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Trademarks Regulations (SOR/2018-227)

Regulations are current to 2022-09-22 and last amended on 2022-03-04. Previous Versions

PART 2Implementation of Madrid Protocol (continued)

Territorial Extension to Canada (continued)

Divisional Application

Marginal note:Non-application of subsections 39(1), (2) and (5) of Act

 Subsections 39(1), (2) and (5) of the Act do not apply in respect of a Protocol application.

Marginal note:Filing of request for division

  •  (1) The applicant in respect of a Protocol application may limit the original Protocol application to one or more of the goods or services that were within its scope and file with the Registrar for presentation to the International Bureau a request for the division, in respect of Canada, of the international registration on which the original Protocol application is based for any other goods or services that were within the scope of

    • (a) the original Protocol application on its filing date, determined without taking into account subsection 106(2);

    • (b) the original Protocol application on the day on which the request is filed, if the request is filed on or after the day on which the Protocol application is advertised under subsection 37(1) of the Act; and

    • (c) the international registration in respect of Canada on the day on which the request is filed.

  • Marginal note:Manner of filing

    (2) The request must be in English or French and 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.

  • Marginal note:Contents

    (3) The request must indicate

    • (a) the number of the international registration on which the original Protocol application is based;

    • (b) the name of the holder of that international registration;

    • (c) the name of the goods or services to be set apart, grouped according to the classes of the Nice Classification; and

    • (d) the amount of the fee being paid to the International Bureau and the method of payment, or instructions to debit the required amount to an account opened with the International Bureau, and the name of the person effecting the payment or giving the instructions.

  • Marginal note:Sending of request to International Bureau

    (4) The Registrar must send to the International Bureau any request that is filed in accordance with subsections (1) to (3).

Marginal note:Deemed divisional application

  •  (1) If, following receipt of a request under section 123, the International Bureau notifies the Registrar of the creation of a divisional international registration in respect of Canada, the applicant is deemed to have filed a divisional application for the registration of the same trademark as in the divisional international registration and in respect of the same goods or services that are listed in the divisional international registration in respect of Canada.

  • Marginal note:Division of divisional application

    (2) The divisional application may itself be divided under subsection (1) and section 123, in which case those provisions apply as if that divisional application were an original Protocol application.

Opposition

Marginal note:Limitation of extension

 In respect of a Protocol application, the Registrar is not permitted, on application made to the Registrar, to extend, under section 47 of the Act, the two-month period referred to in subsection 38(1) of the Act by more than four months.

Marginal note:Filing of statement of opposition

 A statement of opposition under section 38 of the Act in respect of a Protocol application must be in English or French and be filed by using the online service that is designated by the Registrar as being accepted for that purpose.

Marginal note:Notification of provisional refusal

 If, in respect of a Protocol application, a statement of opposition is filed, the Registrar must send to the International Bureau a notification of provisional refusal.

Marginal note:No new ground of opposition

 If the Registrar sends to the International Bureau a notification of provisional refusal based on an opposition, the statement of opposition may not be amended to add a new ground of opposition.

Marginal note:Notice of opposition period

 If, in respect of a Protocol application, it is likely that the opposition period will extend beyond the end of 18 months after the date of notification of territorial extension, the Registrar must so inform the International Bureau.

Marginal note:Statement of confirmation of total provisional refusal

 The Registrar must send a statement of confirmation of total provisional refusal in respect of a Protocol application to the International Bureau if

  • (a) the Protocol application is deemed to have been abandoned under subsection 38(11) of the Act; or

  • (b) the Registrar refuses the Protocol application under subsection 38(12) of the Act with respect to all of the goods or services specified in it and either the period for filing an appeal has ended and no appeal has been filed or, if an appeal has been taken, the final judgment has been decided in favour of the opponent.

Registration of Trademarks

Marginal note:Non-application of section 40 of Act

 Section 40 of the Act does not apply in respect of a Protocol application.

