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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

PART 1Rules of General Application (continued)

Opposition Proceeding Under Section 38 of Act (continued)

Marginal note:Manner of service

  •  (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

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

Marginal note:Amendment

  •  (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

 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

  •  (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

 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

  •  (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

 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

 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

  •  (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

  •  (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.

Marginal note:Written representations

  •  (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 opponent’s written representations

    (2) The opponent 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 38(9) of the Act, the time within which the opponent must serve their written representations on the applicant is during that two-month period.

  • Marginal note:Statement of opponent

    (4) If the opponent 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 applicant within that period.

  • Marginal note:Timing of applicant’s written representations

    (5) The applicant 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 subsection (2), 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 38(9) of the Act, the time within which the applicant must serve their written representations on the opponent is during the two-month period determined under subsection (5) of this section for their submission of written representations.

  • Marginal note:Statement of applicant

    (7) If the applicant 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 opponent within that period.

Marginal note:Request for hearing

  •  (1) Within one month after the day on which the applicant’s service on the opponent of written representations or of a statement that the applicant does not wish to make written representations is effective — or, if no such service is effective within the two-month period determined under subsection 57(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.

Register

Marginal note:Particulars

 For the purpose of paragraph 26(2)(f) of the Act, the following are other particulars that are required to be entered on the register:

  • (a) the registration number;

  • (b) the name and postal address of the registered owner on the date of registration;

  • (c) any representation or description of the trademark that is contained in the application for the registration of the trademark;

  • (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; and

  • (f) 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.

Marginal note:Fee for extending statement of goods or services

 For the purpose of subsection 41(1) of the Act, the fee to be paid by a registered owner that makes an application to extend the statement of goods or services in respect of which a trademark is registered is that set out in item 10 of the schedule to these Regulations.

Marginal note:Merger of registrations

 The Registrar may merge registrations under paragraph 41(1)(f) of the Act only if the trademarks to which the registrations apply are the same and have the same registered owner.

Marginal note:Fee for the giving of notice

 For the purpose of subsection 44(1) of the Act, the fee to be paid by a person that requests that a notice be given under that subsection is that set out in item 11 of the schedule to these Regulations.

Marginal note:Requested statement of goods or services — timing

 For the purpose of subsection 44.1(1) of the Act, the time within which a registered owner must furnish the Registrar with a statement of goods and services grouped in the manner described in subsection 30(3) of the Act is six months after the date of the notice that was given to them.

Transfer of Registered Trademark

Marginal note:Fee

 A person that requests the registration of the transfer of a registered trademark under subsection 48(4) of the Act must pay the fee set out in item 12 of the schedule to these Regulations.

Marginal note:Required information

 The Registrar must not register the transfer of a registered trademark under subsection 48(4) of the Act unless the Registrar has been provided with the transferee’s name and postal address.

Marginal note:Effect of transfer — separate registrations

 If the transfer to a person of a registered trademark is, under subsection 48(4) of the Act or section 146 of these Regulations, registered in respect of at least one but not all of the goods or services that are specified in the initial registration, that person is deemed to be the registered owner of a separate registration that is deemed to have the same registration date as that initial registration.

Proceeding Under Section 45 of Act

Marginal note:Fee

 For the purpose of subsection 45(1) of the Act, the fee to be paid by a person that requests that a notice be given under that subsection is that set out in item 13 of the schedule to these Regulations.

Marginal note:Correspondence

 A person that corresponds with the Registrar in respect of a proceeding under section 45 of the Act must clearly indicate that the correspondence relates to that proceeding.

 
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