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Trademarks Regulations (SOR/2018-227)

Regulations are current to 2022-06-20 and last amended on 2022-03-04. Previous Versions

Trademarks Regulations

SOR/2018-227

TRADEMARKS ACT

Registration 2018-10-30

Trademarks Regulations

P.C. 2018-1330 2018-10-29

Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to sections 65Footnote a, 65.1Footnote b and 65.2Footnote c of the Trademarks ActFootnote d, makes the annexed Trademarks Regulations.

PART 1Rules of General Application

Interpretation

Marginal note:Definitions

 The following definitions apply in these Regulations.

Act

Act means the Trademarks Act. (Loi)

associate trademark agent

associate trademark agent means a trademark agent who is appointed by another trademark agent under subsection 22(2). (agent de marques de commerce associé)

International Bureau

International Bureau means the International Bureau of the World Intellectual Property Organization. (Bureau international)

International Register

International Register means the official collection of data concerning international registrations that is maintained by the International Bureau. (Registre international)

international registration

international registration means a registration of a trademark that is on the International Register. (enregistrement international)

trademark agent

trademark agent means a trademark agent as defined in section 2 of the College of Patent Agents and Trademark Agents Act. (agent de marques de commerce)

Marginal note:Reference to a period

 Unless otherwise indicated, a reference to a period in these Regulations is to be read, if the period is extended under section 47 or 47.1 or subsection 66(1) of the Act, as a reference to the period as extended.

General

Marginal note:Written communications to Registrar

 Written communications intended for the Registrar must be addressed to the “Registrar of Trademarks” and include

  • (a) in the case that the communication is submitted by a trademark agent, the name of that agent and, if all the trademark agents at the same firm are appointed in respect of the business to which the communication relates, the name of that firm; and

  • (b) in any other case, the name of the person submitting the communication.

Marginal note:Limit on written communications

  •  (1) A written communication intended for the Registrar must not relate to more than one application for the registration of a trademark or more than one registered trademark.

  • Marginal note:Exceptions

    (2) Subsection (1) does not apply to a written communication in respect of

    • (a) a change of name or address;

    • (b) a payment of a fee for the renewal of a registration;

    • (c) a cancellation of a registration;

    • (d) a transfer of a registered trademark or of an application for the registration of a trademark;

    • (e) a document affecting rights in respect of a registered trademark or of an application for the registration of a trademark;

    • (f) an appointment or revocation of an appointment of a trademark agent;

    • (g) a correction of an error; and

    • (h) the provision of evidence, written representations or requests for a hearing provided in a proceeding under section 11.13, 38 or 45 of the Act.

Marginal note:Written communications regarding applications for registration

  •  (1) A written communication intended for the Registrar in respect of an application for the registration of a trademark must include the name of the applicant and, if known, the application number.

  • Marginal note:Written communications regarding registered trademarks

    (2) A written communication intended for the Registrar in respect of a registered trademark must include the name of the registered owner and either the registration number or the number of the application that resulted in the registration.

Marginal note:Address

  •  (1) Joint applicants, opponents and objectors must provide a single postal address for correspondence.

  • Marginal note:Notice of change of address

    (2) A person that is doing business before the Office of the Registrar of Trademarks must notify the Registrar of any change of their postal address for correspondence.

Marginal note:Form of communication

 The Registrar is not required to have regard to any communication that is not submitted in writing, other than a communication made during a hearing held in a proceeding under section 11.13, 38 or 45 of the Act.

Marginal note:Intelligibility of documents

 A document that is provided to the Registrar must be clear, legible and capable of being reproduced.

Marginal note:Document provided in non-official language

 The Registrar is not required to have regard to the whole or any part of a document that is provided in a language other than English or French unless a translation into English or French is also provided.

Marginal note:Manner of providing documents, information or fees

  •  (1) Unless provided by an electronic means in accordance with subsection 64(1) of the Act, documents, information or fees must be provided to the Registrar by physical delivery to the Office of the Registrar of Trademarks or to an establishment that is designated by the Registrar as being accepted for that purpose.

  • Marginal note:Date of receipt — physical delivery to Office

    (2) Documents, information or fees that are provided to the Registrar by physical delivery to the Office of the Registrar of Trademarks are deemed to have been received by the Registrar

    • (a) if they are delivered when the Office is open to the public, on the day on which they are delivered to the Office; and

    • (b) if they are delivered when the Office is closed to the public, on the first day on which the Office is next open to the public.

  • Marginal note:Date of receipt — physical delivery to designated establishment

    (3) Documents, information or fees that are provided to the Registrar by physical delivery to a designated establishment are deemed to have been received by the Registrar

    • (a) if they are delivered when the establishment is open to the public,

      • (i) in the case where the Office of the Registrar of Trademarks is open to the public for all or part of the day on which they are delivered, on that day, and

      • (ii) in any other case, on the day on which the Office of the Registrar of Trademarks is next open to the public; and

    • (b) if they are delivered when the establishment is closed to the public, on the first day on which the Office of the Registrar of Trademarks is next open to the public that falls on or after the day on which the establishment is next open to the public.

  • Marginal note:Date of receipt — provision by electronic means

    (4) Documents, information or fees that are provided to the Registrar by an electronic means in accordance with subsection 64(1) of the Act are deemed to have been received on the day, according to the local time of the place where the Office of the Registrar of Trademarks is located, on which the Office receives it.

  • Marginal note:Exception — certain applications and requests

    (5) Subsections (1) to (3) do not apply in respect of

    • (a) an application for international registration referred to in sections 98 to 100;

    • (b) a request for the recording of a change in ownership referred to in sections 101 and 102;

    • (c) a request for division referred to in section 123; and

    • (d) a transformation application referred to in section 147.

  • Marginal note:Exception — International Bureau

    (6) Subsections (1) to (4) do not apply in respect of documents, information or fees that are provided to the Registrar by the International Bureau.

Marginal note:Waiver of fees

 The Registrar may waive the payment of a fee if the Registrar is satisfied that the circumstances justify it.

Marginal note:Refund

 On request made no later than three years after the day on which a fee is paid, the Registrar must refund any overpayment of the fee.

Marginal note:Affidavit or statutory declaration

  •  (1) A person that provides the Registrar with a copy of an affidavit or statutory declaration in a matter in respect of which an appeal lies under subsection 56(1) of the Act must retain the original for a retention period that ends one year after the day on which the applicable appeal period expires but, if an appeal is taken, ends on the day on which the final judgment is given in the appeal.

  • Marginal note:Provision of original

    (2) On request by the Registrar made before the end of the retention period, the person must provide the original to the Registrar.

Marginal note:Extension of time — fee

 A person that applies for an extension of time under section 47 of the Act must pay the fee set out in item 1 of the schedule to these Regulations.

Marginal note:Prescribed days — extension of time periods

 The following days are prescribed for the purpose of subsection 66(1) of the Act:

  • (a) Saturday;

  • (b) Sunday;

  • (c) January 1 or, if January 1 falls on a Saturday or Sunday, the following Monday;

  • (d) Good Friday;

  • (e) Easter Monday;

  • (f) the Monday before May 25;

  • (g) June 24 or, if June 24 falls on a Saturday or Sunday, the following Monday;

  • (h) July 1 or, if July 1 falls on a Saturday or Sunday, the following Monday;

  • (i) the first Monday in August;

  • (j) the first Monday in September;

  • (j.1) September 30 or, if September 30 falls on a Saturday or Sunday, the following Monday;

  • (k) the second Monday in October;

  • (l) November 11 or, if November 11 falls on a Saturday or Sunday, the following Monday;

  • (m) December 25 and 26 or

    • (i) if December 25 falls on a Friday, that Friday and the following Monday, and

    • (ii) if December 25 falls on a Saturday or Sunday, the following Monday and Tuesday; and

  • (n) any day on which the Office of the Registrar of Trademarks is closed to the public for all or part of that day during ordinary business hours.

Trademark Agents

 [Repealed, SOR/2021-130, s. 3]

 [Repealed, SOR/2021-130, s. 3]

 [Repealed, SOR/2021-130, s. 3]

 [Repealed, SOR/2021-130, s. 3]

 [Repealed, SOR/2021-130, s. 3]

 [Repealed, SOR/2021-130, s. 3]

Marginal note:Power to appoint trademark agent

  •  (1) An applicant, registered owner or other person, may appoint one trademark agent or all the trademark agents at the same firm to represent them in any business before the Office of the Registrar of Trademarks.

  • Marginal note:Power to appoint associate trademark agent

    (2) A trademark agent, other than an associate trademark agent may, in turn, appoint one trademark agent or all the trademark agents at the same firm as an associate trademark agent to represent the person that appointed them in any business before the Office of the Registrar of Trademarks.

Marginal note:Appointment — one trademark agent

  •  (1) The appointment of one trademark agent is effective on the day on which the Registrar receives an appointment notice that includes the name and postal address of the trademark agent.

  • Marginal note:Appointment — all trademark agents

    (2) The appointment of all the trademark agents at the same firm is effective on the day on which the Registrar receives an appointment notice that includes the name and postal address of the firm.

  • Marginal note:Revocation

    (3) The revocation of the appointment of one trademark agent or all the trademark agents at the same firm is effective on the day on which the Registrar receives a notice to that effect.

Marginal note:Trademark agent — member of firm

 If all the trademark agents at the same firm have been appointed, the following rules apply:

  • (a) a trademark agent who becomes a member of that firm after the appointment is deemed to be appointed on the day on which they become a member of the firm;

  • (b) a person who is a member of that firm who becomes a trademark agent after the appointment is deemed to be appointed on the day on which they become a trademark agent;

  • (c) the appointment of a trademark agent who ceases to be a member of that firm is deemed to be revoked on the day on which they cease to be a member of the firm; and

  • (d) the appointment of a trademark agent whose licence is suspended, revoked or surrendered is deemed to be revoked on the day on which their licence is suspended, revoked, or surrendered.

Marginal note:Written communication considered sent

 If all the trademark agents at the same firm have been appointed, any written communication sent by the Registrar to the firm is considered to have been sent to all of the trademark agents at the firm.

Marginal note:Acts done by or in relation to trademark agent

  •  (1) In any business before the Office of the Registrar of Trademarks, any act done by or in relation to a trademark agent, other than an associate trademark agent, has the same effect as an act done by or in relation to the person that appointed them in respect of that business.

  • Marginal note:Acts done by or in relation to associate trademark agent

    (2) In any business before the Office of the Registrar of Trademarks, any act done by or in relation to an associate trademark agent has the same effect as an act done by or in relation to the person that appointed, in respect of that business, the trademark agent who, in turn, appointed the associate trademark agent.

 
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