Trademarks Regulations (SOR/2018-227)

Marginal note:Effective date of cancellation or amendment

141 A cancellation of a Protocol registration or an amendment of the register under any of sections 135 to 140 is deemed to take effect on the date of the limitation, renunciation, cancellation, change or correction, as the case may be, as recorded in the International Register.

Marginal note:Failure to consider request for extension of time

• 142 (1) The Registrar may remove a Protocol registration from the register if the Registrar registered the trademark without considering a previously filed request for an extension of time to file a statement of opposition, unless the time limit under Article 5(2) of the Protocol to make a notification of provisional refusal based on an opposition has ended.

• Marginal note:Notification

  (2) If the Registrar removes a Protocol registration from the register under subsection (1), the Registrar must so notify the International Bureau.

Renewal

Marginal note:Non-application of section 46 of Act

143 Section 46 of the Act does not apply in respect of a Protocol registration.

Marginal note:Period of registration

• 144 (1) Subject to the Act and any other provision of these Regulations, a Protocol registration is on the register for the period that begins on the day of the registration and that ends at the moment of its cancellation or expungement.

• Marginal note:Expungement

  (2) If the international registration on which a Protocol registration is based is not renewed in respect of Canada and the International Bureau so notifies the Registrar, the Registrar must expunge the Protocol registration. The Protocol registration is deemed to have been expunged at the expiry of the international registration in respect of Canada.

Transfer

Marginal note:Non-application of subsections 48(3) to (5) of Act

145 Subsections 48(3) to (5) of the Act do not apply in respect of a Protocol application or a Protocol registration.

Marginal note:Recording or registration

146 If the International Bureau notifies the Registrar of the recording in the International Register of a change in ownership in respect of Canada of an international registration on which a Protocol application or a Protocol registration is based, the Registrar must record the transfer of the Protocol application or register the transfer of the Protocol registration accordingly.

Transformation

Marginal note:Application

• 147 (1) If an international registration on which a Protocol application or Protocol registration is based is cancelled under Article 6(4) of the Protocol for all or any of the goods or services listed in the international registration, the person that was the holder of the international registration on the date of cancellation recorded in the International Register, or their successor in title, may, within three months after that date, file with the Registrar an application (referred to in these Regulations as a “transformation application”) to revive the former Protocol application as an application for the registration of the trademark or the former Protocol registration as a registration of the trademark.

• Marginal note:Single application or registration

  (2) The transformation application may only be filed in respect of a single Protocol application or Protocol registration.

• Marginal note:List of goods or services — scope

  (3) The statement of the goods or services in the transformation application may only include goods or services that are within the scope of

  • (a) goods or services that were cancelled from the international registration in respect of Canada; and

  • (b) goods or services in the Protocol application or Protocol registration on the date of cancellation recorded in the International Register.

• Marginal note:Contents of application

  (4) The transformation application must include the following:

  • (a) a statement to the effect that the application is for transformation of an international registration;

  • (b) a statement of the goods or services in respect of which the registration of the trademark is sought;

  • (c) the international registration number of the cancelled international registration; and

  • (d) information that permits the Registrar to identify the Protocol application or Protocol registration that was based on the cancelled international registration.

• Marginal note:Manner of filing

  (5) The transformation application must be in English or French and be filed by an electronic means specified by the Registrar.

• Marginal note:No extension

  (6) The applicant may not apply under section 47 of the Act for an extension of the three-month period referred to in subsection (1) of this section.

Marginal note:Consequences — trademark subject of cancelled Protocol application

148 If a transformation application is filed in accordance with section 147 for the revival of a Protocol application,

• (a) an application is deemed to have been filed under subsection 30(1) of the Act by the person that, on the date of cancellation recorded in the International Register, was the holder of the same trademark as in the cancelled international registration and in respect of the goods or services specified in the transformation application;

• (b) the deemed application is deemed to include any document or information contained in the Protocol application, other than the statement of goods or services;

• (c) the deemed application is deemed to have the same filing date as the Protocol application; and

• (d) any steps taken in relation to the Protocol application before the day on which the International Bureau notifies the Registrar of the recording of the cancellation of the international registration are deemed to have been taken in relation to the deemed application.

Marginal note:Consequences — trademark subject of cancelled Protocol registration

149 If a transformation application is filed in accordance with section 147 for the revival of a Protocol registration,

• (a) the Registrar must, in respect of the goods or services specified in the transformation application, register the trademark in the name of the applicant and issue a certificate of its registration;

• (b) the registration of the trademark is deemed to have resulted from the Protocol application that resulted in the Protocol registration;

• (c) the day of registration of the trademark is deemed to be the day of registration of the Protocol registration;

• (d) despite subsection 46(1) of the Act and subject to any other provision of the Act, the registration of the trademark is or is deemed to be on the register for

  • (i) an initial period that begins on the day of registration of the trademark and ends when the international registration’s term of protection would have expired had the international registration not been cancelled, and

  • (ii) subsequent renewal periods of 10 years if the fee set out in item 14 of the schedule to these Regulations is paid

    • (A) for the first renewal period, within the period referred to in section 76 or within six months after the day on which the trademark is registered under paragraph (a), determined without taking into account paragraph (c), whichever ends later, and

    • (B) for each subsequent renewal period, within the period referred to in section 76; and

• (e) any steps taken in relation to the Protocol registration before the day on which the International Bureau notifies the Registrar of the recording of the cancellation of the international registration are deemed to have been taken in relation to the registration made under paragraph (a).

Denunciation

Marginal note:Application of Article 15(5) of Protocol

150 Article 15(5) of the Protocol applies to a holder of an international registration on which a Protocol application or a Protocol registration is based if that holder is no longer entitled to file international applications under Article 2(1) of the Protocol because of the denunciation of the Protocol by a contracting party.

PART 3Transitional Provisions, Repeal and Coming into Force

Transitional Provisions

Marginal note:Definitions

151 The following definitions apply in this Part.

coming-into-force day

coming-into-force day means the day on which these Regulations come into force under subsection 162(1). (date d’entrée en vigueur)

former Regulations

former Regulations means the Trade-marks Regulations as they read immediately before the coming-into-force day. (ancien règlement)

Marginal note:Filing date already determined

152 If, before the coming-into-force day, the date of filing of an application for the registration of a trademark has been determined in accordance with section 25 of the former Regulations, the filing date of the application is that date of filing.

Marginal note:Filing date — coming into force

153 If, in respect of an application for the registration of a trademark, all of the items set out in subsection 33(1) of the Act have been received by the Registrar before the coming-into-force day but not all of the items set out in section 25 of the former Regulations have been delivered to the Registrar before that day, the filing date of the application is, subject to section 34 of the Act as it read immediately before the day on which section 339 of the Economic Action Plan 2014 Act, No. 1 comes into force:

• (a) the coming-into-force day, in the case that the difference between the fee set out in item 7 of the schedule to these Regulations and the fee referred to in section 1 of the schedule to the former Regulations has been paid before the coming-into-force day; and

• (b) the date on which that difference is paid, in the case that that difference has not been paid before the coming-into-force day.

Marginal note:Exception to subsections 32(1) and (2)

• 154 (1) If the filing date, determined without taking into account section 34 of the Act, of an application for the registration of a trademark, other than a Protocol application as defined in section 96 of these Regulations, precedes the coming-into-force day and the trademark has not yet been registered on that day, subsections 32(1) and (2) of these Regulations do not apply and the person that filed the application must pay the fee set out in item 20 of the schedule to these Regulations in addition to the fee, set out in item 1 of the schedule to the former Regulations, that they have already paid.

• Marginal note:Deemed payment of fees

  (2) If the fee set out in item 20 of the schedule to these Regulations is paid in respect of an application referred to in subsection (1), the fee referred to in that item is deemed to have been paid for

  • (a) when that application is itself a divisional application,

    • (i) in the case that it stems from a series of divisional applications, the original application from which stems the series and every divisional application that stems from that original application, and

    • (ii) in the case that it does not stem from a series of divisional applications, its corresponding original application and every divisional application that stems from it; and

  • (b) when that application is not itself a divisional application, every divisional application that stems from it.

Marginal note:Exception to subsection 32(4)

155 If, before the coming-into-force day, in respect of an application for the registration of a trademark, the items set out in paragraphs 33(1)(a) to (e) of the Act have been received by the Registrar, the fee for the purpose of paragraph 33(1)(f) of the Act, referred to in section 69.1 of the Act, in respect of that application is, despite subsection 32(4) of these Regulations, the fee set out in item 1 of the schedule to the former Regulations.

Marginal note:Exception to section 34

156 Despite section 34, if the date of a notice of a default in the prosecution of an application precedes the coming-into-force day, the time within which the default may be remedied is that specified in the notice.

Marginal note:Exception to paragraph 35(2)(e)

157 Despite paragraph 35(2)(e) of these Regulations, an application for registration referred to in section 69.1 of the Act may, if the trademark remains substantially the same, be amended to add a statement referred to in paragraph 31(b) of the Act or paragraph 31(e), (f) or (g) of these Regulations.

Marginal note:Exception to section 75

158 Despite section 75 of these Regulations, for the purpose of section 46 of the Act, the renewal fee for a registration in respect of which the day of the last renewal — or, if the registration has never been renewed, the day of the registration — is more than 15 years before the coming-into-force day is the fee set out in item 7 of the schedule to the former Regulations.

Marginal note:Exception to section 76 — first renewal

159 Despite section 76 of these Regulations and subject to section 160 of these Regulations, for the purpose of subsections 46(2) to (5) of the Act, in respect of the first renewal, on or after the coming-into-force day, of a registration that is on the register on the day before the coming-into-force day, the period within which the renewal fee must be paid

• (a) begins on the later of the day of registration and the day of last renewal, and

• (b) ends on the later of

  • (i) the end of the period of 15 years and six months that begins after the later day described in paragraph (a), and

  • (ii) if a notice is sent under subsection 46(2) of the Act, the end of the two-month period that begins after the date of that notice.

Marginal note:Exception to section 76 — goods or services not grouped

160 Despite section 76 of these Regulations, if the goods or services in respect of which a trademark is registered are not, at the end of the period established by section 76 or 159 of these Regulations, as the case may be, grouped on the register in accordance with paragraph 26(2)(e.1) of the Act, the period within which the fees set out in subparagraphs 14(a)(ii) and (b)(ii) of the schedule to these Regulations must be paid ends on the expiry of the two-month period that begins after the day on which the Registrar sends to the registered owner a notice stating that the register has been amended to so group the goods or services and that the registration will be expunged in the event that the fees are not paid within the prescribed period, in the case where that two-month period ends later than that period established by section 76 or 159 of these Regulations.

Repeal

161 The Trade-marks RegulationsFootnote ¹ are repealed.

• Return to footnote ¹SOR/96-195; SOR/2007-91, s. 1

Coming into Force

Marginal note:S.C. 2015, c. 36

• Footnote ^*162 (1) Subject to subsection (2), these Regulations come into force on the day on which section 67 of the Economic Action Plan 2015 Act, No. 1, 2015 comes into force.

• Marginal note:February 1, 2019

  (2) If section 67 of the Economic Action Plan 2015 Act, No. 1 comes into force before February 1, 2019, sections 123, 124 and 134 come into force on February 1, 2019.

• Return to footnote ^*[Note: Regulations in force June 17, 2019, see SI/2018-100.]