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Trademarks Regulations (SOR/2018-227)

Regulations are current to 2021-11-17 and last amended on 2021-06-28. Previous Versions

PART 1Rules of General Application (continued)

Trademark Agents (continued)

Marginal note:Persons authorized to act

  •  (1) Subject to subsection (4), in any business before the Office of the Registrar of Trademarks, a person may be represented by another person only if that other person is a trademark agent.

  • Marginal note:Cases involving trademark agents

    (2) Subject to subsections (3) and (4), in any business before the Office of the Registrar of Trademarks in respect of which a person has appointed a trademark agent

    • (a) the person must not represent themselves; and

    • (b) no one other than the trademark agent, or an associate trademark agent appointed by that trademark agent, is permitted to represent that person.

  • Marginal note:Exceptions

    (3) A person may represent themselves for the purpose of

    • (a) filing an application for the registration of a trademark, an application for international registration referred to in sections 98 to 100 or a transformation application referred to in section 147;

    • (b) paying a fee;

    • (c) giving notice under section 23;

    • (d) renewing the registration of a trademark under section 46 of the Act; or

    • (e) making a request or providing evidence under section 48 of the Act.

  • Marginal note:Exceptions

    (4) With respect to any business referred to in paragraphs (3)(a) to (e), a person may be represented by another person authorized by them, whether or not that other person is a trademark agent or an individual whose name is included in the Register of Trademark Agents under section 20 of the College of Patent Agents and Trademark Agents Regulations.

Prohibited Marks

Marginal note:Fee

 Any person or entity that requests the giving of public notice under paragraph 9(1)(n) or (n.1) of the Act must pay the fee set out in item 6 of the schedule to these Regulations.

Application for Registration of Trademark

Marginal note:Scope

 A separate application must be filed for the registration of each trademark.

Marginal note:Language

 An application for the registration of a trademark, with the exception of the trademark itself, must be in English or French.

Marginal note:Manner of describing goods or services

 The statement of the goods or services referred to in paragraph 30(2)(a) of the Act must describe each of those goods or services in a manner that identifies a specific good or service.

Marginal note:Representation or description

 The following requirements are prescribed for the purpose of paragraph 30(2)(c) of the Act:

  • (a) a representation may contain more than one view of the trademark only if the multiple views are necessary for the trademark to be clearly defined;

  • (b) a two-dimensional representation must not exceed 8 cm by 8 cm;

  • (c) if the trademark consists in whole or in part of a three-dimensional shape, a representation must be a two-dimensional graphic or photographic representation;

  • (d) if colour is claimed as a feature of the trademark or if the trademark consists exclusively of a single colour or a combination of colours without delineated contours, a visual representation must be in colour;

  • (e) if colour is not claimed as a feature of the trademark or if the trademark does not consist exclusively of a single colour or a combination of colours without delineated contours, a visual representation must be in black and white;

  • (f) if the trademark consists in whole or in part of a sound, a representation must include a recording of the sound in a format that is designated by the Registrar as being accepted for that purpose; and

  • (g) a description must be clear and concise.

Marginal note:Contents

 The following information and statements are prescribed for the purpose of paragraph 30(2)(d) of the Act:

  • (a) the applicant’s name and postal address;

  • (b) if the trademark consists in whole or in part of characters other than Latin characters, a transliteration of those other characters into Latin characters following the phonetics of the language of the application;

  • (c) if the trademark consists in whole or in part of numerals other than Arabic or Roman numerals, a transliteration of those other numerals into Arabic numerals;

  • (d) a translation into English or French of any words in any other language that are contained in the trademark;

  • (e) if the trademark consists in whole or in part of a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture or the positioning of a sign, a statement to that effect;

  • (f) if colour is claimed as a feature of the trademark, a statement to that effect, along with the name of each colour claimed and an indication of the principal parts of the trademark that are in that colour;

  • (g) if the trademark consists exclusively of a single colour or a combination of colours without delineated contours, a statement to that effect, along with the name of each colour; and

  • (h) if the trademark is a certification mark, a statement to that effect.

Marginal note:Fee

  •  (1) A person that files an application for the registration of a trademark, other than a Protocol application as defined in section 96 or a divisional application, must pay the applicable fee set out in item 7 of the schedule.

  • Marginal note:Fee for divisional application

    (2) A person that files a divisional application that does not stem from a Protocol application as defined in section 96 must pay the applicable fee set out in item 7 of the schedule for

    • (a) in the case that the corresponding original application is itself a divisional application,

      • (i) if the filed divisional application stems from a series of divisional applications, the original application from which the series stems, and

      • (ii) if the filed divisional application does not stem from a series of divisional applications, the original application from which the corresponding original application stems; and

    • (b) in any other case, the corresponding original application.

  • Marginal note:Deemed payment of fees

    (3) If all or part of the applicable fee set out in item 7 of the schedule is paid in respect of an application, the applicable fee referred to in that item, or part of it, as the case may be, is deemed to have been paid for

    • (a) when that application is itself a divisional application,

      • (i) in the case that it stems from a series of divisional applications, the original application from which stems the series and every divisional application that stems from that original application, and

      • (ii) in the case that it does not stem from a series of divisional applications, its corresponding original application and every divisional application that stems from it; and

    • (b) when that application is not itself a divisional application, every divisional application that stems from it.

  • Marginal note:Fees for filing date

    (4) For the purpose of paragraph 33(1)(f) of the Act, the prescribed fees are those fees set out in subparagraphs 7(a)(i) and (b)(i) of the schedule to these Regulations.

Request for Priority

Marginal note:Time of filing

  •  (1) For the purpose of paragraph 34(1)(b) of the Act, a request for priority must be filed within six months after the filing date of the application on which the request is based.

  • Marginal note:Time and manner of withdrawal

    (2) For the purpose of subsection 34(4) of the Act, a request for priority may be withdrawn by filing a request to that effect before the application is advertised under subsection 37(1) of the Act.

Default in Prosecution of Application

Marginal note:Time for remedying default

 For the purpose of section 36 of the Act, the time within which a default in the prosecution of an application may be remedied is two months after the date of the notice of the default.

Amendment of Application for Registration of a Trademark

Marginal note:Before registration

  •  (1) An application for the registration of a trademark may be amended before the trademark is registered.

  • Marginal note:Exceptions

    (2) Despite subsection (1), the application must not be amended

    • (a) to change the identity of the applicant, unless the change results from the recording of a transfer of the application by the Registrar or, in the case of an application other than a Protocol application as defined in section 96, to correct an error in the applicant’s identification;

    • (b) to change the representation or description of the trademark, unless the application has not been advertised under subsection 37(1) of the Act and the trademark remains substantially the same;

    • (c) to broaden the scope of the statement of the goods or services contained in the application beyond the scope of

      • (i) that statement on the filing date of the application, determined without taking into account section 34 of the Act or subsection 106(2) of these Regulations,

      • (ii) the narrower of that statement as advertised under subsection 37(1) of the Act and that statement as amended after that advertisement, and

      • (iii) in the case of a Protocol application as defined in section 96, the list of goods or services, in respect of Canada, contained — at the time of the amendment, if it were made — in the international registration on which the application is based;

    • (d) to add an indication that it is a divisional application;

    • (e) to add or delete a statement referred to in paragraph 31(b) of the Act or paragraph 31(e), (f) or (g) of these Regulations, unless the application has not been advertised under subsection 37(1) of the Act and the trademark remains substantially the same; or

    • (f) after the application is advertised under subsection 37(1) of the Act, to add or delete a statement referred to in paragraph 31(h) of these Regulations.

  • Marginal note:Exceptions to exceptions

    (3) Despite subsection (2), an amendment referred to in that subsection may be made in accordance with section 107, 111, 114 or 117.

Transfer of Application for Registration of a Trademark

Marginal note:Fee

 A person that requests the recording under subsection 48(3) of the Act of the transfer of an application for the registration of a trademark must pay the fee set out in item 8 of the schedule to these Regulations.

Marginal note:Required information

 The Registrar must not record the transfer of an application for the registration of a trademark under subsection 48(3) of the Act unless the Registrar has been provided with the transferee’s name and postal address.

Marginal note:Effect of transfer — separate applications

 If the transfer to a person of an application for the registration of a trademark is, under subsection 48(3) of the Act or section 146 of these Regulations, recorded in respect of at least one but not all of the goods or services specified in the initial application,

  • (a) that person is deemed to be the applicant in respect of a separate application;

  • (b) the separate application is deemed to have the same filing date as that initial application; and

  • (c) any action taken, before the day on which the transfer is recorded, in relation to the initial application is deemed to have been taken in relation to that separate application.

Divisional Application

Marginal note:Manner of identifying corresponding original application

 For the purpose of subsection 39(2) of the Act, the corresponding original application must be identified in a divisional application by means of its application number, if known.

Marginal note:Steps deemed taken

 Any action taken in respect of the corresponding original application, on or before the day on which the divisional application is filed, is deemed to be an action taken in respect of the divisional application, except

  • (a) an amendment of the statement of the goods or services contained in the original application; and

  • (b) the payment of the applicable fee set out in item 7 of the schedule to these Regulations.

Advertisement

Marginal note:Manner

 For the purpose of subsection 37(1) of the Act, an application is advertised by publishing on the website of the Canadian Intellectual Property Office

  • (a) the application number;

  • (b) the name and postal address of the applicant and of the applicant’s trademark agent, if any;

  • (c) any representation or description of the trademark contained in the application;

  • (d) if the trademark is in standard characters, a note to that effect;

  • (e) if the trademark is a certification mark, a note to that effect;

  • (f) the filing date of the application;

  • (g) if the applicant filed a request for priority in accordance with paragraph 34(1)(b) of the Act, the filing date and country or office of filing of the application on which the request for priority is based;

  • (h) the statement of the goods or services in association with which the trademark is used or proposed to be used, grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification;

  • (i) any disclaimer made under section 35 of the Act; and

  • (j) if the Registrar has restricted the registration to a defined territorial area in Canada under subsection 32(2) of the Act, a note to that effect.

Opposition Proceeding Under Section 38 of Act

Marginal note:Fee

 For the purpose of subsection 38(1) of the Act, the fee to be paid for filing a statement of opposition is that set out in item 9 of the schedule to these Regulations.

Marginal note:Correspondence

 A person that corresponds with the Registrar in respect of an opposition proceeding must clearly indicate that the correspondence relates to that proceeding.

Marginal note:Forwarding copies of documents

 A party to an opposition proceeding that, on a given day, after the Registrar has forwarded a copy of the statement of opposition to the applicant under subsection 38(5) of the Act, provides to the Registrar a document, other than a document that they are otherwise required to serve, that relates to that proceeding must, on that day, forward a copy of it to the other party.

Marginal note:Service on representative of applicant

 Unless they have appointed a trademark agent, an applicant may in their counter statement under subsection 38(7) of the Act set out, or may file with the Registrar and serve on the opponent a separate notice setting out, the name and address in Canada of a person on whom or a firm on which service of any document in respect of the opposition may be made with the same effect as if it had been served on the applicant.

 
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