Draft – Guide to Transitional Provisions of Bill C-31
Part 1: Filing date not granted
Applications that have been received by the Office but have not met the filing requirements set out in section 25 of the current Trade-marks Regulations ("Regulations") will be re-assessed under the requirements set out in section 33 of the amended Trademarks Act ("Act").
If an application was not granted a filing date prior to the coming into force (CIF) date but did meet the requirements under subsection 33(1) of the amended Act, its filing date will be the CIF date. Examples of situations in which the Office would accept a previously unacceptable application include:
- Lack of a mailing address for the applicant but rather only an email address or phone number;
- No claim of previous use or intention to use the trademark;
- An incomplete claim to registration and use abroad;
- An application for a trademark that consists of a design did not include a drawing of the trademark but rather contained only a written description.
If, despite the above-mentioned re-assessment, all of the requirements under subsection 33(1) of the amended Act were not provided by the CIF date, the Registrar will issue a notice to the applicant setting out the outstanding requirements. Applicants will have two (2) months from the date of the notice to correct the deficiencies in the application. If the applicant does not submit the outstanding items within those two months, the application will be deemed never to have been filed.
Given that the application fee structure will change on the CIF date, the situation could arise that the only outstanding requirement is the prescribed filing fee under paragraph 33(1)(f) of the amended Act. In such a situation, the Registrar will send a notice to the applicant outlining this deficiency, unless the original application contained a general authorization to charge a deficiency.
Part 2: Filing date granted
All applications that have been granted a filing date but have not been advertised in the Trade-marks Journal prior to the CIF date will be subject to most of the provisions of the amended Act. This includes applications that have:
- been filed but not assigned to an Examiner;
- an outstanding examiner's report; or
- replied to an examiners report
All of these applications will be re-assessed to ensure they meet the registrability requirements of the amended Act.
Bases for registration (claims)
All previous bases for registration (prior use or making known in Canada, foreign registration and use, proposed use) of a trademark are removed in the amended Act. For applications not advertised at the CIF date, the Office will not require that the claims be removed; however, these claims will not appear in the particulars of the advertisement. As well, applications that include a foreign application or registration as a claim basis will no longer require a certified copy of the corresponding foreign registration.
Not inherently distinctive
In view of paragraphs 32(1)(b) and 37(1)(b) of the amended Act, the Registrar will be able to refuse a trademark if it is not inherently distinctive. Therefore, applications that have not been advertised at the CIF date will require reassessment by an examiner for inherent distinctiveness and, if applicable, the applicant will be given the opportunity to furnish the Registrar with evidence that the trademark was distinctive at the time of filing the application. Further information regarding the determination of inherent distinctiveness will be provided in the Trademarks Examination Manual.
As the relevant section of the Act has been removed, applicants may not claim the benefit of section 14 to overcome an objection under paragraphs 12(1)(a) or (b) after the amended Act comes into force. If an application claiming the benefit of section 14 has not been advertised at the CIF date, the applicant will be required to file a revised application removing the claim.
Under the current Act, applications for certification marks must be based on use in Canada before the filing date of the application. However, prior use is no longer a requirement for the filing of certification marks under the amended Act. Applications for certification marks that were filed on the basis of proposed use prior to the CIF date can proceed to advertisement if all other objections are overcome or requirements are met.
Subsection 12(2) of the amended Act provides the Registrar the authority to object to the registration of a trademark that contains features that are dictated primarily by a utilitarian function. Applications that have not been advertised prior to the CIF date will require re-assessment by the examiner to assess whether a trademark is primarily functional.
As the amended Act no longer includes a definition of "distinguishing guise", applications for distinguishing guises that have not been advertised at the CIF date will require amendment. In particular, applicants will be required to amend their application for a distinguishing guise to specify that the trademark is either (a) a three-dimensional shape, or (b) a mode of packaging goods.
Under the amended Act, the goods and services in an application are to be grouped according to the classes of the Nice Classification. Therefore, applications that have not been advertised at the CIF date will need to be amended to properly group and class all of the associated goods or services.
The concept of "associated marks," as set out in section 15 of the current Act, will no longer exist in the amended Act. Therefore, at the CIF date, information pertaining to associated trademarks will be removed from all applications and registrations.
Standard character trademarks
Under the transitional provisions of the amended Regulations, an application filed before, but not yet advertised at, the CIF date may be amended to add a statement that the applicant wishes the trademark to be registered in standard characters, but only if the trademark remains substantially the same.
An application filed before, but not yet advertised at, the CIF date may be amended, but only if the trademark remains substantially the same, to add a statement referred to in paragraphs 31(e) to (g) of the amended Regulations.
The filing fee will be the fee under the previous Tariff of Fees ($250 if submitted online; $300 in any other case) and the new fee per additional Nice Class will not apply.
