Trade-marks Regulations

SOR/96-195

INTERPRETATION

Rule 2. The following definitions apply in these Regulations.

“Act” means the Trade-marks Act.

“applicant” means a person who files an application for the registration of a trade-mark, pursuant to section 30 of the Act, or who is the last transferee of an application for the registration of a trade-mark recognized under section 48.

“Journal” means the Trade-marks Journal referred to in subsection 66(3) of the Act.

“trade-mark agent” means a person whose name is entered on the list of trade-mark agents referred to in section 21.

CORRESPONDENCE

Rule 3.  

(1) Correspondence intended for the Registrar or the Office of the Registrar of Trade-marks shall be addressed to the “Registrar of Trade-marks”.

(2) Correspondence addressed to the Registrar may be physically delivered to the Office of the Registrar of Trade-marks during ordinary business hours of the Office and shall be considered to be received by the Registrar on the day of the delivery.

(3) For the purposes of subsection (2), where correspondence addressed to the Registrar is physically delivered to the Office of the Registrar of Trade-marks outside of its ordinary business hours, it shall be considered to have been delivered to the Office during ordinary business hours on the day when the Office is next open for business.

(4) Correspondence addressed to the Registrar may be physically delivered to an establishment that is designated by the Registrar in the Journal as an establishment to which correspondence addressed to the Registrar may be delivered, during ordinary business hours of that establishment, and

(5) For the purposes of subsection (4), where correspondence addressed to the Registrar is physically delivered to an establishment outside of ordinary business hours of the establishment, it shall be considered to have been delivered to that establishment during ordinary business hours on the day when the establishment is next open for business.

(6) Correspondence addressed to the Registrar may be sent at any time by electronic or other means of transmission specified in the Journal.

(7) For the purposes of subsection (6), where, according to the local time of the place where the Office of the Registrar of Trade-marks is located, the correspondence is delivered on a day when the Office is open for business, it shall be considered to be received by the Registrar on that day.

(8) For the purposes of subsection (6), where, according to the local time of the place where the Office of the Registrar of Trade-marks is located, the correspondence is delivered on a day when the Office is closed for business, it shall be considered to be received by the Registrar on the day when the Office is next open for business.

(9) Subsection (6) does not apply to the following:

Rule 4.  

(1) Communication in respect of a trade-mark shall be in writing, but the Registrar may also consider oral communications.

(2) The Registrar may request that an oral communication be confirmed in writing.

Rule 5.  

(1) Subject to subsection (2), each communication addressed to the Registrar shall deal with only one application for the registration of a trade-mark or one registered trade-mark.

(2) Subsection (1) does not apply in respect of

Rule 6.  

(1) Any address required to be furnished pursuant to the Act or these Regulations shall be a complete mailing address and shall include the street name and number, where one exists, and the postal code.

(2) Where the Registrar has not been notified of a change of address, the Registrar is not responsible for any correspondence not received by an applicant, registered owner, trade-mark agent or representative for service.

Rule 7.  

(1) Correspondence in respect of an application for the registration of a trade-mark shall include

(2) Correspondence in respect of a registered trade-mark shall include

Rule 8.  

(1) Subject to subsections (2) and (4), correspondence relating to the prosecution of an application for the registration of a trade-mark shall be with the applicant.

(2) Subject to subsection (3) and sections 9 and 11, correspondence referred to in subsection (1) shall be with a trade-mark agent, where the trade-mark agent has been authorized to act on behalf of the applicant in one of the following ways:

(3) Where a trade-mark agent referred to in subsection (2) appoints another trade-mark agent as associate or substitute agent, correspondence shall be with the associate or substitute agent.

(4) Where a person requests recognition of a transfer of an application pursuant to section 48, correspondence in respect of the recognition of the transfer shall also be with the person who requests that recognition.

Rule 9.  

(1) Where a trade-mark agent is not a resident of Canada, the agent shall appoint an associate agent who is a resident of Canada.

(2) Where an associate trade-mark agent is not appointed pursuant to subsection (1), the Registrar shall correspond with the applicant.

Rule 10.  

Sections 8 and 9 apply, with such modifications as are necessary, to parties to oppositions.

Rule 11.  

(1) The appointment of a trade-mark agent need not be made in writing, but the Registrar may require the agent to file a written authorization from the person or firm that that agent claims to represent, where the circumstances described in any of paragraphs 8(2)(a) to (c) have not occurred or the appointment has not been clearly established.

(2) Where a trade-mark agent fails to file an authorization required pursuant to subsection (1), the Registrar may notify the person or firm that the agent claims to represent, and shall, subject to section 8, continue to correspond with the person or firm notified until the written authorization is filed.

GENERAL

Rule 12.  

The fees set out in the schedule are payable to the Receiver General and shall be forwarded to the Registrar.

Rule 13.  

Except as otherwise provided in these Regulations, all documents filed with the Office of the Registrar of Trade-marks shall be on white paper that measures at least 8 inches by 11 inches, or 21 cm x 28 cm, but not more than 8 1/2 inches by 14 inches, or 22 cm x 35 cm, on one side only, with left and upper margins of at least 1 inch or 2.5 cm.

Rule 14.  

(1) An application for the registration of a trade-mark shall contain the information required by section 30 of the Act, and shall be presented clearly and legibly, in the manner specified by the Registrar in the Journal and on the appropriate form published by the Registrar in the Journal, or in any other form that allows for the furnishing of the same information.

(2) Any document to be submitted to the Registrar relating to the registration of a trade-mark or a registered trade-mark shall be presented clearly and legibly, in the manner specified by the Registrar in the Journal and on the appropriate form published by the Registrar in the Journal, or in any other form that allows for the furnishing of the same information.

JOURNAL

Rule 15.  

The Registrar shall publish, on a weekly basis, the Journal, which shall include

Rule 16.  

Every advertisement of an application published pursuant to subsection 37(1) of the Act shall set out

Rule 17.  

The particulars published in the Journal of a registration of a trade-mark made or extended pursuant to the Act shall include

Rule 18. ELIGIBILITY FOR EXAMINATION

Subject to subsection 20(2), a person is eligible to sit for a qualifying examination relating to trade-mark law and practice if, before October 1 of the year in which the person proposes to sit for the examination, the person resides in Canada and

Rule 19. EXAMINING BOARD

The members of an examining board shall be appointed by the Registrar and at least two members of the board shall be trade-mark agents nominated by the Intellectual Property Institute of Canada.

Rule 20. QUALIFYING EXAMINATION

(1) The examining board shall

(2) The Registrar shall give notice in the Journal of the date of the next qualifying examination and shall state in the notice that any person who proposes to sit for the examination shall

(3) The Registrar shall designate the place or places where the qualifying examination is to be held and shall, by registered mail, at least four weeks before the day fixed for the examination, notify any person who has complied with the requirements of subsection (2).

Rule 21. LISTING OF TRADE-MARK AGENTS

The Registrar shall, on written request and payment of the fee set out in item 19 of the schedule, enter on a list of trade-mark agents the name of

Rule 22. RENEWAL

(1) During the period beginning on January 1 and ending on March 31 of each year,

(2) Where a trade-mark agent fails to comply with the applicable requirement set out in subsection (1), the Registrar shall send a written notice to the trade-mark agent requiring that, within three months after the date of the notice, the trade-mark agent shall file

(3) Where a trade-mark agent fails to comply with a notice referred to in subsection (2), the Registrar shall remove the name of the agent from the list of trade-mark agents.

Rule 23.  

(1) The name of a trade-mark agent that has been removed from the list of trade-mark agents pursuant to subsection 22(3) may be reinstated if the agent applies to the Registrar within one year after the date of the removal of the agentís name from the list, and

(2) A firm is entitled to have its name remain on the list of trade-mark agents where

Rule 24. APPLICATION FOR REGISTRATION

A separate application shall be filed for the registration of each trade-mark, but a single application is sufficient where the trade-mark is used, made known or proposed to be used in association with both wares and services.

Rule 25.  

