Backgrounder: Canada’s new Trademarks Regulations

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Backgrounder

The new Trademarks Regulations (Regulations) were drafted to enable Canada's accession to three international trademark treaties administered by the World Intellectual Property Office (WIPO), the Singapore Treaty, the Madrid Protocol, and the Nice Agreement, and to carry out the amendments that were made to the Trade-marks Act in 2014. In addition to harmonizing with international norms, the new Regulations also modernize Canada's trademarks regime by updating, codifying and simplifying the regulatory framework.

The Regulations were developed in close collaboration with stakeholders, including initial consultations on the drafting instructions in 2014, public web-based consultations on an early draft of the Regulations in the summer of 2017, and public consultation through the Canada Gazette, Part I, during the months of February and March, 2018.

Changes following publication in the Canada Gazette, Part I

Following the consultation period, only one substantive change was introduced. Section 10, which provided for "Acknowledgement of Written Communications", was removed as it was determined during the consultations that such a process was contrary to the commitment of reducing administrative burden.

All other changes to the Regulations are minor and focus on harmonizing the language of certain administrative sections with the corresponding sections and provisions in the Industrial Design Regulations and the Patent Rules.

The Canadian Intellectual Property Office (CIPO) would like to thank those that have participated in the consultations and collaborated in finalizing the Regulations.

The following provides a technical summary of the Regulations. It is divided into three main sections for ease of reference: the rules of general application; the Madrid Protocol; and opposition, section 45 and objection proceedings.

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Section 1 - Rules of General Application

Objective

The new Regulations regarding general correspondence were drafted in order to comply with the Singapore Treaty. In other instances, provisions were redrafted in order to better reflect modern communication practices, including allowing electronic means of communications with CIPO for both domestic and Madrid System applications.

In addition, transitional provisions have been included to specify how applications filed and trademarks registered before the coming into force (CIF) date will be treated.

Addressing of communications

Written communications may relate to only one application or one registration. The list of exceptions includes: the ability to pay a fee for the renewal of a registration; to appoint or revoke an appointment of a trademark agent; and for submitting evidence, written representations and requests for hearing in opposition, section 45 and objection proceedings.

Written communications sent to the Registrar that relate to an application or registration must identify the name of the applicant or registered owner and the application number (if known) or registration number, as applicable. Furthermore, the Registrar will not be required to have regard to any document submitted to the Office that is not in English or French, unless a translation of the document into one of those languages is submitted.

Address

Applicants, opponents and objectors must provide a single address for correspondence purposes.

Any person doing business before the Office is responsible for notifying the Registrar of any changes to their postal address.

Date of receipt

All electronic communications will be deemed to have been received on the day on which the Office receives them, including holidays and weekends.

Waiver of fees

The Registrar may, if satisfied that the circumstances justify it, waive the payment of any fee prescribed in the Act.

Refund

Any amount paid in excess of any fee prescribed by the Act, as long as a refund request is made within three years of the overpayment, must be refunded.

Affidavits or statutory declarations

The Regulations specify that if an affidavit or statutory declaration submitted to the Registrar is not an original, the original must be retained by the person who submitted it for one year after the expiry of all applicable appeal periods, or if an appeal is pursued, the original must be kept until the day on which a judgment is given. The original must be submitted to the Registrar if it is requested during this time.

Prescribed days for extension of time periods

The new Regulations clarify the existing practice regarding instances when the Office is closed for business, for all or part of the day. If a deadline is to fall on one of the days prescribed by the new Regulations (e.g., Canada Day), it will be extended to the next day on which the Office is open to the public. This list of days will be common across CIPO's lines of business. It is important to note that this provision does not apply to the filing date of an application, which can be obtained even when the Office is closed for business.

Trademark Agents

List of Trademark Agents

The rules pertaining to the listing, maintenance, removal and reinstatement of trademark agents remain relatively unchanged, with minor changes to the language as a result of modern drafting practices.

Representation by agents

The amended Act broadens the scope of business for which trademark agents may represent clients before the Office. As a result, the Regulations specify that trademark agents will be able to represent all parties in all business before the Office.

The requirement for trademark agents who do not reside in Canada to appoint an associate trademark agent who is a resident of Canada remains. In addition, trademark agents who are residents of Canada can also appoint an associate agent.

In cases where an agent has been appointed, the Office will only recognize communications from the appointed trademark agent or associate trademark agent. In other words, if a person has appointed a trademark agent in respect of any business before the Office, that person generally will not be able to represent themselves. Exceptions to this rule include the filing of an application for registration, the paying of a fee (such as for the renewal of a trademark registration), or the request of a transfer.

Application for the Registration of a Trademark

Language

With the exception of the trademark itself, the contents of an application for the registration of a trademark must be in English or French.

Manner of describing goods or services

In addition to being described in ordinary commercial terms, as specified by the Act, the Regulations provide that the statement for the goods or services appearing in an application clearly describes each of the listed goods or services in a manner that identifies a specific good or service.

This means that technical, lengthy, or ambiguous descriptions of the goods or services will not be acceptable and will be questioned by an examiner.

Representation or Description of the Trademark

The provisions requiring "drawings" and lining for colours has been replaced with new provisions which aim to simplify the representation requirements.

The applicant may include more than one view of the trademark and the representation is limited to a size of 8cm x 8cm to harmonize for the filing of the trademark through the Madrid system.

If the trademark consists in whole or in part of a three-dimensional shape, any representation must be a two-dimensional graphic or photographic representation.

In instances where an applicant wishes to claim colour as a feature of the trademark or if the trademark consists solely of colour(s), the application will need to contain a colour representation of the trademark. Alternatively, if colour is not claimed as a feature of the trademark or the trademark does not consist solely of colour(s), any representation provided by the applicant must be in black and white.

If the trademark consists in whole or in part of a sound, any representation must include a recording of the sound. Acceptable formats for the sound recording will be specified by way of a practice notice, and will depend on available technologies and commonly-adopted international standards.

The requirements for other types of non-traditional trademarks (e.g. scent, texture, hologram, moving image, or a mode of packaging goods) will be made available by way of a practice notice published on CIPO's website. Proceeding by way of a practice notice allows the Office to make any required changes more easily and quickly and adapt to emerging trends and practices.

Application Contents

The Regulations set out the content requirements for applications in addition to those listed out in the Act. They include:

Fee for application and filing date

A person who files an application will be required to pay the application fee, which will include the first class of goods or services, and a fee for each additional class of goods or services found in the application at the time of filing. In situations where the examiner determines that there are more Nice classes than were identified in the application at the time of filing, the applicant will be required to pay the applicable fees for additional classes prior to advertisement.

Request for Priority

The Regulations specify the manner and time for making and withdrawing a request for priority. A request for priority is to be filed within 6 months of the filing date of the application on which the request is based. In addition, a request to withdraw a priority must be filed prior to the advertisement of the trademark.

Time for remedying default

The time within which a default in the prosecution of an application may be remedied is two months after the date of the notice of the default. This does not constitute a change in practice, and has now been included in the Regulations to provide more clarity.

Amendment of Application

The Regulations provide applicants with more flexibility to amend an application prior to registration. An application may not be amended to add or delete any of the following:

Examples of permissible amendments include:

Transfer of Application for Registration of a Trademark

The Regulations reduce the onus on the applicant by only requiring the payment of the prescribed fee, the name and complete postal address of the transferee.

Divisional Application

Divisional applications may benefit applicants who receive objections during the examination and opposition phases of the application process. For example, the applicant could divide out any contentious goods or services into a separate application.

Divisional applications must identify the application number of the original application, if known, at the time of filing the divisional application.

With some exceptions, the steps taken on the original application will be deemed to have been taken on the divisional application. In effect, the divisional application will be a snapshot of the original application on a particular date. Once divided, the divisional application will be treated as independent from the original application and will be provided a new application number. Lastly, any established deadline for action by the applicant which is outstanding in the original application at the time of the division will continue to apply to each divisional application.

Advertisement

The Regulations list the minimum information that the Registrar will publish on CIPO's website when a trademark is advertised for opposition purposes.

Register

Particulars

References to representatives for service, associated trademarks, and applications filed on the basis of use and registration abroad have been removed.

Amendment to Merge Registrations

A divided application can be merged back to the registration it was divided from as an application. It is also possible to merge registrations that were each divided from the same original application. In order to be merged, the trademarks must be the same and have the same registered owner.

Time to furnish requested statement of goods and services for registered trademarks

Registered owners who have trademark registrations for which the goods or services have not been grouped according to the classes of the Nice Classification will be required to do so prior to renewing the registration. The Regulations now specify that registered owners will need to furnish the Registrar with a statement of the goods or services grouped according to the classes of the Nice Classification within six months of a notice sent by the Registrar.

Transfer of Registered Trademark

The onus on the applicant is reduced by only requiring the payment of the prescribe fee, the name and complete postal address of the transferee.

Renewal of Registration

Fee

The renewal fee, set out in the schedule, includes both the fee for the first class of goods or services and the fee for each additional class of goods or services, as applicable.

Prescribed period

The prescribed period to pay the renewal fee begins 6 months before the registration expires, and ends on the later of two dates (i.e. whichever gives more time to the trademark owner to renew):

For example, if the Registrar sends the renewal notice 1 month after the registration expires, the registered owner will have 6 months from the expiry date to renew the registration. On the other hand, if the Registrar sends the notice 5 months after the registration expires, the owner will have 2 months from the notice to renew.

Deemed date for merged registrations

If registrations are merged, the resultant merged registration will have the same earliest renewal date as the registration it has been merged into. This ensures that registrations are not granted more than 10 years by merging newer registrations with older ones.

Transitional Provisions

The transitional provisions specify how applications filed and trademarks registered before the coming-into-force date will be treated.

Filing date already determined

If an application was given a filing date under the previous Regulations prior to the CIF date, the application will keep that filing date.

Filing date at coming into force

Some of the amendments that were made to the Act simplify the requirements to obtain a filing date. As a result, if an application was not granted a filing date prior to the CIF date but did meet the requirements under the amended Act, it will be given the filing date of the CIF date. Examples of situations in which the Office would accept a previously unacceptable application include:

If an application was not given a filing date prior to the CIF date, and all of the requirements under the amended Act were not met by the CIF date, the Registrar will issue a notice to the applicant setting out the outstanding requirements. The applicant will have two (2) months from the date of the notice to correct the deficiencies in the application. If the applicant does not remedy those deficiencies within those two (2) months, the Registrar will deem the application never to have been filed under the amended legislation.