Marginal note:Obligations of Registrar

  •  (1) In respect of a trademark that is the subject of a Protocol application, the Registrar must register the trademark in the name of the applicant, issue a certificate of its registration and send a statement to the International Bureau that protection is granted to the trademark if

    • (a) the Protocol application has not been opposed and the opposition period has ended;

    • (b) the Protocol application has been opposed and the opposition has been decided in favour of the applicant and either the period for filing an appeal has ended and no appeal has been filed or, if an appeal has been taken, the final judgment has been decided in favour of the applicant;

    • (c) 18 months have passed after the date of notification of territorial extension and, within that 18-month period, the Registrar did not inform the International Bureau that it was likely that the opposition period would extend beyond that 18-month period and

      • (i) did not send to the International Bureau a notification of provisional refusal, or

      • (ii) did send to the International Bureau a notification of provisional refusal, but not one based on an opposition, and is not satisfied that any of paragraphs 37(1)(a) to (d) of the Act apply; or

    • (d) the Protocol application has been opposed, the following periods have ended, the Registrar informed the International Bureau, in the period referred to in subparagraph (i), that it was likely that the opposition period would extend beyond that period and the Registrar did not send to the International Bureau, before the end of the period referred to in subparagraph (ii), a notification of provisional refusal based on an opposition:

      • (i) the 18-month period after the date of notification of territorial extension, and

      • (ii) the period that ends at the earlier of the end of the seven-month period after the day on which the opposition period began and the end of the one-month period after the day on which the opposition period ended.

  • Marginal note:Non-advertisement

    (2) Despite subsection 37(1) of the Act, the Registrar must not cause the Protocol application to be advertised if the trademark was registered under subsection (1) of this section without the Protocol application having been advertised.

Amendment of Register

Marginal note:Non-application of statutory provisions

 Paragraphs 41(1)(a) to (c) and (f), subsections 41(2) and (4) and section 44.1 of the Act do not apply in respect of a Protocol registration.

Marginal note:Filing of request for merger

  •  (1) The holder of a divisional international registration in respect of Canada may file with the Registrar for presentation to the International Bureau a request to merge the divisional international registration with the international registration from which it was divided if there is at least one Protocol registration based on each of those international registrations and

    • (a) all of the Protocol registrations stem from the same original Protocol application;

    • (b) they relate to the same trademark; and

    • (c) their registered owner is the holder of the international registrations.

  • Marginal note:Manner of filing

    (2) The request must be in English or French and 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.

  • Marginal note:Contents

    (3) The request must indicate the number of each of the international registrations to be merged and the name of the holder of those international registrations.

  • Marginal note:Sending of request to International Bureau

    (4) The Registrar must send to the International Bureau any request that is filed in accordance with subsections (1) to (3).

  • Marginal note:Merger of Protocol registrations

    (5) If, following receipt of the request, the International Bureau notifies the Registrar of the merger of a divisional international registration in respect of Canada into the international registration from which it was divided, the Registrar must amend the register to merge the Protocol registrations that are based on those international registrations and that stem from the same original Protocol application.

Marginal note:Recording resulting in deletion

  •  (1) If the International Bureau notifies the Registrar of the recording in the International Register under Rule 27(1)(a) of the Common Regulations of a limitation of the list of goods or services, in respect of Canada, of an international registration on which a Protocol registration is based,

    • (a) in the case that the recording results in a deletion of all goods or services from that list without giving rise to a resulting new list, the Registrar must cancel the Protocol registration; and

    • (b) subject to paragraph (a), in the case that the recording results in a deletion of all goods or services from that list of a particular class of the Nice Classification without giving rise to a resulting new list for that particular class of the Nice Classification, the Registrar must amend the register accordingly; and

    • (c) in the case that the recording results in a deletion of one or more of the goods or services from a list of a particular class of the Nice Classification and gives rise to a resulting new list for that particular class of the Nice Classification, the Registrar must determine, with respect to each good or service in that resulting new list for that particular class, whether the following requirements are met:

      • (i) the good or service is within the scope of the Protocol registration on the date of the recording in the International Register, and

      • (ii) the good or service is described in ordinary commercial terms and in a manner that identifies a specific good or service.

  • Marginal note:Recording resulting in new list

    (2) In the case that the recording results in a deletion of one or more of the goods or services from a list of a particular class of the Nice Classification and gives rise to a resulting new list for that particular class of the Nice Classification,

    • (a) if the Registrar determines that the requirements set out in paragraph (1)(c) are not met for any good or service in that resulting list for that particular class, the Registrar must, in accordance with Rule 27(5) of the Common Regulations, send to the International Bureau a declaration to the effect that the limitation has no effect in Canada in respect of all of the goods and services in that class; and

    • (b) if the Registrar determines that the requirements set out in paragraph 1(c) are met for all of the goods or services in that resulting list for that particular class, the Registrar must amend the register accordingly.

Marginal note:Complete renunciation

 If, in respect of an international registration on which a Protocol registration is based, the International Bureau notifies the Registrar of the recording in the International Register of a renunciation in respect of Canada for all of the goods or services that are listed in the international registration, the Registrar must cancel the Protocol registration.

Marginal note:Complete cancellation

 If, in respect of an international registration on which a Protocol registration is based, the International Bureau notifies the Registrar of the recording in the International Register of a cancellation of the international registration for all of the goods or services that are listed in the international registration, the Registrar must cancel the Protocol registration.

Marginal note:Partial cancellation

 If, in respect of an international registration on which a Protocol registration is based, the International Bureau notifies the Registrar of the recording in the International Register of a cancellation of the international registration for at least one but not all of the goods or services that are listed in the international registration, the Registrar must cancel the Protocol registration or amend the register accordingly.

Marginal note:Change of name or address

 If, in respect of an international registration on which a Protocol registration is based, the International Bureau notifies the Registrar of the recording in the International Register of a change of name or address of the holder, the Registrar must amend the register accordingly.

Marginal note:Correction of international registration

  •  (1) If the International Bureau notifies the Registrar of a correction of an international registration affecting a Protocol registration and

    • (a) if the Registrar considers that protection can still be granted to the international registration as corrected, the Registrar must amend the register accordingly; or

    • (b) if the Registrar considers that protection cannot, or can no longer, be granted to the international registration as corrected, the Registrar must so declare and state their grounds in a notification of provisional refusal sent to the International Bureau within 18 months after the date on which the notification of the correction was sent.

  • Marginal note:Period to respond

    (2) The Registrar must by notice invite the registered owner to respond to a declaration made under paragraph (1)(b) within the period specified in the notice.

  • Marginal note:Protection granted

    (3) If — after considering any response received within the specified period or, if there is none, at the end of that period — the Registrar considers that protection can be granted to the international registration as corrected, the Registrar must so notify the International Bureau and amend the register accordingly.

  • Marginal note:Protection not granted

    (4) If — after considering any response received within the specified period or, if there is none, at the end of that period — the Registrar still considers that protection cannot, or can no longer, be granted to the international registration as corrected, the Registrar must so notify the International Bureau and amend the register or cancel the Protocol registration accordingly.

Marginal note:Effective date of cancellation or amendment

 A cancellation of a Protocol registration or an amendment of the register under any of sections 135 to 140 is deemed to take effect on the date of the limitation, renunciation, cancellation, change or correction, as the case may be, as recorded in the International Register.

Marginal note:Failure to consider request for extension of time

  •  (1) The Registrar may remove a Protocol 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, unless the time limit under Article 5(2) of the Protocol to make a notification of provisional refusal based on an opposition has ended.

  • Marginal note:Notification

    (2) If the Registrar removes a Protocol registration from the register under subsection (1), the Registrar must so notify the International Bureau.

 
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