Applications for Registration of Trademarks (continued)
35 The Registrar may require an applicant for registration of a trademark to disclaim the right to the exclusive use apart from the trademark of such portion of the trademark as is not independently registrable, but the disclaimer does not prejudice or affect the applicant’s rights then existing or thereafter arising in the disclaimed matter, nor does the disclaimer prejudice or affect the applicant’s right to registration on a subsequent application if the disclaimed matter has then become distinctive of the applicant’s goods or services.
- R.S., 1985, c. T-13, s. 35
- 2014, c. 20, s. 361(E), c. 32, s. 53
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.
- R.S., 1985, c. T-13, s. 36
- 2014, c. 20, s. 341
Marginal note:When applications to be refused
(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.
- R.S., 1985, c. T-13, s. 37
- 2014, c. 20, ss. 342, 361(E)
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.
(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.
(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
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
(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.
(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.
- R.S., 1985, c. T-13, s. 38
- 1992, c. 1, s. 134
- 1993, c. 15, s. 66
- 2014, c. 20, ss. 343, 361(E)
- 2018, c. 27, ss. 220, 233
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).
(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.
- R.S., 1985, c. T-13, s. 39
- 1993, c. 15, s. 67
- 2014, c. 20, s. 344
- 2018, c. 27, s. 234
- Date modified: