Trademarks Regulations (SOR/2018-227)

Change in Ownership of International Registration

Marginal note:Request for recording

• 101 (1) A transferee of an international registration may file with the Registrar a request for the recording of a change in ownership of the international registration for presentation to the International Bureau if they meet the following requirements:

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

  • (b) the transferee has been unable to obtain, on a request for the recording of a change in ownership of the international registration, the signature of the holder of the international registration or of the holder’s representative recorded in accordance with Rule 3(4)(a) of the Common Regulations.

• 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:Accompanying documents

  (3) The request must be accompanied by

  • (a) evidence of the transfer; and

  • (b) a statement to the effect that the transferee made efforts to obtain the signature of the holder of the international registration or that of their representative recorded in accordance with Rule 3(4)(a) of the Common Regulations and that their efforts were not successful.

Marginal note:Transmission to International Bureau

102 The Registrar must transmit to the International Bureau a request for the recording of a change in ownership that is filed in accordance with section 101 if the Registrar considers the evidence of the transfer to be satisfactory.

Territorial Extension to Canada

Protocol Application

Marginal note:Request under Article 3ter(1) of the Protocol

• 103 (1) On the registration of a trademark in the International Register on the basis of an application that contains a request made under Article 3ter(1) of the Protocol for the extension to Canada of the protection of a trademark resulting from its international registration, an application is deemed to have been filed under subsection 30(1) of the Act by the holder of the international registration for the registration of the trademark and in respect of the same goods or services that are listed in that request.

• Marginal note:Request under Article 3ter(2) of the Protocol

  (2) On the recording in the International Register of a request made under Article 3ter(2) of the Protocol for the extension to Canada of the protection of a trademark resulting from its international registration, an application is deemed to have been filed under subsection 30(1) of the Act by the holder of the international registration for the registration of the trademark and in respect of the same goods or services that are listed in that request.

• Marginal note:Deemed application for certification mark

  (3) An application referred to in subsection (1) or (2) is deemed to be an application for the registration of a certification mark if the international registration relates to a collective mark, a certification mark or a guarantee mark.

Non-Registrable Trademarks

Marginal note:Goods or services outside scope of international registration

104 A trademark that is the subject of a Protocol application is not registrable if the goods or services specified in the Protocol application are not within the scope of the international registration.

Filing Date

Marginal note:Non-application of sections 33 and 34 of Act

• 105 (1) Sections 33 and 34 of the Act do not apply in respect of a Protocol application.

• Marginal note:References to subsection 34(1) of the Act

  (2) In respect of the filing date of a Protocol application, the reference in subsections 12(3) and 32(1) and paragraphs 38(2)(e) and (f) of the Act to “subsection 34(1)” is to be read as “subsection 106(2) of the Trademark Regulations”.

Marginal note:Date of international registration

• 106 (1) The filing date of a Protocol application is

  • (a) if the Protocol application results from a request made under Article 3ter(1) of the Protocol, the date of international registration of the corresponding international registration; and

  • (b) if the Protocol application results from a request made under Article 3ter(2) of the Protocol, the date borne by the subsequent designation under Rule 24(6) of the Common Regulations.

• Marginal note:Exception — priority

  (2) Despite subsection (1), in the case that, before the filing date of a Protocol application as determined under that subsection, the applicant of the Protocol application or the applicant’s predecessor in title had applied, in or for any country of the Union other than Canada, for the registration of the same or substantially the same trademark in association with the same kind of goods or services, the filing date of the application in or for the other country is deemed to be the filing date of the Protocol application and the applicant is entitled to priority in Canada accordingly despite any intervening use in Canada or making known in Canada or any intervening application or registration, if

  • (a) the international registration on which the Protocol application is based contains a declaration claiming the priority of the application in or for the other country, along with an indication of the name of the country or office where the filing was made and of the filing date;

  • (b) the filing date of the Protocol application as determined under subsection (1) is within a period of six months after the date on which the earliest application was filed in or for any country of the Union for the registration of the same or substantially the same trademark in association with the same kind of goods or services; and

  • (c) the applicant of the Protocol application, at the filing date of the Protocol application as determined under subsection (1), is a citizen or national of or is domiciled in a country of the Union or has a real and effective industrial or commercial establishment in a country of the Union.

Amendment or Withdrawal of Protocol Application

Marginal note:Recording resulting in deletion

• 107 (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 application 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 Protocol application is deemed to be withdrawn;

  • (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 Protocol application is deemed to be amended 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 application on its filing date, determined without taking into account subsection 106(2), and on the date of the recording in the International Register,

    • (ii) the good or service is within the scope of the Protocol application as advertised, if the date of the recording in the International Register is on or after the day on which the application is advertised under subsection 37(1) of the Act,

    • (iii) the good or service is within the scope of the Protocol application as amended, if the Protocol application is amended on or after the day on which the application is advertised under subsection 37(1) of the Act and if the date of the recording in the International Register is on or after the day of the amendment, and

    • (iv) 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 Protocol application is deemed to be amended accordingly.

