Trademarks Act (R.S.C., 1985, c. T-13)

Marginal note:Abandonment

36 If, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act, the Registrar may, after giving notice to the applicant of the default, treat the application as abandoned unless the default is remedied within the prescribed time.

Marginal note:When applications to be refused

• 37 (1) The Registrar shall refuse an application for the registration of a trademark if he is satisfied that

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

  • (b) the trademark is not registrable,

  • (c) the applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for the registration of which an application is pending, or

  • (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.

• Marginal note:Notice to applicant

  (2) The Registrar shall not refuse any application without first notifying the applicant of his objections thereto and his reasons for those objections, and giving the applicant adequate opportunity to answer those objections.

• Marginal note:Doubtful cases

  (3) Where the Registrar, by reason of a registered trademark, is in doubt whether the trademark claimed in the application is registrable, he shall, by registered letter, notify the owner of the registered trademark of the advertisement of the application.

• 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.

Marginal note:Statement of opposition

• 38 (1) Within two months after the advertisement of an application for the registration of a trademark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.

• Marginal note:Grounds

  (2) A statement of opposition may be based on any of the following grounds:

  • (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);

  • (a.1) that the application was filed in bad faith;

  • (b) that the trademark is not registrable;

  • (c) that the applicant is not the person entitled to registration of the trademark;

  • (d) that the trademark is not distinctive;

  • (e) that, at the filing date of the application in Canada, determined without taking into account subsection 34(1), 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, determined without taking into account subsection 34(1), the applicant was not entitled to use the trademark in Canada in association with those goods or services.

• Marginal note:Content

  (3) A statement of opposition shall set out

  • (a) the grounds of opposition in sufficient detail to enable the applicant to reply thereto; and

  • (b) the address of the opponent’s principal office or place of business in Canada, if any, and if the opponent has no office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm on whom service of any document in respect of the opposition may be made with the same effect as if it had been served on the opponent himself.

• Marginal note:Frivolous opposition

  (4) If the Registrar considers that the opposition does not raise a substantial issue for decision, he shall reject it and shall give notice of his decision to the opponent.

• Marginal note:Substantial issue

  (5) If the Registrar considers that the opposition raises a substantial issue for decision, he shall forward a copy of the statement of opposition to the applicant.

• 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.

• (7.1) [Repealed, 2014, c. 20, s. 343]

• (7.2) [Repealed, 2014, c. 20, s. 343]

• 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:Divisional application

• 39 (1) After having filed an application for the registration of a trademark, an applicant may limit the original application to one or more of the goods or services that were within its scope and file a divisional application for the registration of the same trademark in association with any other goods or services that were

  • (a) within the scope of the original application on its filing date, determined without taking into account subsection 34(1); and

  • (b) within the scope of the original application on the day on which the divisional application is filed, if the divisional application is filed on or after the day on which the original application is advertised under subsection 37(1).

• Marginal note:Identification

  (2) A divisional application shall indicate that it is a divisional application and shall, in the prescribed manner, identify the corresponding original application.

• Marginal note:Separate application

  (3) A divisional application is a separate application, including with respect to the payment of any fees.

• Marginal note:Filing date

  (4) A divisional application’s filing date is deemed to be the original application’s filing date.

• Marginal note:Division of divisional application

  (5) A divisional application may itself be divided under subsection (1), in which case this section applies as if that divisional application were an original application.

Registration of Trademarks

Marginal note:Registration of trademarks

40 When an application for the registration of a trademark either has not been opposed and the time for the filing of a statement of opposition has expired, or has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall register the trademark in the name of the applicant and issue a certificate of its registration or, if an appeal is taken, shall act in accordance with the final judgment given in the appeal.

Amendment of the Register

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;

  • (b) cancel the registration of the trademark;

  • (c) amend the statement of the goods or services in respect of which the trademark is registered;

  • (d) amend the particulars of the defined standard that the use of a certification mark is intended to indicate;

  • (e) enter a disclaimer that does not in any way extend the rights given by the existing registration of the trademark; or

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

• Marginal note:Conditions

  (2) An application to extend the statement of goods or services in respect of which a trademark is registered has the effect of an application for registration of the trademark in respect of the goods or services specified in the application for amendment.

• 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.

42 [Repealed, 2014, c. 20, s. 347]

Marginal note:Additional representations

43 The registered owner of any trademark shall furnish such additional representations thereof as the Registrar may by notice demand and, if he fails to comply with that notice, the Registrar may by a further notice, fix a reasonable time after which, if the representations are not furnished, he may expunge the registration of the trademark.