Trademarks Regulations (SOR/2018-227)

Marginal note:Circumstances — deemed withdrawal of objection

85 For the purpose of subsection 11.13(6) of the Act, the circumstances under which the objector’s not submitting and serving evidence or a statement referred to in that subsection results in their objection being deemed to have been withdrawn are that neither that evidence nor that statement has been submitted and served by the objector by the end of the four-month period referred to in section 84 of these Regulations.

Marginal note:Timing of responsible authority’s evidence

• 86 (1) The responsible authority may submit evidence referred to in subsection 11.13(5) of the Act to the Registrar within a period of four months after the day on which the objector’s service under section 84 of these Regulations is effective.

• Marginal note:Timing of service

  (2) For the purpose of subsection 11.13(5.1) of the Act, the time within which the responsible authority must serve that evidence on the objector is during that four-month period.

• Marginal note:Statement of responsible authority

  (3) If the responsible authority does not wish to submit evidence, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) and, if so, they must serve it on the objector within that period.

Marginal note:Non-application of subsection 11.13(5) of Act — circumstances

87 For the purpose of paragraph 11.13(5)(a) of the Act, the circumstances under which the responsible authority’s not submitting evidence or a statement that they do not wish to submit evidence results in the loss of the opportunity to submit evidence and to make representations to the Registrar are that neither that evidence nor that statement has been submitted and served by the responsible authority by the end of the four-month period referred to in section 86 of these Regulations.

Marginal note:Circumstances — indication or translation not entered on list

88 For the purpose of subsection 11.13(6.1) of the Act, the circumstances under which the responsible authority’s not submitting and serving evidence or a statement that they do not wish to submit evidence results in the indication or the translation not being entered on the list are that neither that evidence nor that statement has been submitted and served by the responsible authority by the end of the four-month period referred to in section 86 of these Regulations.

Marginal note:Reply evidence — timing

89 Within one month after the day on which the service on the objector under section 86 is effective, the objector may submit to the Registrar reply evidence and, if so, they must serve it on the responsible authority within that one-month period.

Marginal note:Additional evidence

• 90 (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

• 91 (1) On the application of a party made before the Registrar gives notice in accordance with subsection 92(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 objection 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 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 an affiant or declarant declines or fails to attend for cross-examination.

Marginal note:Written representations

• 92 (1) After all evidence has been filed, the Registrar must give the parties notice that they may submit written representations to the Registrar.

• Marginal note:Timing of objector’s written representations

  (2) The objector may submit written representations to the Registrar within a period of two months after the date of that notice.

• Marginal note:Timing of service

  (3) For the purpose of subsection 11.13(5.1) of the Act, the time within which the objector must serve their written representations on the responsible authority is during that two-month period.

• Marginal note:Statement of objector

  (4) If the objector does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period referred to in subsection (2) and, if so, they must serve it on the responsible authority within that period.

• Marginal note:Timing of responsible authority’s written representations

  (5) The responsible authority may submit written representations to the Registrar within the following period:

  • (a) if service referred to in subsection (3) or (4), as the case may be, is effective within the two-month period referred to in that subsection, two months after the day on which that service is effective; and

  • (b) in any other case, two months after the end of the two-month period referred to in subsection (2).

• Marginal note:Timing of service

  (6) For the purpose of subsection 11.13(5.1) of the Act, the time within which the responsible authority must serve their written representations on the objector is during the two-month period determined under subsection (5) of this section for their submission of written representations.

• Marginal note:Statement of responsible authority

  (7) If the responsible authority does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period determined under subsection (5) for their submission of written representations and, if so, they must serve it on the objector within that period.

Marginal note:Request for hearing

• 93 (1) Within one month after the day on which the responsible authority’s service on the objector of written representations or of a statement that the responsible authority does not wish to make written representations is effective — or, if no such service is effective within the two-month period determined under subsection 92(5) for their submission of written representations, within one month after the end of that two-month period — a party that wishes to make representations to the Registrar at a hearing must file with the Registrar a request that indicates

  • (a) whether they intend to make representations in English or French and whether they will require simultaneous interpretation if the other party makes representations in the other official language; and

  • (b) whether they wish to make representations in person, by telephone, by video conference or by another means of communication offered by the Registrar, and that sets out any information necessary to permit the use of the chosen means of communication.

• Marginal note:When representations may be made

  (2) A party may make representations at the hearing only if they file a request in accordance with subsection (1).

• Marginal note:Changes

  (3) If a party, at least one month before the date of the hearing, notifies the Registrar of changes to be made in respect of any of the information provided under subsection (1), the Registrar must modify the administrative arrangements for the hearing accordingly.

Copies of Documents

Marginal note:Fee for certified copies

• 94 (1) A person that requests a certified copy of a document that is in the Registrar’s possession must pay the fee set out in item 16 or 17 of the schedule, as applicable.

