Trademarks Regulations (SOR/2018-227)

Transfer of Application for Registration of a Trademark

Marginal note:Fee

36 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

37 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

38 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

39 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

40 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

41 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

42 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

43 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

44 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

45 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.

Marginal note:Manner of service

• 46 (1) Service of a document in respect of an opposition proceeding must be effected

  • (a) by personal service in Canada;

  • (b) by registered mail to an address in Canada;

  • (c) by courier to an address in Canada;

  • (d) by the sending of a notice to the other party advising that the document to be served has been filed with or provided to the Registrar, if the party seeking to effect service does not have the information necessary to serve the other party in accordance with any of paragraphs (a) to (c); or

  • (e) in any manner that is agreed to by the parties.

• Marginal note:Service on trademark agent

  (2) If a party to be served appoints a trademark agent in respect of an opposition proceeding,

  • (a) that agent is deemed to replace any person or firm set out in a statement of opposition, counter statement or notice as 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 party directly; and

  • (b) service must be effected on that agent unless the parties agree otherwise.

• Marginal note:Effective date of service

  (3) Subject to subsections (4) to (7) and (10), service is effective on the day on which the document is delivered.

• Marginal note:Exception — service by registered mail

  (4) Service by registered mail is effective on the day on which the document is mailed.

• Marginal note:Exception — service by courier

  (5) Service by courier is effective on the day on which the document is provided to the courier.

• Marginal note:Exception — service by electronic means

  (6) Service by an electronic means is effective on the day on which the document is transmitted.

• Marginal note:Exception — service by sending of notice

  (7) Service by the sending of a notice under paragraph (1)(d) is effective on the day on which the notice is sent.

• Marginal note:Notice of manner and date of service

  (8) The party effecting service must notify the Registrar of the manner of service and the effective date of service.

• Marginal note:Proof of service

  (9) A party that serves a document must, on request of the Registrar, provide proof of service within one month after the date of the request. If proof of service is not provided within that month, the document is deemed not to have been served.

• Marginal note:Validity of irregular service

  (10) Service of a document other than in accordance with subsection (1) is nonetheless valid if the Registrar determines that the document has been provided to the party being served and informs the parties of that determination. The service is effective on the day on which the document was provided to the party being served.

Marginal note:Counter statement — timing

47 For the purpose of subsection 38(7) of the Act, the time is two months.

Marginal note:Amendment

• 48 (1) No amendment to a statement of opposition or counter statement may be made except with leave of the Registrar on terms that the Registrar considers to be appropriate.

• Marginal note:Interests of justice

  (2) The Registrar must grant leave under subsection (1) if it is in the interests of justice to do so.

Marginal note:Manner of submitting evidence

49 Evidence in respect of an opposition proceeding, other than evidence referred to in subsection 56(3) of these Regulations, is to be submitted to the Registrar by way of affidavit or statutory declaration. However, if the evidence consists of a document or extract from a document that is in the official custody of the Registrar, it may be submitted by way of a certified copy referred to in section 54 of the Act.

Marginal note:Timing of opponent’s evidence

• 50 (1) The opponent may submit evidence referred to in subsection 38(8) of the Act to the Registrar within a period of four months after the day on which the applicant’s service on the opponent of a copy of the counter statement is effective.

• Marginal note:Timing of service

  (2) For the purpose of subsection 38(9) of the Act, the time within which the opponent must serve that evidence on the applicant is during that four-month period.

• Marginal note:Opponent’s statement

  (3) If the opponent does not wish to submit evidence referred to in subsection 38(8) of the Act, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) of this section and, if so, they must serve it on the applicant within that period.

Marginal note:Circumstances — deemed withdrawal of opposition

51 For the purpose of subsection 38(10) of the Act, the circumstances under which the opponent’s not submitting and serving evidence referred to in subsection 38(8) of the Act or a statement that the opponent does not wish to submit evidence results in their opposition being deemed to have been withdrawn are that neither that evidence nor that statement has been submitted and served by the opponent by the end of the four-month period referred to in section 50 of these Regulations.

Marginal note:Timing of applicant’s evidence

• 52 (1) The applicant may submit evidence referred to in subsection 38(8) of the Act to the Registrar within a period of four months after the day on which the opponent’s service under section 50 of these Regulations is effective.

• Marginal note:Timing of service

  (2) For the purpose of subsection 38(9) of the Act, the time within which the applicant must serve that evidence on the opponent is during that four-month period.

• Marginal note:Statement of applicant

  (3) If the applicant does not wish to submit evidence referred to in subsection 38(8) of the Act, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) of this section and, if so, they must serve it on the opponent within that period.

Marginal note:Circumstances — deemed abandonment of application

53 For the purpose of subsection 38(11) of the Act, the circumstances under which the applicant’s not submitting and serving evidence referred to in subsection 38(8) of the Act or a statement that the applicant does not wish to submit evidence results in their application being deemed to have been abandoned are that neither that evidence nor that statement has been submitted and served by the applicant by the end of the four-month period referred to in section 52 of these Regulations.

Marginal note:Reply evidence — timing

54 Within one month after the day on which the service on the opponent under section 52 is effective, the opponent may submit to the Registrar reply evidence and, if so, they must serve it on the applicant within that one-month period.

Marginal note:Additional evidence

• 55 (1) A party may submit additional evidence with leave of the Registrar on terms that the Registrar considers to be appropriate.

• Marginal note:Interests of justice

  (2) The Registrar must grant leave under subsection (1) if it is in the interests of justice to do so.

Marginal note:Ordering of cross-examination

• 56 (1) On the application of a party made before the Registrar gives notice in accordance with subsection 57(1), the Registrar must order the cross-examination under oath or solemn affirmation, within the period specified by the Registrar, of any affiant or declarant on an affidavit or statutory declaration that has been submitted to the Registrar as evidence in the opposition proceeding.

• Marginal note:Conduct of cross-examination

  (2) The cross-examination is to be conducted as agreed to by the parties or, in the absence of an agreement, as specified by the Registrar.

• Marginal note:Transcript and undertakings

  (3) Within the period specified by the Registrar for conducting the cross-examination,

  • (a) the party that conducted the cross-examination must submit to the Registrar and serve on the other party the transcript of the cross-examination and the exhibits to the cross-examination; and

  • (b) the party that was cross-examined must submit to the Registrar and serve on the other party any information, document or material that they undertook to provide in the course of the cross-examination.

• Marginal note:Inadmissibility in absence of cross-examination

  (4) An affidavit or statutory declaration is not to be part of the evidence if the affiant or declarant declines or fails to attend for cross-examination.