Marginal note:Complete renunciation

108 If, in respect of an international registration on which a Protocol application 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 Protocol application is deemed to be withdrawn.

Marginal note:Complete cancellation

109 If, in respect of an international registration on which a Protocol application 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 Protocol application is deemed to be withdrawn.

Marginal note:Partial cancellation

110 If, in respect of an international registration on which a Protocol application 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 Protocol application is deemed to be amended or withdrawn accordingly.

Marginal note:Change of name or address

111 If, in respect of an international registration on which a Protocol application 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 Protocol application is deemed to be amended accordingly.

Marginal note:Effective date of amendment or withdrawal

112 An amendment or withdrawal of a Protocol application under any of sections 107 to 111 is deemed to have taken effect on the date of the limitation, renunciation, cancellation or change, as the case may be, as recorded in the International Register.

Marginal note:Non-renewal of international registration

113 If the international registration on which a Protocol application is based is not renewed in respect of Canada and the International Bureau so notifies the Registrar, the Protocol application is deemed to have been withdrawn at the expiry of the international registration in respect of Canada.

Effect of Correction of International Registration on Protocol Application

Marginal note:Deemed amendment to application

114 If the International Bureau notifies the Registrar of a correction of an international registration affecting a Protocol application, the Protocol application is deemed to be amended accordingly.

Marginal note:Amendment to non-advertised application

115 If a Protocol application has not been advertised under subsection 37(1) of the Act before the date of notification of a correction of an international registration on which the Protocol application is based and if the Registrar determines that the deemed amendment to the Protocol application is substantive in respect of at least one of the goods or services specified in the amended Protocol application and is not limited to narrowing the scope of the statement of goods or services, then a reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph 132(1)(d)(i) of these Regulations to “date of notification of territorial extension” is to be read as “day on which the International Bureau sent to the Registrar the notification of a correction of an international registration on which the Protocol application is based” in respect of that Protocol application.

Marginal note:Amendment to advertised application — all goods or services

116 If a Protocol application has been advertised under subsection 37(1) of the Act before the date of notification of a correction of an international registration on which the Protocol application is based and if the Registrar determines that the deemed amendment to the Protocol application is substantive in respect of all of the goods or services specified in the amended Protocol application and is not limited to narrowing the scope of the statement of goods or services,

• (a) the application is deemed to never have been advertised; and

• (b) a reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph 132(1)(d)(i) of these Regulations to “date of notification of territorial extension” is to be read as “day on which the International Bureau sent to the Registrar the notification of a correction of an international registration on which the Protocol application is based” in respect of that Protocol application.

Marginal note:Amendment to advertised application — some goods or services

• 117 (1) If a Protocol application has been advertised under subsection 37(1) of the Act before the date of notification of a correction of an international registration on which the Protocol application is based and if the Registrar determines that the deemed amendment to the Protocol application is substantive in respect of at least one but not all of the goods or services specified in the amended Protocol application and is not limited to narrowing the scope of the statement of goods or services, then the Registrar must, by notice, invite the applicant to elect one of the following options:

  • (a) that the Protocol application be amended to delete those goods or services; or

  • (b) that the Protocol application be deemed to never have been advertised.

• Marginal note:Deletion of goods or services

  (2) If the applicant elects the option referred to in paragraph (1)(a) or does not make an election within two months after the date of the notice, the Protocol application is deemed to be amended to delete those goods or services.

• Marginal note:Deemed non-advertisement of application

  (3) If the applicant selects the option referred to in paragraph (1)(b) within two months after the date of the notice

  • (a) the Protocol application is deemed never to have been advertised; and

  • (b) a reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph 132(1)(d)(i) to “date of notification of territorial extension” is to be read as “day on which the International Bureau sent to the Registrar the notification of a correction of an international registration on which the Protocol application is based” in respect of that Protocol application.

Marginal note:Effective date of amendment

118 An amendment to a Protocol application under section 114 or subsection 117(2) is deemed to have taken effect on the later of the filing date of the Protocol application and the day on which the error was made that gave rise to the correction of the international registration.

Abandonment

Marginal note:Statement of confirmation of total provisional refusal

119 If the Registrar treats a Protocol application as abandoned under section 36 of the Act, the Registrar must send a statement of confirmation of total provisional refusal to the International Bureau.

Examination

Marginal note:Notification of provisional refusal

120 The Registrar must not refuse a Protocol application under subsection 37(1) of the Act without first sending to the International Bureau, before the end of 18 months after the date of notification of territorial extension, a notification of provisional refusal stating the Registrar’s objections.

Marginal note:Statement of confirmation of total provisional refusal

121 If the Registrar refuses a Protocol application under subsection 37(1) of the Act, the Registrar must send a statement of confirmation of total provisional refusal to the International Bureau.