For applications having a filing date prior to the CIF date and that are not advertised at the CIF date, the registration fee of $200 as set out in Item 15 of the current Regulations must be paid.
Part 3: Advertised and Allowed
Trademarks that have been advertised or allowed prior to the CIF date will be subject to most of the provisions of the current Act.
As the different bases of filing have been removed from the amended Act, applications will no longer require a declaration of use prior to registration.
For applications having a filing date prior to the CIF date and that are advertised but not yet registered at the CIF date, the registration fee of $200 as set out in Item 15 of the current Regulations must be paid. Where a trademark has been advertised but has not yet proceeded to allowance at the CIF date, a notice to the applicant will be given by way of a registration fee notice explaining that in order for the application to proceed to registration, the prescribed fee of $200.00 must be paid on or before 6 months from the date of the notice. As section 39 of the current Act will have been removed, it will not be possible to issue a further "notice of allowance".
At the CIF date, many trademarks will have an outstanding allowance notice. As the declaration of use will no longer be required, the Office anticipates that many applicants will use the online registration service to pay the $200.00 registration fee. The Office will re-assess the number of allowance notices at approximately 6 months after the CIF date to determine how many of these notices are still outstanding, at which time it may issue a registration fee notice, thereby shortening any existing deadlines to 6 months.
If the registration fee is paid, it is deemed to have been paid for all original and divisional applications from which it stems, and all divisional applications stemming from that application, if and as applicable.
For applications that are pending at the CIF, the term of registration will depend on the date on which the Registrar processes the fee for registration. For example, a trademark will be granted an initial term of 15 years if the payment of the registration fee is processed by the Registrar prior to the CIF date. Alternatively, a trademark will be granted a term of 10 years if the payment of the registration fee is processed by the Registrar on or after the CIF date.
The grouping of the goods or services according to the classes of the Nice Classification will not be required for an application that was filed and advertised prior to the CIF date since it is only required for the purposes of advertisement, renewal or following a notice issued under section 44.1 of the amended Act.
If the applicant has not grouped and classed the goods and services associated with a trademark that proceeds to registration on or after the CIF date, the Office will issue a notice under section 44.1 of the amended Act. The registered owner will have six months after the date of the notice to furnish the Registrar with a statement of goods or services grouped in the manner described in subsection 30(3) of the Act.
Important: In the case of a divisional application filed after the two-month period immediately following advertisement in respect of a word mark or a distinguishing guise, the divisional application must, at the time of its filing, include a statement under paragraph 31(b) of the Act to the effect that the applicant wishes the trademark to be registered in standard characters, or under paragraph 31(e) of the Regulations that the trademark consists in whole or in part of a three-dimensional shape or a mode of packaging goods, as applicable. These statements are required at the time of filing the divisional application in view of paragraph 35(2)(e) of the Regulations since it will only be permissible to add or delete these statements if the application has not been advertised and the trademark remains substantially the same.
Moreover, when a divisional application which stems from an original application in respect of a word mark or distinguishing guise proceeds to registration, the applicant can request that the registrations be merged, in which case the Office will change the "type" of the resultant merged registration to a standard character, a three-dimensional shape or a mode of packaging goods, as applicable.
Part 4: Registered
Under subsection 46(1) of the current Act, registered trademarks are subject to renewal every 15 years. During the transition to the new Act, the fee, renewal term, and requirement to group and class goods or services according to the Nice classification will be dependent on several factors. For example:
If renewal is requested after the coming-into-force (CIF) date of the new legislation for a registration that expired before the CIF date:
- the old renewal fee ($350 or $400) applies;
- the renewal period is for 15 years;
- the owner will not be required to group and class goods or services according to the Nice Classification; and
- the Registrar will, shortly after the renewal, send a notice requiring the grouping of goods or services according to the Nice classification.
If renewal is requested and processed before the CIF date and the registration expires after the CIF date:
- the old renewal fee ($350 or $400) applies;
- grouping the goods or services according to Nice is not required until a notice under section 44.1 of the amended Act is issued; and
- if the renewal period granted was for 15 years, it will be amended to 10 years as the effective date of renewal is after the CIF date of the amended Act;
- if the CIF date is known when the request is processed, and the effective date of renewal is after the CIF, the Office will grant 10 years
If renewal is requested after the CIF date for a registration that expired after the CIF date:
- the new renewal fee applies;
- the renewal period is for 10 years; and
- the registered owner will be required to group and class goods or services according to the Nice classification.
In all cases where the new renewal fees apply, the prescribed fee will be the basic renewal fee for the first class. If the goods or services are not correctly grouped and classed by the deadline to renew, owners will receive additional time to group and class the goods or services and pay the remaining fees. If the remaining fees are not paid, the Registrar will expunge the registration.
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