347. Section 42 of the Act is repealed.
348. The Act is amended by adding the following after section 44:
Marginal note:Registrar may require amendment
44.1 (1) The Registrar may give notice to the registered owner of a trademark requiring the owner to furnish the Registrar, in the prescribed time and manner, with a statement of the goods or services in respect of which the trademark is registered, in which those goods or services are grouped in the manner described in subsection 30(3).
Marginal note:Amendments to register
(2) The Registrar may amend the register in accordance with the statement furnished under subsection (1).
Marginal note:Failure to furnish statement
(3) If the statement required by subsection (1) is not furnished, the Registrar shall by a further notice fix a reasonable time after which, if the statement is not furnished, the Registrar may expunge the registration of the trademark or refuse to renew it.
(4) Any question arising as to the class within which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal.
Marginal note:1994, c. 47, s. 200(1)
349. Subsections 45(1) and (2) of the Act are replaced by the following:
Marginal note:Registrar may request evidence of use
45. (1) After three years beginning on the day on which a trademark is registered, unless the Registrar sees good reason to the contrary, the Registrar shall, at the written request of any person who pays the prescribed fee — or may, on his or her own initiative — give notice to the registered owner of the trademark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to all the goods or services specified in the registration or to those that may be specified in the notice, whether the trademark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.
Marginal note:Form of evidence
(2) The Registrar shall not receive any evidence other than the affidavit or statutory declaration, but may receive representations made in the prescribed manner and within the prescribed time by the registered owner of the trademark or by the person at whose request the notice was given.
(2.1) The registered owner of the trademark shall, in the prescribed manner and within the prescribed time, serve on the person at whose request the notice was given any evidence that the registered owner submits to the Registrar. Those parties shall, in the prescribed manner and within the prescribed time, serve on each other any written representations that they submit to the Registrar.
Marginal note:Failure to serve
(2.2) The Registrar is not required to consider any evidence or written representations that was not served in accordance with subsection (2.1).
Marginal note:1992, c. 1, s. 135(1)
350. Section 46 of the Act is replaced by the following:
46. (1) Subject to any other provision of this Act, the registration of a trademark is on the register for an initial period of 10 years beginning on the day of the registration and for subsequent renewal periods of 10 years if, for each renewal, the prescribed renewal fee is paid within the prescribed period.
Marginal note:Notice to renew
(2) If the initial period or a renewal period expires and the prescribed renewal fee has not been paid, the Registrar shall send a notice to the registered owner stating that if the fee is not paid within the prescribed period, the registration will be expunged.
Marginal note:Failure to renew
(3) If the prescribed renewal fee is not paid within the prescribed period, the Registrar shall expunge the registration. The registration is deemed to have been expunged at the expiry of the initial period or the last renewal period.
(4) If the prescribed renewal fee is paid within the prescribed period, the renewal period begins at the expiry of the initial period or the last renewal period.
(5) A registered owner is not permitted to apply under section 47 for an extension of the prescribed period until that period has expired, and the Registrar is not permitted to extend the period by more than seven days.
Marginal note:Prescribed period
(6) For the purposes of this section, the prescribed period begins at least six months before the expiry of the initial period or the renewal period and ends no earlier than six months after the expiry of that period.
351. The Act is amended by adding the following after section 47:
Marginal note:Proceeding under section 45
47.1 (1) The Registrar shall grant an extension of any time limit fixed under this Act in the context of a proceeding commenced by the Registrar, on his or her own initiative, under section 45, if the extension is requested after the expiry of the time limit and within two months after its expiry.
Marginal note:One time extension
(2) No extension under subsection (1) shall be granted more than once.
352. Subsection 48(3) of the Act is replaced by the following:
Marginal note:Transfer of application
(3) The Registrar shall, subject to the regulations, record the transfer of an application for the registration of a trademark on the request of the applicant or, on receipt of evidence satisfactory to the Registrar of the transfer, on the request of a transferee of the application.
Marginal note:Transfer of trademark
(4) The Registrar shall, subject to the regulations, register the transfer of any registered trademark on the request of the registered owner or, on receipt of evidence satisfactory to the Registrar of the transfer, on the request of a transferee of the trademark.
Marginal note:Removal of recording or registration
(5) The Registrar shall remove the recording or the registration of the transfer referred to in subsection (3) or (4) on receipt of evidence satisfactory to the Registrar that the transfer should not have been recorded or registered.
353. Section 49 of the Act and the heading before it are replaced by the following:
CHANGE OF PURPOSE IN USE OF TRADEMARK
Marginal note:Change of purpose
49. If a sign or combination of signs is used by a person as a trademark for any of the purposes or in any of the manners mentioned in the definition “certification mark” or “trademark” in section 2, no application for the registration of the trademark shall be refused and no registration of the trademark shall be expunged, amended or held invalid merely on the ground that the person or a predecessor in title uses the trademark or has used it for any other of those purposes or in any other of those manners.
354. Subsection 57(1) of the Act is replaced by the following:
Marginal note:Exclusive jurisdiction of Federal Court
57. (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the trademark.
355. Section 61 of the Act is renumbered as subsection 61(1) and is amended by adding the following:
Marginal note:Judgment sent by parties
(2) A person who makes a request to the Registrar relating to a judgment or order made by the Federal Court, the Federal Court of Appeal or the Supreme Court of Canada in a proceeding to which they were a party shall, at the request of the Registrar, send a copy of that judgment or order to the Registrar.
356. Section 64 of the Act is replaced by the following:
Marginal note:Electronic form and means
64. (1) Subject to the regulations, any document, information or fee that is provided to the Registrar under this Act may be provided in any electronic form, and by any electronic means, that is specified by the Registrar.
Marginal note:Collection, storage, etc.
(2) Subject to the regulations, the Registrar may use electronic means to create, collect, receive, store, transfer, distribute, publish, certify or otherwise deal with documents or information.
(3) In this section, “electronic”, in reference to a form or means, includes optical, magnetic and other similar forms or means.
357. Section 65 of the Act is replaced by the following:
65. The Governor in Council may make regulations for carrying into effect the purposes and provisions of this Act and, in particular, may make regulations
(a) respecting the form of the register to be kept under this Act, and of the entries to be made in it;
(b) respecting applications to the Registrar and the processing of those applications;
(c) respecting the manner in which the goods or services referred to in paragraph 30(2)(a) are to be described;
(d) respecting the merger of registrations under paragraph 41(1)(f), including, for the purpose of renewal under section 46, the deemed day of registration or last renewal;
(e) respecting the recording or registration of transfers, licences, disclaimers, judgments or other documents relating to any trademark;
(f) respecting the maintenance of the list of trademark agents and the entry and removal of the names of persons and firms on the list, including the qualifications that must be met and the conditions that must be fulfilled to have a name entered on the list and to maintain the name on the list;
(g) respecting certificates of registration;
(h) respecting the procedure by and form in which an application may be made to the Minister, as defined in section 11.11, requesting the Minister to publish a statement referred to in subsection 11.12(2);
(i) respecting proceedings under sections 38 and 45, including documents relating to those proceedings;
(j) respecting the payment of fees to the Registrar and the amount of those fees;
(k) respecting the provision of documents and information to the Registrar, including the time at which they are deemed to be received by the Registrar;
(l) respecting correspondence between the Registrar and any other person;
(m) respecting the grouping of goods or services according to the classes of the Nice Classification and the numbering of those classes; and
(n) prescribing anything that by this Act is to be prescribed.
- Date modified: