Trademarks Regulations (SOR/2018-227)

Marginal note:Representations

93.3 The Registrar must give the other party notice of the request for costs and an opportunity to make written representations, which must, within 14 days after the day on which the notice is given, be made using the online service that is designated by the Registrar as being accepted for that purpose.

Copies of Documents

Marginal note:Fee for certified copies

• 94 (1) A person that requests a certified copy of a document that is in the Registrar’s possession must pay the fee set out in item 16 or 17 of the schedule, as applicable.

• Marginal note:Exception

  (2) Subsection (1) does not apply in respect of a certified copy that is transmitted under section 60 of the Act or rule 318 of the Federal Courts Rules, including as modified by rule 350 of those Rules.

Marginal note:Fee for non-certified copies

95 A person that requests a non-certified copy of a document that is in the Registrar’s possession must pay the fee set out in item 18 or 19 of the schedule, as applicable.

Confidentiality Order Under Section 45.1 of Act

Marginal note:Confidentiality order

• 95.1 (1) A party to a proceeding under section 11.13, 38 or 45 of the Act who makes a request to the Registrar under subsection 45.1(1) of the Act for an order that evidence be kept confidential must submit the following information to the Registrar:

  • (a) a description of the evidence that the party wishes to be kept confidential;

  • (b) a statement that the evidence has not been made public;

  • (c) the reasons why the evidence should be kept confidential;

  • (d) an indication of whether the other party consents to the request; and

  • (e) any other information that the Registrar requires in order to make a decision with respect to the request.

• Marginal note:Public interest

  (2) In deciding whether to make a confidentiality order under subsection 45.1(4) of the Act, the Registrar must consider the public interest in open and accessible proceedings.

• Marginal note:Confidential designation

  (3) A party who submits information to the Registrar that is subject to a confidentiality order must ensure that the information is designated as confidential.

• Marginal note:Revocation or amendment of order

  (4) For greater certainty, at any time in the proceeding, the Registrar may, under subsection 45.1(4) of the Act, amend the confidentiality order if the Registrar considers it appropriate in the circumstances or revoke it if the Registrar is no longer satisfied that the evidence should be kept confidential.

Registrar’s Powers

Marginal note:Orders and directions

95.2 The Registrar may, as the circumstances and considerations of fairness permit, make any order or give any direction that the Registrar considers appropriate to deal with a proceeding under section 11.13, 38 or 45 of the Act in an efficient and cost-effective manner.

Marginal note:Case management

• 95.3 (1) The Registrar may, at any time in a proceeding under section 11.13, 38 or 45 of the Act, designate the proceeding as a case-managed proceeding to which this section applies, subject to any terms that the Registrar considers appropriate.

• Marginal note:Circumstances to be considered

  (2) In determining whether to designate a proceeding as a case-managed proceeding, the Registrar must consider all the surrounding circumstances, including

  • (a) the extent of intervention by the Registrar that the proceeding is likely to require for matters to be dealt with in an efficient and cost-effective manner;

  • (b) the nature and extent of evidence;

  • (c) the complexity of the proceeding;

  • (d) whether the parties are represented;

  • (e) the number of related files; and

  • (f) whether substantial delay has occurred or is anticipated to occur in the conduct of the proceeding.

• Marginal note:Time and manner

  (3) The Registrar may fix the time by which or the manner in which any step in a case-managed proceeding is to be completed, despite any time or manner that is provided for under the Act with respect to the proceeding.

PART 2Implementation of Madrid Protocol

General

Marginal note:Interpretation

96 The following definitions apply in this Part.

basic application

basic application means an application for the registration of a trademark that has been filed under subsection 30(1) of the Act and that constitutes the basis for an application for international registration, but does not include a Protocol application. (demande de base)

basic registration

basic registration means a registration of a trademark that is on the register and that constitutes the basis for an application for international registration, but does not include a Protocol registration. (enregistrement de base)