Subject to section 34 of the Act, the date of filing of an application for the registration of a trade-mark is the date on which the following are delivered to the Registrar:

Rule 26.  

(1) Paragraph 25(a) applies in respect of an application to extend the statement of wares or services in respect of which a trade-mark is registered.

(2) The application referred to in subsection (1) shall be accompanied by the fee set out in item 3 of the schedule.

Rule 27.  

(1) Where a drawing of a trade-mark is required by paragraph 30(h) of the Act, the drawing shall be in black and white, no larger than 2 3/4 inches by 2 3/4 inches or 7 cm x 7 cm, and shall not include any matter that is not part of the trade-mark, and may be on paper that satisfies the requirements of section 13.

(2) Where the drawing of the trade-mark on file is not suitable for reproduction in the Journal, the Registrar may require an applicant to file a new drawing.

Rule 28.  

(1) Where the applicant claims a colour as a feature of the trade-mark, the colour shall be described.

(2) Where the description referred to in subsection (1) is not clear, the Registrar may require the applicant to file a drawing lined for colour in accordance with the following colour chart:

Rule 29.  

The Registrar may require an applicant for the registration of a trade-mark to furnish to the Registrar, as applicable,

AMENDMENT OF APPLICATION FOR REGISTRATION

Rule 30.  

Except as provided in sections 31 and 32, an application for the registration of a trade-mark may be amended either before or after the application is advertised pursuant to subsection 37(1) of the Act.

Rule 31.  

No application for the registration of a trade-mark may be amended where the amendment would change

Rule 32.  

No application for the registration of a trade-mark may be amended, after it has been advertised in the Journal, to change

Rule 33.  

(1) The Registrar may correct a clerical error in any instrument of record where

Rule 34. ADVERTISEMENT OF APPLICATION FOR REGISTRATION

Where the Registrar is not satisfied that an application for registration of a trade-mark should be refused pursuant to subsection 37(1) of the Act, the Registrar shall advertise the particulars of the application in the Journal.

OPPOSITION

Rule 35.  

A person who corresponds with the Registrar in respect of an opposition proceeding shall clearly state that the correspondence relates to the opposition proceeding.

Rule 36.  

After the Registrar has forwarded a copy of a statement of opposition to the applicant in accordance with subsection 38(5) of the Act, a party corresponding with the Registrar shall forward a copy of any correspondence in respect of the opposition, with the exception of a written argument filed pursuant to subsection 46(3), to the other party in the opposition proceeding.

Rule 37.  

(1) Any statement or other material required to be served on a party in an opposition proceeding under section 38 of the Act or these Regulations may be served on the party or their trade-mark agent or representative for service

(2) For the purposes of subsection (1), unless the parties are agreed otherwise, if the party being served has appointed a trade-mark agent or has named a representative for service, service shall be effected on that agent or that representative for service.

(3) If service is effected by registered mail, service is deemed to be effected on the later of

(4) If service is effected by courier, service is deemed to be effected on the later of

(5) If service is effected by personal service or in any other manner with the consent of the party or their agent, service is deemed to be effected on the later of

(6) The party effecting service shall notify the Registrar of the manner of service and

Rule 38.  

A statement of opposition shall be filed with the Registrar in duplicate.

Rule 39.  

Within two months after a copy of a statement of opposition has been forwarded to an applicant under subsection 38(5) of the Act, the applicant shall file a counter statement with the Registrar and serve a copy of the counter statement on the opponent.

Rule 40.  

No amendment to a statement of opposition or counter statement shall be allowed except with leave of the Registrar and on such terms as the Registrar determines to be appropriate.

Rule 41.  

(1) Within four months after service of the counter statement, the opponent shall

(2) Where the opponent does not submit either the evidence under subsection 38(7) of the Act or a statement that the opponent does not wish to submit evidence, within the time set out in subsection (1), the opposition shall be deemed to have been withdrawn for the purposes of subsection 38(7.1) of the Act.

Rule 42.  

(1) Within four months after service of the opponentís evidence or statement referred to in paragraph 41(1)(a), the applicant shall

(2) Where the applicant does not submit either the evidence under subsection 38(7) of the Act or a statement that the applicant does not wish to submit evidence, within the time set out in subsection (1), the application shall be deemed to have been abandoned for the purposes of subsection 38(7.2) of the Act.

Rule 43.  

Within one month after service on the opponent of the applicantís evidence referred to in section 42, the opponent

Rule 44.  

(1) No further evidence shall be adduced by any party except with leave of the Registrar and on such terms as the Registrar determines to be appropriate.

(2) Before giving notice in accordance with subsection 46(1), the Registrar may, on the application of any party and on such terms as the Registrar may direct, order the cross-examination under oath of any affiant or declarant on an affidavit or declaration that has been filed with the Registrar and is being relied on as evidence in the opposition.

(3) A cross-examination ordered pursuant to subsection (2) shall be held at a time, date and place and before a person agreed to by the parties or, in the absence of an agreement, as designated by the Registrar.

(4) A transcript of the cross-examination and exhibits to the cross-examination, and any documents or material undertaken to be submitted by the party whose affiant or declarant is being cross-examined, shall be filed with the Registrar by the party conducting the cross-examination, within the time fixed by the Registrar.

(5) If an affiant or declarant declines or fails to attend for cross-examination, the affidavit or declaration shall not be part of the evidence and shall be returned to the party who filed it.

Rule 45.  

(1) Every exhibit to an affidavit or declaration filed in an opposition shall be filed with the affidavit or declaration.

(2) Subject to subsection (3), all materials filed in an opposition shall be open to public inspection at the Office of the Registrar of Trade-marks.

(3) Written arguments shall not be open to public inspection until after they have been forwarded by the Registrar in accordance with subsection 46(3).

(4) A copy, photograph or sample of an exhibit referred to in subsection (1) shall be served on the other party unless the Registrar directs otherwise.

Rule 46.  

(1) Not less than 14 days after completion of the evidence, the Registrar shall give the parties written notice that they may, within one month after the date of the notice, file written arguments with the Registrar.

(2) No written argument shall be filed after the expiration of the period of one month referred to in subsection (1), except with leave of the Registrar.

(3) Written arguments, if any, shall be filed in duplicate and, after the written arguments of both parties have been filed or the period for filing written arguments has expired, the Registrar shall forward

(4) A party wishing to be heard by the Registrar shall give the Registrar written notice within one month after the date of the Registrarís notice referred to in paragraph (3)(b) and, on receipt of a notice from the party, the Registrar shall send the parties a written notice setting out the time, date and location of the hearing.

Rule 47.  

Where in an opposition proceeding any extension of time is granted to a party, the Registrar may thereafter grant a reasonable extension of time to the other party for the taking of any subsequent step.

TRANSFER

Rule 48.  

The Registrar shall recognize a transfer of an application for registration of a trade-mark on receipt of a written request for recognition together with

Rule 49.  

(1) Where, as a result of a transfer of a trade-mark that is the subject of an application for registration, the trade-mark becomes the property of one person for use in association with some of the wares or services specified in the application and of another person for use in association with other such wares or services, and the Registrar recognizes the transfer, each person shall file an amendment of that application restricted to those wares and services for use in respect of which the person owns the trade-mark.

(2) Each amendment referred to in subsection (1) is a continuation of the application for the purpose of preserving the benefit of the date of filing of the application, but shall otherwise be treated in subsequent proceedings as a separate application.

Rule 50.  

Where, as a result of a transfer, a registered trade-mark becomes the property of one person for use in association with some of the wares or services specified in the registration, and of another person for use in association with other such wares or services, and the transfer is registered by the Registrar, each person

REGISTER

Rule 51.  

A summary of an application for registration referred to in paragraph 26(2)(b) of the Act shall include the following information, where applicable:

Rule 52.  

The register, pursuant to paragraph 26(2)(f) of the Act, shall indicate, in respect of each registered trade-mark, the following particulars, where applicable:

OBJECTION PROCEEDINGS UNDER SECTION 11.13 OF THE ACT

Rule 53.  

(1) Any statement or other material required to be served on a party in an objection proceeding under section 11.13 of the Act or these Regulations may be served on the party or their trade-mark agent or representative for service

(2) For the purposes of subsection (1), unless the parties are agreed otherwise, if the party being served has appointed a trade-mark agent or has named a representative for service, service shall be effected on that agent or that representative for service.

(3) If service is effected by registered mail, service is deemed to be effected on the later of

(4) If service is effected by courier, service is deemed to be effected on the later of

(5) If service is effected by personal service or in any other manner with the consent of the party or their agent, service is deemed to be effected on the later of

(6) The party effecting service shall notify the Registrar of the manner of service and

Rule 54.  

No amendment to a statement of objection or counter statement shall be allowed except with leave of the Registrar on such terms as the Registrar determines to be appropriate.

Rule 55.  

(1) For the application of subsection 11.13(5) of the Act, within four months after service of the counter statement, the objector

(2) Where the objector does not submit either the evidence under subsection 11.13(5) of the Act or a statement that the objector does not wish to submit evidence, within the time set out in subsection (1), the objection shall be deemed to have been withdrawn for the purposes of subsection 11.13(6) of the Act.

Rule 56.  

Within four months after service of the objectorís evidence or statement referred to in paragraph 55(1)(a), the responsible authority

Rule 57.  

Within one month after service on the objector of the responsible authorityís evidence referred to in paragraph 56(a), the objector

Rule 58.  

(1) No further evidence shall be adduced by any party except with leave of the Registrar on such terms as the Registrar determines to be appropriate.

(2) Before giving notice in accordance with subsection 60(1), the Registrar may, on the application of any party and on such terms as the Registrar may direct, order the cross-examination under oath of any affiant or declarant on an affidavit or statutory declaration that has been filed with the Registrar and is being relied on as evidence in the objection proceeding.

(3) A cross-examination ordered pursuant to subsection (2) shall be held at a time, date and place and before a person agreed to by the parties or, in the absence of an agreement, as designated by the Registrar.

(4) A transcript of the cross-examination and exhibits to the cross-examination, and any documents or material undertaken to be submitted by the party whose affiant or declarant is being cross-examined, shall be filed with the Registrar by the party conducting the cross-examination, within the time fixed by the Registrar.

(5) If an affiant or declarant declines or fails to attend for cross-examination, the affidavit or statutory declaration shall not be part of the evidence and shall be returned to the party who filed it.

Rule 59.  

(1) Every exhibit to an affidavit or statutory declaration filed in an objection proceeding shall be filed with the affidavit or declaration.

(2) Subject to subsection (3), all materials filed in an objection proceeding shall be open to public inspection at the Office of the Registrar of Trade-marks.

(3) Written arguments shall not be open to public inspection until after they have been forwarded by the Registrar in accordance with subsection 60(3).

(4) A copy, photograph or sample of an exhibit referred to in subsection (1) shall be served on the other party unless the Registrar directs otherwise.

Rule 60.  

(1) Not less than 14 days after completion of the evidence, the Registrar shall give the parties written notice that they may, within one month after the date of the notice, file written arguments with the Registrar.

(2) No written argument shall be filed after the expiration of the period of one month referred to in subsection (1), except with leave of the Registrar.

(3) Written arguments, if any, shall be filed in duplicate and, after the written arguments of both parties have been filed or the period for filing written arguments has expired, the Registrar shall forward

(4) A party wishing to be heard by the Registrar shall give the Registrar written notice within one month after the date of the Registrarís notice referred to in paragraph (3)(b) and, on receipt of a notice from the party, the Registrar shall send the parties a written notice setting out the time, date and location of the hearing.

Rule 61.  

Where in an objection proceeding any extension of time is granted to a party, the Registrar may thereafter grant a reasonable extension of time to the other party for the taking of any subsequent step.

SCHEDULE - TARIFF OF FEES

PART I - FILING

1. An application for the registration of a trade-mark,

    (a) where the application and fee are submitted on-line to the Office of the Registrar of Trade-Marks, via the Canadian Intellectual Property Office web site

$250

    (b) in any other case

$300

2. A statement of opposition pursuant to subsection 38(1) of the Act

$750

3. An application to amend the registration of a trade-mark by extending the statement of wares or services in respect of which the trade-mark is registered

$450

6. A request to recognize the transfer of one or more trade-marks, for each trade-mark

$100

7. A request to renew the registration of one or more trade-marks, for each trade-mark,

    (a) where the request and fee are submitted on-line to the Office of the Registrar of Trade-Marks, via the Canadian Intellectual Property Office web site

$350

    (b) in any other case

$400

8. A request to send one or more notices pursuant to section 44 or 45 of the Act, for each notice

$400

9. An application for an extension of time pursuant to subsection 47(1) or (2) of the Act, for each act

$125

10. Each certified copy of a registration referred to in subsection 31(1) of the Act

$50

12. A request pursuant to paragraph 9(1)(n) or (n.1) of the Act with respect to one or more badges, crests, emblems, marks or armorial bearings, for each badge, crest, emblem, mark or armorial bearing

$500

14. A statement of objection pursuant to subsection 11.13(1) of the Act

$1,000

PART II - REGISTRATION

15. A trade-mark, including, without further fee, the issuance of a certificate of registration of the trade-mark

$200

PART III - ISSUANCE

16. A certified copy in paper form of a document, other than a certified copy made under subsection 60(1) of the Act or Rule 318 or 350 of the Federal Courts Rules:

    (a) for each certification

$35

    (b) plus, for each page

$1

17. A certified copy in electronic form of a document, other than a certified copy made under subsection 60(1) of the Act or Rule 318 or 350 of the Federal Courts Rules:

    (a) for each certification

$35

    (b) plus, for each trade-mark to which the request relates

$10

18. A copy in paper form of a document, for each page,

    (a) where the person requesting makes the copy using equipment of the Office of the Registrar of Trade-marks

$0.50

    (b) where the Office makes the copy

$1

18.1 A copy in electronic form of a document:

    (a) for each request

$10

    (b) plus, for each trade-mark to which the request relates

$10

    (c) plus, if the copy is requested on a physical medium, for each physical medium requested in addition to the first

$10

PART IV - TRADE-MARK AGENTS

19. On request, to enter a name on the list of trade-mark agents:

    (a) where the request and fee are submitted on-line to the Office of the Registrar of Trade-Marks, via the Canadian Intellectual Property Office web site

$300

    (b) in any other case

$350

20. Examination fee referred to in paragraph 20(2)(b)

$400

21. Annual registration fee referred to in paragraphs 22(1)(a) and (2)(b):

    (a) where the fee is submitted on-line to the Office of the Registrar of Trade-Marks, via the Canadian Intellectual Property Office web site

$300

    (b) in any other case

$350

22. Reinstatement fee referred to in paragraph 23(1)(b)

$200




This page has been generated using Mincov Legal Markup Language (“MLML”). While every effort has been made to ensure accuracy and currency of this document, Mincov Law Corporation makes no warranty, representation or undertaking, expressed or implied, nor does it assume any liability, direct or indirect, or responsibility for the accuracy, currency, usefulness or continued availability of this document.The official version of this document is located at http://laws.justice.gc.ca/eng/regulations/SOR-96-195/index.html.

tumblr visitor stats
The information on this website is for general information purposes only. Nothing on this website should be taken as legal advice for any individual case or situation. This information is not intended to create, and its receipt or viewing does not constitute, a solicitor-client relationship.

Logo

Trademark Factory® International Inc. - Outside The Box Legal Solutions
©2011–2017 Trademark Factory® International Inc.
Vancouver Office: 778.869.7281
300 - 1055 W. Hastings St., Vancouver, BC  V6E 2E9
Toronto Office: 416.305.4142
3 Bridgeman Avenue, Suite 204, Toronto, ON M5R 3V4
Toll-Free: 855.MR.TMARKFax: 888.767.7078