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. 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 which allows the Office to charge any additional amount on their already submitted credit card or deposit account.

Registration Fee

Applications filed prior to the CIF date and that are not yet registered at the CIF date will still require the existing registration fee of $200 to proceed to registration.

New Application Fee

Applications filed prior to the CIF date, and that have not been advertised at the CIF date, will not be subject to the new applications fees, including a fee per Nice class, since they were filed before the changes came into effect.

Default Notice

If a notice of default in the prosecution of an application was issued prior to the CIF date, the time period within which to remedy the default is the time period specified in the notice.

Amendments

Applications filed prior to the CIF date and that have not been advertised at the CIF date, and so long as the trademark remains substantially the same, may be amended to add a statement that:

Renewal Fee

If a registered trademark expires prior to the CIF date, it will not be subject to the new renewal fees.

First renewal

It is currently possible to renew a registration for one additional term at any time prior to its expiration or 6 months from the time the renewal notice is sent.

Under the Regulations, it will only be possible to renew a trademark 6 months before or 6 months after the renewal period expires, or two months after the Registrar sends a notice.

However, there will be an exception for a registered trademark that is on the register at the CIF that has not been renewed. For trademarks that will expire after the CIF, and only in the case of the first renewal that falls after the CIF date, it will be possible to renew at any time up to six months after the registration expiration date. If for any reason a renewal notice is issued late, the owner will have 6 months from the day the registration expired or 2 months from the date of the notice, whichever is later.

Goods or services not grouped

After the CIF, the renewal fee for registered trademarks will include both a fee for the first class of goods or services and a fee for each additional class of goods or services. Therefore, the registrations must first be grouped according to the classes of the Nice Classification in order to assess the correct renewal fee.

The Regulations provide that the fee for the first class will be due within the prescribed renewal period. The fee for each additional class will be due two months after the Registrar sends the owner confirmation that the goods or services are properly grouped. If these additional fees are not paid within the two months, the registration will be expunged. This additional time will provide both the Office and the owner time to finalize the classification of the goods or services.

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Section 2 – Implementation of Madrid Protocol

Objective

This section governs trademark applications filed under the Madrid Protocol and minimizes the differences in format, content and treatment of a domestic trademark application and one received through the Madrid System.

Of note, several important definitions related to the Madrid System have been introduced to facilitate understanding, such as "basic application, "basic registration", "Protocol application", "Protocol registration", and "contracting party". :

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

This part of the Regulations will apply to applications for international registration (also referred to as international applications) that originate in Canada and are filed with CIPO who in turn, sends them to WIPO's International Bureau. It is important to note that Canadian applicants cannot file an application for international registration without first applying for a trademark registration in Canada since a basic application or registration is required to do so.

Certain eligibility requirements must be met to be able to apply for an international registration, for example, the person filing must be a Canadian citizen, be a resident of Canada or have an industrial or commercial establishment in Canada.

The International Bureau does not conduct any substantive examination of applications for international registration. It does however ensure that the goods or services are appropriately grouped according to the classes of the Nice Classification and not described in overly broad terms.

Contents and Form of the Application for International Registration

The Regulations specify the information that must be included in the application for international registration. This content is the same as that required to complete the International Bureau's model form (MM2) via the Madrid eFiling service which will be accessible on CIPO's website. The applicant can choose to correspond in English or French.

CIPO does not require a fee for the certification of an application for international registration; however the applicant must pay fees to the International Bureau for the filing of the application and for each contracting party that has been designated. All fees are payable to WIPO in Swiss Francs (CHF).

Functions of the Registrar as an Office of Origin

Once an application for international registration is filed with CIPO, it is reviewed by an examiner in order to certify that the particulars appearing in the application for international registration correspond to the particulars appearing in the basic application or basic registration, as applicable. If the application can be certified, CIPO sends it to the International Bureau. If clarification or more information is required, the Registrar contacts the applicant.

The international registration date is the date on which the Registrar receives the application for international registration if it is certified and forwarded to the International Bureau within two months from having received it. If, however, the application for international registration is not received by the International Bureau within that two month period, the international registration date is instead the date on which the application is received by the International Bureau.

CIPO is also responsible for notifying the International Bureau of any change in the scope of protection in the basic application or registration, such as the deletion of goods or services from the basic application or basic registration, within five years of the date of the international registration. The same obligation applies if a proceeding, such as opposition, that began before the end of that five-year period results in a change of scope of the protection in Canada after that period.

In ordinary circumstances, when ownership of an international registration is transferred, the request to record the transfer is presented directly to the International Bureau using the recommended form. However, in cases where the new owner is unable to obtain the signature of the previous owner of the international registration, the transfer of ownership of an international registration may be filed with the Registrar for presentation to the International Bureau if the transferee is a Canadian national, is domiciled in Canada or has an industrial establishment in Canada. This request must be accompanied by evidence of the transfer and a statement that the efforts to obtain the signature of the previous owner were unsuccessful.

Territorial Extension to Canada
(Office of the Registrar as the Office of a designated Contracting Party)

When an application for international registration includes a request to extend protection of the trademark to Canada, the International Bureau forwards the request to the Registrar.

Once the Registrar receives the request to extend protection of the trademark to Canada from the International Bureau, the request becomes a Protocol application as defined in the Trademark Regulations. The filing date of a Protocol application is the date of the international registration or the date of subsequent designation, as applicable.

Examination of Protocol Applications

A Protocol application is deemed to be an application for the registration of a trademark in Canada and, generally, the domestic process applies when examining the Protocol application.

The Regulations specify that a Protocol application is to be examined as an application for registration of a trademark in Canada and that if it is found to comply with all Canadian requirements for registration, the trademark is advertised for the purposes of opposition.

Since different countries use different terminology for trademarks, the Regulations also specify that, should the designation be for a collective, certification or guarantee mark, it is considered and examined as a certification mark in Canada.

Priority claim

When an application for international registration contains a priority date, it is assessed by the International Bureau prior to forwarding it to CIPO.

Refusals

A provisional refusal is issued when the trademark is considered not to be registrable in Canada or if certain requirements in the Protocol application are missing. The Regulations require the Registrar to state all of the grounds on which the refusal is based in a notification of provisional refusal sent to the International Bureau and the applicant.

The Registrar is also required to confirm to the International Bureau, within eighteen months after being notified of the designation to Canada, whether the Protocol application has been granted protection, that all Canadian procedures have been completed, and that there are no possible grounds for the Registrar to refuse protection (i.e., no opposition has been filed). Generally, the Registrar is not able to refuse a Protocol application without first sending a notice of provisional refusal to the International Bureau within this eighteen month period or within any extended period as required for a potential opposition.

The Registrar is required to confirm with the International Bureau that a Protocol application is refused if it becomes abandoned when the applicant fails to respond to requests for action within the specified deadlines or for any other reason if voluntary.

Divisionals and Mergers

During the WIPO General Assembly in Geneva in October 2016, amendments to the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (as in force on ) were approved to allow for the division and merger of international registrations. The anticipated implementation date of these new provisions is February 2019.

An applicant may send to CIPO a request to divide an international registration for any of the goods or services that were in the scope of the original Protocol application. CIPO must forward this request to the International Bureau and, once notified by the International Bureau of the creation of a divisional international registration, the Registrar records the division of the Protocol application which benefits from any steps (i.e. decision or ruling) taken in relation to the original Protocol application.

The owner of divisional international registrations may send to the Registrar a request to merge divisional international registrations if they stem from the same original Protocol application, relate to the same trademark and have the same owner. The Registrar must forward this request to the International Bureau and, once notified by the International Bureau of the merger of the divisional international registrations, amend the register accordingly.

Registration

In the case of a Protocol application having met all of the requirements for protection (including overcoming any provisional refusal) and no opposition has been filed, or any opposition has been decided in favor of the applicant, CIPO issues a registration certificate and sends a statement of grant of protection to the International Bureau. Once it is registered, a Protocol registration remains on the register until it is cancelled or expunged.

Should the Registrar fail to notify the International Bureau of a refusal or of the filing of an opposition statement within the deadline specified by the Madrid Protocol, the Protocol application is automatically granted protection in Canada.

If the Protocol application is registered and a request for an extension of time to file an opposition was previously filed but not considered the Registrar may remove the registration so long as the time limit to file a provisional refusal prescribed by the Madrid Protocol has not ended.

Renewal of the International Registration

A Protocol registration is valid for 10 years from the date of international registration. The Registrar records on the Canadian register a renewal of an international registration received from the International Bureau.

Non-Renewal of International Registration

If the international registration is not renewed with the International Bureau, the Registrar receives a notification to that effect which may affect a Protocol application or registration. As a result of the non-renewal, at the expiry of the international registration, the Protocol application is deemed to be withdrawn or the Protocol registration is deemed to be expunged.

Change of name or address

When the International Bureau notifies the Registrar of a change of name or address of the owner of the international registration, the Protocol application or registration is amended accordingly.

Transfer

When a change in ownership occurs on an international registration, the Registrar must, once notified by the International Bureau, record the transfer of the Protocol application or register the transfer of the Protocol registration accordingly.

Amendments or Corrections to International Registrations affecting Protocol Applications or Registrations

There are provisions in these Regulations that explain the effects of the various types of amendments or corrections made to the international registration on the Protocol application or registration. The following describes how the Registrar proceeds depending on the scope of goods or services affected and on the status of the Protocol application or registration. The effective date of an amendment or correction is deemed to be the date it is recorded on the International Register at WIPO.

Limitations

A limitation is a restriction in the protection of the international registration that consists of removing some goods or services. It may affect some or all of the designated contracting parties. If the limitation consists of a deletion of some of the goods or services, the applicable goods or services are deemed to be deleted from the Protocol application or the register is amended accordingly. If the limitation consists of the deletion of all of the goods or services, the Protocol application is withdrawn or the Protocol registration is cancelled.

In the case of a limitation that results in a new list of goods or services, the Registrar ensures that the goods or services are described in specific ordinary commercial terms and determines if the new list is within the scope of the Protocol application as it was filed or advertised, or within the scope of the Protocol registration. The Registrar either amends the Protocol application or the register accordingly or, in the case where the new list is not considered acceptable, sends to the International Bureau, within eighteen months from the date of the notification, a declaration that the limitation has no effect in Canada.

Withdrawal or Cancellation

A cancellation of goods or services listed in the international registration can be partial or total but affects all of the contracting parties that were designated. When the Registrar is notified by the International Bureau of a full cancellation, the Protocol application is deemed to be withdrawn or the Protocol registration is cancelled by the Registrar. In the case of a partial cancellation, the Registrar amends or withdraws the Protocol application accordingly, or amends the register or cancels the Protocol registration accordingly.

Renunciation

A renunciation affects all of the goods or services for some but not all of the designated Contracting Parties. It is the equivalent to a voluntary abandonment or cancellation. If the Registrar is notified by the International Bureau of a renunciation, the Protocol application is deemed withdrawn or the Protocol registration is cancelled by the Registrar.

Corrections

If the International Bureau becomes aware of an error concerning an international registration on the International Register, the Registrar is notified of the correction if it has effect on a Protocol application or registration.

For Protocol applications:

In general, when receiving a notification of a correction on a Protocol application, the Protocol application is deemed to be amended accordingly. If the correction is considered substantive and the Protocol application is not yet advertised in the Trademarks Journal, the Registrar has eighteen months from the date of the notification of correction to send a provisional refusal for the corrected portion.

If the correction is considered substantive for all of the goods or services and the Protocol application has been advertised, the Protocol application is deemed never to have been advertised and it is reverted to examination. The Registrar has eighteen months from the date of the notification of correction to send a provisional refusal for the corrected portion.

If the correction is considered substantive for some of the goods or services and the Protocol application has been advertised, the applicant has two options, namely, to either delete the goods or services affected or to deem the Protocol application as never having been advertised and reverted to examination. For the latter, the Registrar has eighteen months from the date of the notification of correction to send a provisional refusal for the corrected portion. If no response if received in the prescribed time period regarding the options, the affected goods or services are deleted and the Protocol application proceeds to advertisement without those goods or services.

For Protocol registrations:

In general, when receiving a notification of correction on a Protocol registration, the register is amended accordingly. If, however, the Registrar considers that protection can no longer be granted to the Protocol registration as corrected (i.e. the incorrect trademark was registered), the Registrar must send a declaration to that effect along with a provisional refusal to the International Bureau within eighteen months after the date of the notification of correction. The registered owner has the opportunity to provide comments following the provisional refusal and a final decision from the Registrar is communicated to the International Bureau.

Transformation

The International Bureau may cancel an international registration in whole or in part at the request of the Office of Origin due to the cancellation of the basic application or registration. These cancelled goods or services can be included in a transformation application which is essentially creating a domestic application or registration with some or all of the cancelled goods or services. The advantage of a transformation is that the resulting domestic application or registration benefits from all of the steps that were taken in relation to the Protocol application or Protocol registration (same filing date, same documentation, etc.).

The owner must file the request for transformation directly with the Registrar, by electronic means, within three months after the cancellation is recorded on the International Register and each request may only be in respect of one Protocol application or registration. The three month period cannot be extended and transformation is not available if the international registration expires for failure to renew, is cancelled or restricted at the request of the owner, or is cancelled or restricted for any other reason.

If a transformation is requested for a Protocol registration, the Registrar registers the trademark in the name of the applicant and issues a certificate of registration. The day of registration is deemed to be the day the Protocol registration was registered and the term of protection is dependent on the time that was remaining for that Protocol registration. Subsequent renewal periods of ten years then apply. If an international registration was due to be renewed during the three month transformation period, the owner is required to pay the renewal fee prior to the transformation being accepted.

Replacement

Provisions on replacement have not been included in the proposed Regulations as the Registrar intends to proceed by way of practice notices. If the owner of a Protocol registration already owns an existing Canadian trademark registration for the same trademark in association with some or all of the goods or services listed in the Protocol registration, the Protocol registration automatically benefits from the earlier priority or filing date for the relevant goods or services.

The owner may eventually decide not to renew their Canadian trademark registration and only maintain their Protocol registration; however, it is very important to note that even in the case of replacement, the Canadian trademark registration is not renewed automatically even though the Protocol registration has been renewed.

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Section 3 – Opposition, Section 45 and Objection Proceedings

Objective

The following is a summary of the provisions in the Regulations relating to opposition, section 45 and objection proceedings.

Correspondence

For clarity, and to ensure that the same correspondence requirements are in place for all three types of proceedings, the Regulations provide that a person who corresponds with the Registrar in respect of an opposition, section 45 or objection proceeding must clearly state that the correspondence relates to the proceeding.

Forwarding Copies of Documents

The Regulations will provide that a party to an opposition must, after the Registrar has forwarded a copy of the statement of opposition to the applicant, forward to the other party on that day a copy of any document relating to the opposition proceeding that they send to the Registrar, other than any document that they are otherwise required to serve on the other party.

There are similar provisions for section 45 and objection proceedings in order to align all three proceedings. Once the Registrar has issued a notice in a section 45 proceeding or a statement of objection has been filed in an objection proceeding, a copy of any document sent to the Registrar, but not required to be served, must also be forwarded to the other party, on that day.

Address for Service

The Regulations include provisions to facilitate the service of documents within Canada in opposition and section 45 proceedings in cases where no Canadian address for service is provided in an application or registration. These provisions are responsive to concerns from stakeholders about the costs associated with serving documents outside of Canada.

In opposition proceedings, an applicant may set out in its counter statement, or may file with the Registrar and serve on the opponent a separate notice setting out, the name and address in Canada of a person or firm on whom service of any document in respect of the opposition may be made with the same effect as if it had been served on the applicant.

Such a notice may also be filed with the Registrar and served on the other party during the course of a section 45 proceeding.

The Regulations do not include a similar provision for objection proceedings because a Canadian address or address for service in Canada for a responsible authority is required under the Act.

Service

Service requirements and effective dates of service for opposition, section 45 and objection proceedings are clarified in the Regulations. The Regulations also address situations where the necessary information to properly effect service has not been made available.

In order to ensure that documents are properly served, the Registrar has the power to require that parties provide proof that the documents were served.

Manner of Service

Service in opposition, section 45 and objection proceedings is to be effected as follows:

  1. by personal service in Canada;
  2. by registered mail to an address in Canada;
  3. by courier to an address in Canada;
  4. if the party seeking to effect service does not have the information necessary to permit them to serve the other party in accordance with (1)-(3), by sending a notice to the other party advising that the document to be served has been filed with or provided to the Registrar; or
  5. in any manner that is agreed to by the parties.

Effective Date of Service

Service is effective in opposition, section 45 and objection proceedings on the day on which the document is delivered, subject to the following:

  1. service by registered mail is effective on the day on which the document is mailed;
  2. service by courier is effective on the day on which the document is provided to the courier;
  3. service by electronic means is effective on the day on which the document is transmitted;
  4. service by sending of a notice under (4) above is effective on the day on which notice is sent; and
  5. service of a document other than in accordance with (1)-(5) above is nonetheless valid if the Registrar determines that the document came to the notice of the party being served, with the service being effective on the day on which the document was provided to the party being served.

The purpose of provision (e) above is to allow the Registrar to consider a document validly served if the Registrar determines that it was provided to the party being served.

Notice of Manner and Date of Service

The party effecting service in an opposition, section 45 or objection proceeding must notify the Registrar of the manner of service and the effective date of service.

Proof of Service

A party that serves a document in an opposition, section 45 or objection proceeding must, on request of the Registrar, provide proof of service within one month after the date of the request. If proof of service is not submitted within that month, the document is deemed not to have been served.

Leave

It is possible to amend a statement of opposition in an opposition proceeding or a statement of objection in an objection proceeding. It is also possible to file additional evidence in both proceedings.

For transparency, the Regulations provide that the Registrar must grant leave if it is in the "interests of justice to do so". This reflects the test that is currently set out in case law and applied by the Registrar in determining whether to grant leave.

Evidence

Opposition

The Regulations clearly prescribe the "time" for submitting and serving evidence and the "circumstances" which will result in the deemed withdrawal of an opposition or abandonment of an application.

Opponent's Evidence

The Regulations provide that the time within which the opponent may submit and serve its evidence is within a period of four months after the effective date of service of the applicant's counter statement. If the opponent fails to submit and serve evidence or a statement that it does not wish to do so within that period, those are the circumstances in which the opposition will be deemed to have been withdrawn.

Applicant's Evidence

The Regulations provide that the time within which the applicant may submit and serve its evidence is within a period of four months after the effective date of service of the opponent's evidence or statement that it does not wish to submit evidence. If the applicant fails to submit and serve evidence or statement that it does not wish to do so within that period, those are the circumstances in which the application will be deemed to have been abandoned.

Reply Evidence

The Regulations provide that the time within which the opponent may submit and serve reply evidence is within one month after the effective date of service of the applicant's evidence.

Section 45

The Regulations provide that the time within which the registered owner of a trade-mark must serve its evidence on the person at whose request the notice was given is the three month period referred to in subsection 45(1) of the Act.

Objection

The Regulations clearly prescribe the "time" for submitting and serving evidence and the "circumstances" which will result in the deemed withdrawal of an objection, the indication or translation not being entered on the list or the parties losing the opportunity to submit evidence or make representations.

Objector's Evidence

The Regulations provide that the time within which the objector may submit and serve its evidence is within a period of four months after the effective date of service of the responsible authority's counter statement. If the objector fails to submit and serve evidence or a statement that it does not wish to do so within that period, those are the circumstances in which the objection will be deemed to have been withdrawn.

Responsible Authority's Evidence

The Regulations provide that the time within which the responsible authority may submit and serve its evidence is within a four month period after the effective date of service of the objector's evidence or statement that it does not wish to submit evidence.

If the responsible authority fails to submit and serve its evidence or a statement that it does not wish to do so within that period, those are the circumstances in which the parties will lose the opportunity to submit evidence and make representations to the Registrar and which will result in the indication or translation not being entered on the list.

Reply Evidence

Under the Regulations, the time within which the objector may submit reply evidence to the Registrar and serve any such evidence on the responsible authority is within one month after the effective date of service of the responsible authority's evidence.

Submission of Evidence by Electronic Means of Transmission

The Regulations do not prohibit the filing of electronic evidence in opposition, section 45 and objection proceedings. Documents may be provided to the Registrar in electronic form or by electronic means, as specified by the Registrar.

Cross-Examination

The Regulations provide clarity with respect to cross-examination in opposition and objection proceedings. There is no cross-examination in a section 45 proceeding.

The Regulations provide that as long as a party requests the issuance of an order for cross-examination before notice has been given to the parties that written representations may be submitted, the Registrar must order the cross-examination.

Responsibility for the service and filing of cross-examination documents is split between the parties, so that the party conducting the cross-examination is responsible for the service and filing of the transcript, and the party whose affiant has been cross-examined is responsible for the service and filing of the responses it provides to undertaking. This way, the party conducting the cross-examination will not be held responsible for any delays caused by the other party in providing responses to undertakings.

The Registrar is required to return an affidavit or statutory declaration in cases where the affiant or declarant declines or fails to attend for cross-examination. However, in these situations, the affidavit or statutory declaration will not be considered part of the evidence of record.

Written Representations

Opposition and Objection

Under the Regulations, deadlines are prescribed for the parties to file and serve their written representations sequentially in opposition and objection proceedings. This has the advantage of allowing the applicant's written representations to be responsive to the opponent's written representations.

For both of these proceedings, after all evidence has been filed, the Registrar will give the parties notice that they may submit written representations to the Registrar. The time within which the opponent (or objector) may submit and serve its written representations is within a period of two months from the date of the notice. The time within which the applicant (or responsible authority) may submit and serve its written representations is within a period of two months from the effective date of service of the opponent's written representations or of a statement that it does not wish to make written representations. If no such service is effective, the applicant's (or responsible authority's) time runs from the expiry of the opponent's (objector's) deadline.

In view of the sequential filing of the parties' written representations, there are no longer provisions in the Regulations to enable the parties to request leave to file written representations after the prescribed deadlines. If a party wishes to make additional representations, it may do so orally at a hearing.

Section 45

In order to align all three proceedings, the Regulations include similar provisions for section 45 proceedings. As a result, a two month period of time is prescribed for each of the parties' written representations to be filed sequentially and parties are not only required to file but also to serve their written representations. The Regulations address the timing for filing of written representations in cases where the notice was given at the Registrar's initiative and cases where it was given at the request of a person.

Once the registered owner in a section 45 proceeding has furnished an affidavit or statutory declaration to the Registrar, the Registrar will give the parties notice that they may submit written representations sequentially.

In a proceeding commenced by the Registrar, the time within which the registered owner may submit written representations to the Registrar is two months after the date of the notice referred to above.

In a proceeding commenced by a person:

  1. the time within which that person may submit written representations to the Registrar and serve those representations on the registered owner is two months after the date of the notice from the Registrar inviting the submission of written representations; and
  2. the time within which the registered owner may submit written representations to the Registrar and serve those representations on that person is two months after the day on which that person's service of written representations is effective or, if no such service is effective within the time period referred to in (i) above, within two months of that period's expiry.

Hearings

The Regulations establish a prescribed time for parties to request a hearing in opposition, section 45 and objection proceedings and to align all three proceedings. The Regulations also clarify what information is required from the parties if a hearing is requested and how parties can go about making changes once the Registrar has issued a notice confirming the details for the hearing (i.e. time, date, location, etc.). In addition, the Regulations clarify whether a party is permitted to make representations at a hearing if it does not file a request to be heard.

Request

Every party wishing to make representations to the Registrar at a hearing must file with the Registrar a request that

  1. indicates whether the party intends to make representations in English or French and will require simultaneous interpretation if another party makes representations in the other official language; and
  2. indicates whether the party wishes to make representations in person, by telephone, by videoconference or by other means of communication offered by the Registrar, and sets out any information necessary to permit the use of the chosen means of communication.

If a party does not file a request as outlined above, they may not make representations at the hearing.

Changes

If a party notifies the Registrar of changes to any of the information provided under paragraphs (a) and (b) above at least one month before the date of the hearing, the Registrar must modify the administrative arrangements for the hearing accordingly.

Timing

The Regulations set a prescribed time period to request a hearing, so that it is no longer necessary for the Registrar to issue a notice to the parties.

Opposition

For opposition proceedings, the time period within which a party must file a request with the Registrar to make representations at a hearing is one month after the day on which the applicant's service on the opponent of written representations or statement that they do not wish to make written representations is effective or if no such service is effective within the time period for filing such representations or statement, within one month after that period's expiry.

Section 45

For section 45 proceedings, in cases where the proceedings are initiated by the Registrar, the time within which the registered owner must file a request to make representations at a hearing is one month after the day on which the registered owner submits its written representations or statement that it does not wish to make written representations to the Registrar or, if no such submission is made within the time period for submitting such written representations or statement, within one month after that period's expiry.

In cases where the proceedings are initiated by a person, the time within which a party must file a request to make representations at a hearing is one month after the day on which the registered owner's service of written representations or statement that they do not wish to make written representations is effective or if no such service is effective within the time period for submitting such written representations or statement, within one month after that period's expiry.

Objection

For objection proceedings, the time period within which a party must file a request with the Registrar to make representations at a hearing is one month after the day on which the responsible authority's service on the objector of written representations or statement that they do not wish to make written representations is effective or if no such service is effective within the time period for filing such written representations or statement, within one month after that period's expiry.

Statement of Opposition to be filed in Duplicate

In view of the increasing use of electronic submission of documents, under the Regulations, an opponent is no longer required to file a statement of opposition in duplicate in an opposition proceeding.

Extensions of Time in Opposition and Objection

The Regulations do not contain provisions relating to the granting of extensions of time in opposition or objection proceedings; as such extensions are covered by sections 47(1) and 47(2) of the Act.

Documents Open to Public Inspection

The Regulations no longer contain provisions relating to the availability of documents to the public as this is covered by section 29 of the Act. In addition, since written representations are no longer filed sequentially and forwarded to the parties by the Registrar, an exception for these documents is no longer required.

Treatment of Divisionals in Opposition

Applications, including those that have been opposed, may be divided into two or more applications with some goods and services remaining in the original application and others being moved into one or more new applications. The ability to divide applications allows applicants to move certain goods and services forward when there is an ongoing opposition which involves only some of the goods and services in the original application.

The treatment of a divisional application filed after advertisement varies depending on when it was filed and whether the goods and services in the divisional were within the scope of the original application on the date the divisional application was filed.

If a divisional application is filed during the two-month opposition period, the original application will retain the advertisement date. The divisional application, however, will be re-advertised.

If all of the goods or services in the divisional application(s) were within the scope of the original application at the end of the two-month opposition period, each new application and the original application will remain subject to any ongoing opposition. Further, all of the steps taken in the opposition against the original application will apply to the new application(s). Finally, if after the withdrawal of an opposition, an applicant files a divisional application in respect of any goods or services that had been deleted prior to the end of the opposition proceeding, an opponent will be given the opportunity to continue its opposition against those goods or services.

If, on the other hand, an applicant deletes one or more of the goods or services during the two-month opposition period and files a divisional application for them at a later date, the new application(s) will be re-advertised to ensure that the public has the opportunity to oppose those previously deleted goods or services.

Opposition to Protocol Applications

As part of its obligations under the Madrid Protocol, within 18 months of the International Bureau sending a request for extension of protection of a trademark to Canada, the Registrar must notify the International Bureau of: (1) a provisional refusal based on the filing of an opposition; or (2) the possibility that an opposition may be filed after the 18-month period. Once an opposition has been concluded, the Registrar must send either a confirmation of total provisional refusal confirming to the International Bureau that protection has been refused in Canada or a statement of grant of protection confirming the goods and services for which protection has been granted.

For the purposes of opposition, a Protocol application will generally be treated the same as a domestic application. The regulations governing oppositions will apply with the exception of the changes detailed below, which are necessary to comply with the Madrid Protocol.

Extensions of Time to File a Statement of Opposition

A provisional refusal based on the filing of a statement of opposition must be received by the International Bureau prior to the 18 month deadline or, if a notice has been sent to the International Bureau that an opposition may be filed after 18 months, within 7 months after the beginning of the opposition period or within one month after the end of the opposition period, whichever is earlier.

As such, the Regulations limit extensions of time requested by an opponent to file a statement of opposition against a Protocol application to four months. This ensures that the International Bureau is notified of any provisional refusals prior to the deadlines imposed by the Madrid Protocol. Despite this limitation, the Registrar retains discretion to extend the deadline by more than four months, which the Registrar may exercise in circumstances such as disruptions to CIPO's electronic filing system.

Similar to the treatment of domestic applications, if a Protocol application is registered without the Registrar considering a previously filed request for an extension of time and there is still time to notify the International Bureau of a provisional refusal based on the filing of an opposition, the Registrar may remove the registration so that an opposition may be filed.

Statement of Opposition Must be Filed Electronically and the International Bureau Is Notified Automatically

The Regulations require that a statement of opposition to a Protocol application must be filed in English or French with the Registrar by using an online service accessible through CIPO's website. The impetus behind this rule is that the Registrar must promptly inform the International Bureau of an opposition against a Protocol application. Accordingly, this online service will require an opponent to provide the information required by section 38(3) of the Act for filing an opposition, as well as the specific information required by the Madrid Protocol. It is intended that this online service will generate both the statement of opposition and the notification of provisional refusal based on a statement of opposition and automatically forward both to the International Bureau.

Limit to Amendments to a Statement of Opposition

Once a notification of provisional refusal based on a statement of opposition is sent, a statement of opposition may not be amended to add a new ground of opposition. This is because a Protocol application can only be refused on the basis of a ground of opposition contained in the provisional refusal sent to the International Bureau.

New Ground of Opposition

The Regulations include a new ground of opposition with respect to a Protocol application. A trademark which is the subject of a Protocol application is not registrable if the goods or services in the application are not within the scope of the international registration.

Since the International Bureau has the final decision on which Nice classes the goods and services in a Protocol application fall into, this new ground of opposition is not intended to include the issue of whether the goods and services are correctly classified under Nice.

Statement of Grant of Protection or Confirmation of Total Provisional Refusal

If a Protocol application is abandoned, deemed abandoned, or refused, once the decision is final, a confirmation of total provisional refusal will be sent to the International Bureau. If the opposition is withdrawn, deemed withdrawn, or is rejected, in whole or in part, once the decision is final, the Protocol application will register and a statement of grant of protection specifying the goods and services protected in Canada will be sent to the International Bureau.

Section 45 Proceedings and Protocol Registrations

For the purposes of section 45 proceedings, a Protocol registration will be treated the same as a domestic registration. If a final decision issues expunging the registration or deleting one or more goods or services, the Protocol registration will be expunged or amended and the International Bureau will be notified of the change of protection in Canada.

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