Common Regulations

Common Regulations means the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement, as modified from time to time. (Règlement d’exécution commun)

contracting party

contracting party means any state or intergovernmental organization that is a party to the Protocol. (partie contractante)

date of international registration

date of international registration means the date borne by an international registration under Rule 15 of the Common Regulations. (date de l’enregistrement international)

date of notification of territorial extension

date of notification of territorial extension means the day on which the International Bureau notifies the Registrar of a request made under Article 3ter(1) or (2) of the Protocol. (date de la notification d’extension territoriale)

holder

holder means the person in whose name an international registration is recorded in the International Register. (titulaire)

opposition period

opposition period means the two-month period referred to in subsection 38(1) of the Act. (délai d’opposition)

Protocol

Protocol means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989, including any amendments, modifications and revisions made from time to time to which Canada is a party. (Protocole)

Protocol application

Protocol application means an application referred to in subsection 103(1) or (2) or a divisional application referred to in subsection 124(1). (demande prévue au Protocole)

Protocol registration

Protocol registration means the registration of a trademark under subsection 132(1). (enregistrement prévu au Protocole)

Marginal note:Non-application of section 66 of Act

• 97 (1) Section 66 of the Act does not apply in respect of periods fixed by this Part, except

  • (a) the two-month period fixed by subsections 117(2) and (3) of these Regulations;

  • (b) the maximum four-month extension fixed by section 125 of these Regulations; and

  • (c) the three-month period fixed by section 147 of these Regulations.

• Marginal note:Application of Rule 4(4) of Common Regulations

  (2) Rule 4(4) of the Common Regulations applies to all periods fixed by this Part other than those referred to in paragraphs (1)(a) to (c) of this section.

Application for International Registration (Office of Registrar as Office of Origin)

Qualification

Marginal note:Conditions

98 A person may file with the Registrar an application for international registration of a trademark for presentation to the International Bureau if they meet the following conditions:

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

• (b) the person is the applicant in respect of a basic application for the trademark or, if there is a basic registration in respect of the trademark, the registered owner of the trademark.

Contents and Form

Marginal note:Contents

• 99 (1) Every application for international registration filed with the Registrar must include the following information:

  • (a) the applicant’s name and postal address;

  • (b) the number and filing date of the basic application or the number and date of registration of the basic registration;

  • (c) a statement that

    • (i) the applicant is a national of Canada,

    • (ii) the applicant is domiciled in Canada, accompanied by the address of the applicant’s domicile in Canada if the address filed under paragraph (a) is not in Canada, or

    • (iii) the applicant has a real and effective industrial or commercial establishment in Canada, accompanied by the address of the applicant’s industrial or commercial establishment in Canada if the address filed under paragraph (a) is not in Canada;

  • (d) if colour is claimed as a feature of the trademark in the basic application or basic registration, the same claim;

  • (e) a reproduction of the trademark, which must be in colour if the trademark is in colour in the basic application or basic registration or if colour is claimed as a feature of the trademark in the basic application or the basic registration;

  • (f) if the trademark in the basic application or basic registration is a certification mark, it consists in whole or in part of a three-dimensional shape or a sound or it consists exclusively of a single colour or a combination of colours without delineated contours, an indication to that effect;

  • (g) a list of the goods or services for which international registration is sought that must

    • (i) include only goods or services that are within the scope of the basic application or basic registration, and

    • (ii) group the goods or services according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification; and

  • (h) the names of the contracting parties for which the extension of protection is requested under Article 3ter(1) of the Protocol.

• Marginal note:Language

  (2) The application, with the exception of the trademark itself, must be in English or French.

• Marginal note:Manner of filing

  (3) The application must 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.

Functions of Registrar

Marginal note:Office of origin

100 On receipt of an application for international registration that is filed in accordance with section 99 by a person that meets the conditions set out in section 98, the Registrar must, in respect of that application, act as the Office of origin in accordance with the Protocol and the Common Regulations, including by

• (a) certifying that the information included in the application for international registration corresponds to the information included in the basic application or basic registration;

• (b) presenting the application for international registration to the International Bureau; and

• (c) in the case that the application for international registration results in an international registration, notifying the International Bureau to the following effect:

  • (i) if, in respect of all or any of the goods or services listed in the international registration, the basic application is withdrawn, abandoned or refused or the basic registration is cancelled or expunged before the end of five years after its date of international registration, and

  • (ii) if a proceeding that began before the end of that five-year period leads, in respect of all or any of the goods or services listed in the international registration, to the withdrawal, abandonment or refusal of the basic application or to the cancellation or expungement of the basic registration after that period.

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.