or part of it

    • (a) is not based on any of the grounds set out in subsection (2); or

    • (b) does not set out a ground of opposition in sufficient detail to enable the applicant to reply to it.

  • Marginal note:Counter statement

    (7) 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 forwarded to the applicant. The counter statement need only state that the applicant intends to respond to the opposition.

  • Marginal note:Evidence and hearing

    (8) Both the opponent and the applicant shall be given an opportunity, in the prescribed manner and within the prescribed time, to submit evidence and to make representations to the Registrar unless

    • (a) the opposition is withdrawn or deemed under subsection (10) to have been withdrawn; or

    • (b) the application is abandoned or deemed under subsection (11) to have been abandoned.

  • Marginal note:Service

    (9) The opponent and the applicant shall, in the prescribed manner and within the prescribed time, serve on each other any evidence and written representations that they submit to the Registrar.

  • Marginal note:Deemed withdrawal of opposition

    (10) The opposition is deemed to have been withdrawn if, in the prescribed circumstances, the opponent does not submit and serve either evidence under subsection (8) or a statement that the opponent does not wish to submit evidence.

  • Marginal note:Deemed abandonment of application

    (11) The application is deemed to have been abandoned if the applicant does not file and serve a counter statement within the time referred to in subsection (7) or if, in the prescribed circumstances, the applicant does not submit and serve either evidence under subsection (8) or a statement that the applicant does not wish to submit evidence.

  • Marginal note:Decision

    (12) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application, reject the opposition, or refuse the application with respect to one or more of the goods or services specified in it and reject the opposition with respect to the others. He or she shall notify the parties of the decision and the reasons for it.

Marginal note:1993, c. 15, s. 67

344. Section 39 of the Act is replaced by the following:

Marginal note:1993, c. 15, s. 68, c. 44, ss. 231(2) and (3); 1999, c. 31, s. 210(F)

345. Section 40 of the Act is replaced by the following:

• 346. (1) The portion of subsection 41(1) of the Act before paragraph (b) is replaced by the following:

  Marginal note:Amendments to register

  • 41. (1) The Registrar may, on application by the registered owner of a trademark made in the prescribed manner and on payment of the prescribed fee, make any of the following amendments to the register:

    • (a) correct any error or enter any change in the name, address or description of the registered owner;

• (2) Subsection 41(1) of the Act is amended by striking out “or” at the end of paragraph (d), by adding “or” at the end of paragraph (e) and by adding the following after paragraph (e):

  • (f) subject to the regulations, merge registrations of the trademark that stem, under section 39, from the same original application.

• (3) Section 41 of the Act is amended by adding the following after subsection (2):

  • Marginal note:Obvious error

    (3) The Registrar may, within six months after an entry in the register is made, correct any error in the entry that is obvious from the documents relating to the registered trademark in question that are, at the time that the entry is made, on file in the Registrar’s office.

  • Marginal note:Removal of registration

    (4) The Registrar may, within three months after the registration of a trademark, remove the registration from the register if the Registrar registered the trademark without considering a previously filed request for an extension of time to file a statement of opposition.