• Marginal note:Exception

  (2) Subsection (1) does not apply in respect of a certified copy that is transmitted under section 60 of the Act or rule 318 of the Federal Courts Rules, including as modified by rule 350 of those Rules.

Marginal note:Fee for non-certified copies

95 A person that requests a non-certified copy of a document that is in the Registrar’s possession must pay the fee set out in item 18 or 19 of the schedule, as applicable.

PART 2Implementation of Madrid Protocol

General

Marginal note:Interpretation

96 The following definitions apply in this Part.

basic application

basic application means an application for the registration of a trademark that has been filed under subsection 30(1) of the Act and that constitutes the basis for an application for international registration, but does not include a Protocol application. (demande de base)

basic registration

basic registration means a registration of a trademark that is on the register and that constitutes the basis for an application for international registration, but does not include a Protocol registration. (enregistrement de base)

Common Regulations

Common Regulations means the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement, as modified from time to time. (Règlement d’exécution commun)

contracting party

contracting party means any state or intergovernmental organization that is a party to the Protocol. (partie contractante)

date of international registration

date of international registration means the date borne by an international registration under Rule 15 of the Common Regulations. (date de l’enregistrement international)

date of notification of territorial extension

date of notification of territorial extension means the day on which the International Bureau notifies the Registrar of a request made under Article 3ter(1) or (2) of the Protocol. (date de la notification d’extension territoriale)

holder

holder means the person in whose name an international registration is recorded in the International Register. (titulaire)

opposition period

opposition period means the two-month period referred to in subsection 38(1) of the Act. (délai d’opposition)

Protocol

Protocol means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989, including any amendments, modifications and revisions made from time to time to which Canada is a party. (Protocole)

Protocol application

Protocol application means an application referred to in subsection 103(1) or (2) or a divisional application referred to in subsection 124(1). (demande prévue au Protocole)

Protocol registration

Protocol registration means the registration of a trademark under subsection 132(1). (enregistrement prévu au Protocole)

Marginal note:Non-application of section 66 of Act

• 97 (1) Section 66 of the Act does not apply in respect of periods fixed by this Part, except

  • (a) the two-month period fixed by subsections 117(2) and (3) of these Regulations;

  • (b) the maximum four-month extension fixed by section 125 of these Regulations; and

  • (c) the three-month period fixed by section 147 of these Regulations.

• Marginal note:Application of Rule 4(4) of Common Regulations

  (2) Rule 4(4) of the Common Regulations applies to all periods fixed by this Part other than those referred to in paragraphs (1)(a) to (c) of this section.

Application for International Registration (Office of Registrar as Office of Origin)

Qualification

Marginal note:Conditions

98 A person may file with the Registrar an application for international registration of a trademark for presentation to the International Bureau if they meet the following conditions:

• (a) the person is a national of or is domiciled in Canada or has a real and effective industrial or commercial establishment in Canada; and

• (b) the person is the applicant in respect of a basic application for the trademark or, if there is a basic registration in respect of the trademark, the registered owner of the trademark.

Contents and Form

Marginal note:Contents

• 99 (1) Every application for international registration filed with the Registrar must include the following information:

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

  • (b) the number and filing date of the basic application or the number and date of registration of the basic registration;

  • (c) a statement that

    • (i) the applicant is a national of Canada,

    • (ii) the applicant is domiciled in Canada, accompanied by the address of the applicant’s domicile in Canada if the address filed under paragraph (a) is not in Canada, or

    • (iii) the applicant has a real and effective industrial or commercial establishment in Canada, accompanied by the address of the applicant’s industrial or commercial establishment in Canada if the address filed under paragraph (a) is not in Canada;

  • (d) if colour is claimed as a feature of the trademark in the basic application or basic registration, the same claim;

  • (e) a reproduction of the trademark, which must be in colour if the trademark is in colour in the basic application or basic registration or if colour is claimed as a feature of the trademark in the basic application or the basic registration;

  • (f) if the trademark in the basic application or basic registration is a certification mark, it consists in whole or in part of a three-dimensional shape or a sound or it consists exclusively of a single colour or a combination of colours without delineated contours, an indication to that effect;

  • (g) a list of the goods or services for which international registration is sought that must

    • (i) include only goods or services that are within the scope of the basic application or basic registration, and

    • (ii) group the goods or services 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; and

  • (h) the names of the contracting parties for which the extension of protection is requested under Article 3ter(1) of the Protocol.

• Marginal note:Language

  (2) The application, with the exception of the trademark itself, must be in English or French.

• Marginal note:Manner of filing

  (3) The application must be filed by

  • (a) using the online service that is designated by the Registrar as being accepted for that purpose; or

  • (b) completing the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar.