Archived — Proposed Amendments to the Trade-marks Regulations 2014 — Page 3 of 5

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Part 2 - Implementation of the Madrid Protocol

In order to implement the Madrid Protocol, a new set of proposed regulations will be created as a part of the Trade-marks Regulations. The following describes the policy objectives that will guide the development of these new regulations and includes commentary to provide more detailed explanation, when required.

General

The Trade-marks Act and Trade-marks Regulations will apply to international registrations unless the Trade-marks Act and Trade-marks Regulations are inconsistent with the Madrid Protocol. This part of the Regulations governs these inconsistencies and sets out how the processing of international registrations will occur. One of the key goals of this section is to minimize the differences between a domestic trademark application and one done through the Madrid system. A definitions section will be included in this part to supplement those definitions already found in the Trade-marks Regulations. The new definitions have specific meaning in the international context and are consistent with the definitions used in other jurisdictions.

The proposed new regulations include the following:

Purpose

  1. The purpose of this part of the Trade-marks Regulations is to carry into effect in Canada the Madrid Protocol.

Application

  1. For the purpose of this part, the Trade-marks Act and Trade-marks Regulations apply, to the extent applicable and with all necessary modifications to any applicant for an international registration for which Canada is the Office of Origin, holder of an international registration designating Canada and any holder of a protected international trademark, unless and to the extent that:
    1. this part provide otherwise; or
    2. any provision of the Trade-marks Act or Trade-marks Regulations is inconsistent with the Madrid Protocol or the Common Regulations.

Definitions

  1. Create the following definitions:

    Basic application means the application for the registration of a trademark that has been filed with the Office of a Contracting Party and that constitutes the basis for an application for the international registration of that trademark.

    Basic registration means the registration of a trademark that has been registered by an Office of a Contracting Party and that constitutes the basis for an application for the international registration of that trademark.

    Common Regulations means the regulations adopted under Article 10 of the Madrid Protocol, with effect from 1 April 1996, as replaced, revised, or amended from time to time.

    Contracting Party of the holder has the meaning given by Rule 1 (xxvibis) of the Common Regulations.

    Date of request means, in relation to an international registration designating Canada, the date the notification of the request for extension of protection to Canada is sent to Canada from the International Bureau.

    Date of International Registration means the date recorded in the International Register as the international registration date for a trademark in respect of which a request was made under Article 3ter(1) of the Protocol for extension of protection to Canada.

    Date of Recording means the date recorded in the International Register as the recordal date for a request made under Article 3ter(2) of the Protocol for extension of protection to Canada.

    Holder means the person in whose name the international registration is recorded in the International Register.

    International Application means an application to the International Bureau for registration of a trademark in the International Register.

    International Bureau means the International Bureau of the World Intellectual Property Organisation.

    International Register means the register of trademarks maintained by the International Bureau for the purposes of the Madrid Protocol.

    International Registration means the registration of a trademark in the International Register.

    International Registration designating Canada (IRDC) means an international registration requesting extension of protection to Canada under Article 3ter (1) or (2) of the Madrid Protocol.

    Office of Origin has the meaning given by Article 2(2) of the Protocol.

    Protected International Trademark means a trademark to which protection resulting from the international registration of the mark is extended in Canada in accordance with this part of the Regulations.

    Madrid Protocol means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on 27 June 1989, as amended from time to time.

    Register means the register of trademarks kept under section 26 of the Act.

Application of International Registration (Canada as Office of Origin)

This part deals with applications for international registration of trademarks that are to be filed with the International Bureau through the Canadian Intellectual Property Office (CIPO). The proposed regulations, among other things, will specify: who can apply for an international registration, the contents of an application, the role of the Registrar in processing applications for international registrations and the process for dealing with incomplete applications.

The proposed new regulations include:

Eligibility to Apply for International Registration (Article 2(1)(i) of the Protocol)

  1. A person who is the registered owner of a registered trademark or an applicant for registration of a trademark may apply for international registration of the trademark.
  2. The person shall:
    1. be a Canadian citizen (or a national of Canada);
    2. be domiciled in Canada; or
    3. have a real and effective industrial or commercial establishment in Canada.
  3. Two or more persons may jointly apply for international registration of a trademark as allowed by Rule 8 of the Common Regulations.

Application for International Registration (Rule 9(1) and (2) of the Common Regulations)

  1. An application for international registration shall:
    1. Comply with the requirements of the Madrid Protocol (the applicant shall use the official form issued by the International Bureau (MM2) or another form that requires the same information and uses the same format);
    2. The international application shall be in English or French;
    3. Be filed with the International Bureau through the intermediary of the Office of the Registrar of Trademarks; and
    4. Be accompanied by the certification fee (if any) set out in the Tariff of Fees.
  2. For the purpose of paragraph 7(a) above, the application shall be filed with the Registrar of Trademarks by using the online application service that may be accessed through the Canadian Intellectual Property Office's website (if available).
  3. Any communication for transmittal to the International Bureau through the intermediary of the Registrar shall be in English or French.

Functions of the Registrar

  1. The Registrar shall perform the functions, under the Madrid Protocol, of the Office of origin in relation to:
    1. the international application; and
    2. if the international application results in an international registration, the international registration.
  2. The Registrar shall:
    1. review the international application; and
    2. certify that the information in the international application corresponds with the information held by the Registrar in respect of the basic application or the basic registration, as the case requires.
  3. If the international application results in an international registration, the Registrar shall notify the International Bureau if the basic application or the basic registration is withdrawn, limited, cancelled, abandoned, expunged, rejected, expires or otherwise ceases to have effect in respect of some or all of the goods or services listed in the international registration,—
    1. within 5 years after the date of the international registration; or
    2. after that time, if the action that resulted in the basic application or the basic registration being so affected began before the end of that 5-year period.
  4. Where the review of the international application reveals any irregularities, including any of the following specific irregularities, the Registrar shall notify the applicant and require that the applicant submit the outstanding items within the date specified in the Registrar's notice in order to ensure the application is sent to WIPO within 2 months.
    1. the international application is not filed on the proper form, and does not contain all the indications and information required by that form;
    2. the list of goods and services contained in the international application is not covered by the list of goods and services appearing in the basic application or basic registration;
    3. the representation of the trademark which is subject to the international application is not identical to the trademark as appearing in the basic application or basic registration;
    4. any indication in the international application as to the trademark, other than a disclaimer or a colour claim, does not also appear in the basic application or basic registration;
    5. if colour is claimed in the international application as a distinctive feature of the trademark, and the basic application or basic registration is not in the same colour or colours;
    6. if no colour is claimed in the international application and the basic application or basic registration claims colour or colours as a distinctive feature of the mark;
    7. the applicant is not eligible to file an international application through the intermediary of the Registrar in accordance with Article 2(1)(i) of the Madrid Protocol; or
    8. the prescribed fee is missing or insufficient.
  5. If there are no irregularities or if the irregularities are remedied within the time specified by the Registrar, which period shall not be extended, the Registrar shall take all reasonable steps to ensure that the application is received by the International Bureau within two months from the date the Registrar received the request (pursuant to paragraph 7).
  6. If the irregularities referred to in paragraph 13 are not remedied within a 6 month period, which period shall not be extended, the Registrar shall refuse to forward the international application to the International Bureau and the international application is deemed never to have been filed.
  7. The date of the international application is the date on which the Registrar receives the request (and the certification fee, if any) so long as it is received by the International Bureau within two months from the date the Registrar receives the request. Otherwise, it is the date received by the International Bureau.
  8. Any fees payable to the International Bureau under the Madrid Protocol shall be paid directly by the applicant to the International Bureau.

Irregularities – Rule 12 & 13 Common Regulations

  1. Any response to the International Bureau with respect to irregularities is to be provided directly by the applicant to the International Bureau, except that, a response to an International Bureau irregularity notice relating to the classification or specification of goods or services is to be developed by the applicant but shall be approved by the Registrar and sent to the International Bureau by the Registrar.

International Registrations Designating Canada (IRDC)

This part of the Regulations deals with international applications filed in other countries where the applicant has designated Canada as a country in which protection is sought. The proposed regulations will ensure that the international registration process is consistent with the Canadian registration process and that all of the requirements for registration in Canada are met. The proposed regulations, among other things, will specify how competing international and national applications will be dealt with. The regulations will also address opposition proceedings, filing dates, extensions of time, and expungement of international registrations.

The proposed new regulations include:

Examination of International Registrations designating Canada.

  1. An IRDC that the International Bureau transmits to the Registrar is deemed to be filed in accordance with section 30 of the Trade-marks Act (the "Act") and is deemed to be an application for registration in Canada for the purposes of the Act and Regulations. The filing date of an IRDC for the purposes of the Act and Regulations is the earlier of:
    1. The international registration date, if the request for extension of protection was filed with the international application;
    2. The date of recording of the request for extension of protection, if the request for extension of protection was made after the international registration date; and
    3. The date of priority claimed pursuant to paragraph 25 below.
  2. An IRDC shall be examined as an application for registration, and if on such examination there is no basis on which to refuse protection, the Registrar shall cause the trademark to be published in accordance with section 37 of the Act.
  3. Subject to the provisions relating to opposition below, an IRDC shall be subject to opposition under section 38 of the Act.

Priority claim of an IRDC

  1. Provide that section 34 of the Act does not apply to an IRDC.
  2. For the purposes of section 16(1)(a) of the Act, "filing date" in that section means the earlier of:
    1. The international registration date, if the request for extension of protection was filed with the international application;
    2. The date of recording of the request for extension of protection, if the request for extension of protection was made after the international registration date; and
    3. The date of priority claimed pursuant to paragraph 25 below.
  3. Further, for the purposes of section 16(1)(b) of the Act a trademark in respect of which an application for registration has been previously filed includes an IRDC and the relevant date is determined as in a-c above.
  4. The holder of an international registration with a request for extension of protection to Canada is entitled to claim priority within the meaning of Article 4 of the Paris Convention for the Protection of Industrial Property if:
    1. the request for extension of protection contains a claim of priority; and
    2. the date of international registration or the date of the recordal of the request for extension of protection to Canada is not later than 6 months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention for the Protection of Industrial Property) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention for the Protection of Industrial Property).

Grounds for Refusal (Rules 17(1), (2) and (3) Common Regulations)

  1. If the Registrar considers that the (requirements for registration – ensure all of section 37 of the Act applies) are not met, or are met only in relation to some of the goods or services in respect of which protection in Canada has been requested, the Registrar shall,
    1. Give notification of a provisional refusal of the international registration to the International Bureau; and
    2. Specify in the notification a period within which the holder may respond.

Refusals

  1. If, an IRDC is refused, the Registrar shall declare in a notification of refusal that the extension of protection cannot be granted, together with a statement of all grounds on which the refusal is based.
  2. If an IRDC is abandoned under section 36 of the Act, the Registrar will confirm refusal for protection of the trademark which is the subject of that IRDC.
  3. Where all procedures before the Registrar have been completed and there is no possible ground for the Registrar to refuse protection, (no office action and no opposition; i.e. no provisional refusal was issued) the Registrar shall, before the expiry of the 18 month period (calculated from the date that WIPO notifies the Registrar of an IRDC), send to the International Bureau, a statement to the effect that protection is granted to the trademark in Canada and issue a certificate of grant of protection.

Notice to International Bureau

  1. Within 18 months after the date on which the International Bureau transmits to the Registrar an IRDC, the Registrar shall transmit to the International Bureau any of the following that applies to such request:
    1. A notification of refusal based on an examination of the IRDC.
    2. A notification of refusal based on the filing of an opposition to the IRDC.
    3. A notification of the possibility that an opposition to the IRDC may be filed after the end of that 18-month period.
  2. If the Registrar has sent a notification of the possibility of opposition under paragraph 30(c), the Registrar shall, if applicable, transmit to the International Bureau a notification of refusal on the basis of the opposition, together with a statement of all the grounds for the opposition, within 7 months after the beginning of the opposition period or within 1 month after the end of the opposition period, whichever is earlier.
  3. If a notification specified in paragraph 30(a) or (b) is not sent to the International Bureau within the time period with respect to a request for extension of protection, the IRDC shall not be refused and the Registrar shall issue a certificate of grant of protection.
  4. If the holder is successful at overcoming a refusal with respect to all the goods or services or some of the goods and services and no opposition is filed, the Registrar shall confirm protection in Canada with the International Bureau for all or some of the goods or services and issue a certificate of grant of protection.

Opposition

  1. A person who opposes (the Opponent) an IRDC, may file with the Registrar of Trade-marks a statement of opposition within 2 months after the advertisement of the IRDC.
  2. The statement of opposition shall be filed with the Registrar of Trade-marks by using the online service that may be accessed through the Canadian Intellectual Property Office's website (if available)

Extension of Time to Oppose

  1. The Registrar may, if requested, extend the deadline for filing a statement of opposition:
    1. By up to 2 months, without the consent of the holder of the international registration; or
    2. Up to 3 months, with the holder's consent.

      The notification of the provisional refusal (the grounds of opposition) shall be communicated to the International Bureau no later than 7 months from the date on which the opposition period begins. This timing will eliminate the ability for a cooling off period to be requested before the filing of a statement of opposition.

  2. The Registrar shall not grant a retroactive extension of time to file a statement of opposition if the request is received more than 1 month after the deadline for filing a statement of opposition.
  3. If a statement of opposition is filed, the Registrar shall give notification to the International Bureau of a refusal based on opposition and state in the notification the grounds of the opposition.

Counterstatement

  1. For greater certainty, a holder of an international registration to whom a statement of opposition has been sent shall file and serve a counterstatement within 2 months of the date of the refusal based on opposition and in the manner prescribed in the Trade-marks Regulations. If the holder fails to comply with this requirement in relation to any goods or services in respect of which protection is opposed:
    1. The Registrar will treat the holder's request for protection in Canada in respect of those goods or services as withdrawn; and
    2. The Registrar's refusal will be confirmed to the International Bureau in respect of those goods or services.

Evidence

  1. If the applicant does not file evidence or a statement that the application does not wish to file evidence within four months after the expiry of the time for submitting opponent's evidence or statement, the Registrar will confirm the refusal for the opposed goods and services to the International Bureau.
  2. If the opponent does not file evidence or a statement that the opponent does not wish to file evidence within four months after the expiry of the time for filing the counter statement, the Registrar will send a statement to the International Bureau to the effect that protection is granted in Canada for the opposed goods and services and issue a certificate of protection.

Decision

  1. In addition to the notification of the parties to an opposition of the Registrar's decision pursuant to section 38(12) of the Act, the Registrar will simultaneously to the International Bureau, confirm refusal for protection of the mark or send a statement to the effect that protection is granted in Canada for the opposed goods and services. If the Registrar's decision is appealed pursuant to section 56 of the Act and a further decision or decisions issue, the Registrar will make any necessary changes to the Register and notify the International Bureau pursuant to Rule 18ter3 (4) of the Common Regulations.

Cancellation and Expungement

  1. The Registrar shall notify the International Bureau if a protected international trademark is cancelled or the goods and services are amended to any extent.
  2. For the purposes of applying sections 11.14-11.15, 17, 18, 18.1, 45 and 57 of the Act:
    1. The reference in sections 11.19, 17(2), 18 and 45 of the Act to the date of registration shall be treated as a reference to the date of the certificate of protection;
    2. The references to person in section 11.19 and 17 are taken to mean holder.
    3. The references to registered owner in section 45 of the Act are taken to mean holder;
    4. References in section 45 to the goods or services specified in the registration shall be treated as references to those in respect of which it is protected;
    5. References in section 45 of the Act to the registration of a trademark being expunged shall be treated as references to the protection of a protected international trademark (Canada) being revoked; and
    6. References in sections 18 and 57 to the registration of a trademark being declared invalid shall be treated as references to the protection of a protected international trademark (Canada) being declared invalid.

Protected International Trademarks – Rights and Protection

This part of the proposed new regulations ensures that the protection granted in Canada will be the same for both a protected international trademark and a registered trademark. This part also excludes international registrations from the renewal provisions in the Trade-marks Act since the renewal of an international registration is handled by the International Bureau of WIPO, which then informs the respective national offices that the renewal has occurred. Finally, this part sets out that the protection granted in Canada may be issued in respect of just some of the goods and services designated in the international registration.

The proposed amendments include:

  1. From the date of the certificate of grant of protection
    1. such grant of protection shall have the same effect and validity as a registered trademark; and
    2. the holder of the international registration shall have the same rights and remedies as the owner of a registered trademark.
  2. Sections 19, 20, 21, 51.01-53.1, 53.3, 54(2) and 55 apply in relation to a protected international trademark. For these sections references to:
    1. A registered trademark correspond to a protected international trademark;
    2. Goods and services refer to the goods and/or services for which protection has been granted; and
    3. The owner refers to the holder.

Specifically, the following terms need to be substituted into sections 19, 20, 21, 51.01-53.1 and 55 for application to international registrations:

  • protected international trademark (Canada)
    • registration of a trademark (sections 19, 20(1.1), 20(1.2), 20(2))
    • registered trademark (sections 20, 21, 51.01, 51.02-51.05, 51.08-51.09,53.1 and 53.3)
    • trademark registered (sections 22 and 51.01(a))
  • goods and/or services for which protection has been granted
    • in respect of those goods and services (section 19)
    • registered trademark for such goods (section 51.03)
    • trademark registered for such goods; trademark registered for such services (section 51.01)
    • trademark registered for goods (section 51.02)
    • goods for which the trademark is registered (section 51.04)
  • holder
    • owner of a registered trademark (sections 20, 51.04(1), 53.1)
    • registered owner of the trademark (section 21)
    • owner of the trademark (sections 19 and 51.03(2))
    • owner of that registered trademark (section 51.01)
    • trademark owner (sections 51.04, 51.09)
    • owner of a relevant registered trademark (section 51.06, 51.08, 51.09, 51.11(5), 51.12)
    • owner of a trademark (section 51(1))
    • owner of the registered trademark (section 53.3)

Protections

  1. The trademark that is the subject of the request for protection shall be protected as a protected international trademark and in the case where a refusal applies in respect of some of the goods or services in respect of which protection in Canada has been requested, protection shall apply, only in relation to the remaining goods or services.

Renewals

  1. Section 46 of the Trade-marks Act with respect to renewals of trademarks does not apply. The international registration is effective for ten years from the date of international registration. It may be renewed for ten year periods as set forth in the Madrid Protocol. When the Registrar receives notification from the International Bureau of the renewal of an international registration, this shall be recorded in the Canadian register.

Transformation

This part provides a framework that would allow holders of international registrations whose registration is cancelled in whole or in part by the IB at the request of their country of origin (e.g. an American applicant who registered his/her mark in Canada via Madrid whose U.S. registered trademark is then cancelled by the USPTO) to "transform" their international registration into a application for registration or their protected international trademark into a registered trademark. The Regulations will define how and when an owner of an international registration can transform the cancelled registration into a national application or registration.

  1. If an international registration is cancelled, in whole or in part, by the International Bureau at the request of the Office of Origin, within the five year period from the date of the international registration or based on an action commencing during the five year period, the Registrar shall transform an IRDC into an application for registration or a protected international trademark into a registered trademark, if:
    1. Within three months after the date on which the international registration is cancelled, the holder files with the Registrar a transformation application, including the following details:
      1. the international registration number;
      2. the date of cancellation of the international registration;
      3. whether the transformation application relates to all the goods and services or the specific goods and services to which the IRDC or protected international trademark relates and their respective Class numbers; and
      4. address for service, if any.
    2. the transformation application is in relation to any of the goods and services to which the cancellation applies that were listed in the IRDC or international registration, immediately before the cancellation.
  2. If the trademark is the subject of an IRDC, the Trade-marks Act and Trade-marks Regulations apply for the purposes of the application as if it were an application for registration.
    1. The filing date for the transformation application is taken to be the date of international registration or the date of recording, as applicable; or
    2. If the IRDC in respect of the trademark included a priority claim, the priority date allowed under the claim; and
    3. Anything already done for the purposes of the IRDC is to be treated as having been done for the purposes of the transformation application.
  3. If the transformation application is in respect of a protected international trademark, the Trade-marks Act and Trade-marks Regulations apply as if it were a registration and the date of registration is deemed to be the date of the certificate of grant of protection.
  4. If no application for transformation is filed as prescribed above, the goods and services will be deleted if there is a partial cancellation or the IRDC is cancelled.
  5. Notification of any such application for transformation will appear on the Canadian Intellectual Property Office's website.

Replacement

These proposed provisions would enable a holder of both a Canadian registration and an international registration in Canada to replace in the Register, the Canadian registration with the international one, provided that the two registrations are for the same trademark, for the same goods and services and that the international registration is more recent that the Canadian one. This replacement would not affect the rights acquired in Canada through the Canadian registration.

The proposed provisions would specify that the holder of the international registration would continue to benefit from the rights acquired through the Canadian registration even if the Canadian registration is not renewed.

  1. Upon written request from the holder, the Registrar shall record the replacement of the Canadian registration with the international registration in the Register and publish a notice thereof.
  2. An international registration is deemed to replace a Canadian registration for the same mark and the same goods and services recorded in the name of the same person. The effect of replacement is that, if the national registration is not renewed, the holder of the international registration may continue to benefit from the earlier rights acquired by reason of that national registration. Although replacement takes place automatically, the holder of the international registration may request the Contracting Party take note in its register of the international registration.
  3. An international registration shall be treated as being registered under the Act as of the date of registration of a registered trademark in relation to all the goods or services in respect of which the registered trademark was registered if:
    1. both registrations are owned by the same person and identify the same trademark;
    2. all the goods and/or services listed in the registration are also listed in the international registration; and
    3. the international registration takes effect after the date of the registration.
  4. The holder of an international registration that meets the requirements of subsection 21(1) of the Common Regulations may file a request to note replacement of the registration with the international registration. If the request contains all of the following, the Registrar will make a notation on the Register of the replacement and publish the notation on in the Journal and the Canadian Intellectual Property Office's website:
    1. The number of the international registration; and
    2. the registration number of the replaced registration.
  5. The international trademark registration has the priority date of the registered trademark in respect of all the relevant goods and services covered by the registered trademark.
  6. Where the Registrar has taken note of an international registration in accordance with subsection 21(2) of the Common Regulations he shall notify the International Bureau accordingly. Such notification shall indicate the following:
    1. the number of the international registration in question,
    2. the filing date and number of the application for registration of the trademark
    3. the registration date and number of the registration
    4. the priority date, if any, of the registration and
    5. information relating to other rights acquired by virtue of the registration in Canada.

Change in Ownership of International Registration

An international registration may change ownership following an assignment of a trademark, merger of one or more companies, a court decision or for other reasons. One of the advantages of an international registration is that a change of ownership can be recorded in all of the countries designated by recording of the new owner of the international registration with the International Bureau.

A holder requests the change of ownership by submitting an official form to the International Bureau or, in some circumstances, by submitting evidence of the assignment to CIPO who then transmits the form to the International Bureau. These circumstances include where the assignee is Canadian, the assignment effects goods and services in Canada and the assignee cannot obtain the assignor's signature.

These changes help simplify the process for rights holders to transfer their trademarks, which helps ensure that the Register is accurate.

The proposed amendments include:

  1. An IRDC or protected international trademark is transferable subject to paragraph 64(a) below, and deemed always to have been transferable, either in connection with or separately from the goodwill of the business and in respect of either all or some of the goods or services in association with which it has been used.
  2. The assignee must be a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment either in a country that is a Contracting Party or in a country that is a member of an intergovernmental organization that is a Contracting Party.
  3. Nothing in paragraph 60 prevents an IRDC or protected international trademark from being held not to be distinctive if as a result of a transfer thereof there subsisted rights in two or more persons to the use of confusing trademarks and the rights were exercised by those persons.
  4. On transmittal of change of ownership received from the International Bureau, the Register shall update the Register.
  5. Requests to record a change of ownership must be forwarded to the International Bureau. The Registrar will only accept for submission and forward to the International Bureau a request to record a change of ownership if all of the following conditions have been met:
    1. the assignee cannot obtain the assignor's signature on the request to record the change;
    2. the assignee is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in Canada;
    3. the assigned goods/services apply to the designation in Canada; and
    4. the Registrar has received evidence satisfactory to the Registrar of the change of ownership.

Divisionals

  1. Section 39 of the Trade-marks Act does not apply with respect to an IRDC.
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