Trademarks Regulations (SOR/2018-227)

Marginal note:Representations

58.3 The Registrar must give the other party notice of the request for costs and an opportunity to make written representations, which must, within 14 days after the day on which the notice is given, be made using the online service that is designated by the Registrar as being accepted for that purpose.

Register

Marginal note:Particulars

59 For the purpose of paragraph 26(2)(f) of the Act, the following are other particulars that are required to be entered on the register:

• (a) the registration number;

• (b) the name and postal address of the registered owner on the date of registration;

• (c) any representation or description of the trademark that is contained in the application for the registration of the trademark;

• (d) if the trademark is in standard characters, a note to that effect;

• (e) if the trademark is a certification mark, a note to that effect; and

• (f) if the Registrar has restricted the registration to a defined territorial area in Canada under subsection 32(2) of the Act, a note to that effect.

Marginal note:Fee for extending statement of goods or services

60 For the purpose of subsection 41(1) of the Act, the fee to be paid by a registered owner that makes an application to extend the statement of goods or services in respect of which a trademark is registered is that set out in item 10 of the schedule to these Regulations.

Marginal note:Merger of registrations

61 The Registrar may merge registrations under paragraph 41(1)(f) of the Act only if the trademarks to which the registrations apply are the same and have the same registered owner.

Marginal note:Fee for the giving of notice

62 For the purpose of subsection 44(1) of the Act, the fee to be paid by a person that requests that a notice be given under that subsection is that set out in item 11 of the schedule to these Regulations.

Marginal note:Requested statement of goods or services — timing

63 For the purpose of subsection 44.1(1) of the Act, the time within which a registered owner must furnish the Registrar with a statement of goods and services grouped in the manner described in subsection 30(3) of the Act is six months after the date of the notice that was given to them.

Transfer of Registered Trademark

Marginal note:Fee

64 A person that requests the registration of the transfer of a registered trademark under subsection 48(4) of the Act must pay the fee set out in item 12 of the schedule to these Regulations.

Marginal note:Required information

65 The Registrar must not register the transfer of a registered trademark under subsection 48(4) of the Act unless the Registrar has been provided with the transferee’s name and postal address.

Marginal note:Effect of transfer — separate registrations

66 If the transfer to a person of a registered trademark is, under subsection 48(4) of the Act or section 146 of these Regulations, registered in respect of at least one but not all of the goods or services that are specified in the initial registration, that person is deemed to be the registered owner of a separate registration that is deemed to have the same registration date as that initial registration.

Proceeding Under Section 45 of Act

Marginal note:Fee

67 For the purpose of subsection 45(1) of the Act, the fee to be paid by a person that requests that a notice be given under that subsection is that set out in item 13 of the schedule to these Regulations.

Marginal note:Correspondence

68 A person that corresponds with the Registrar in respect of a proceeding under section 45 of the Act must clearly indicate that the correspondence relates to that proceeding.

Marginal note:Forwarding copies of documents

69 A party to a proceeding under section 45 of the Act that, on a given day after the Registrar has given notice under subsection 45(1) of the Act, provides to the Registrar a document, other than a document that they are otherwise required to serve, that relates to that proceeding must, on that day, forward a copy of it to any other party.

Marginal note:Service on representative of party

70 A party to a proceeding under section 45 of the Act may file with the Registrar and serve on any other party to the proceeding a notice setting out the name and address in Canada of a person on whom or a firm on which service of any document in respect of the proceeding may be made with the same effect as if it had been served on them.

Marginal note:Manner of service

• 71 (1) Service of a document in respect of a proceeding under section 45 of the Act must be effected

  • (a) by personal service in Canada;

  • (b) by registered mail to an address in Canada;

  • (c) by courier to an address in Canada;

  • (d) by the sending of a notice to the other party advising that the document to be served has been filed with or submitted to the Registrar, if the party seeking to effect service does not have the information necessary to serve the other party in accordance with any of paragraphs (a) to (c); or

  • (e) in any manner that is agreed to by the parties.

• Marginal note:Service on trademark agent

  (2) Despite section 70, if a party to be served appoints a trademark agent in respect of a proceeding under section 45 of the Act, service must be effected on that agent unless the parties agree otherwise.

• Marginal note:Effective date of service

  (3) Subject to subsections (4) to (7) and (10), service is effective on the day on which the document is delivered.

• Marginal note:Exception — service by registered mail

  (4) Service by registered mail is effective on the day on which the document is mailed.

• Marginal note:Exception — service by courier

  (5) Service by courier is effective on the day on which the document is provided to the courier.

• Marginal note:Exception — service by electronic means

  (6) Service by an electronic means is effective on the day on which the document is transmitted.

• Marginal note:Exception — service by sending of notice

  (7) Service by the sending of a notice under paragraph (1)(d) is effective on the day on which the notice is sent.

• Marginal note:Notice of manner and date of service

  (8) The party effecting service must notify the Registrar of the manner of service and the effective date of service.

• Marginal note:Proof of service

  (9) A party that serves a document 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 provided within that month, the document is deemed not to have been served.

• Marginal note:Validity of irregular service

  (10) Service of a document other than in accordance with subsection (1) is nonetheless valid if the Registrar determines that the document has been provided to the party being served and informs the parties of that determination. The service is effective on the day on which the document was provided to the party being served.

Marginal note:Evidence — timing

72 For the purpose of subsection 45(2.1) of the Act, the time within which the registered owner of the trademark must serve their 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.

Marginal note:Written representations

• 73 (1) After the registered owner has furnished an affidavit or statutory declaration to the Registrar in response to a notice given under subsection 45(1) of the Act, the Registrar must give the parties notice that they may submit written representations to the Registrar.

• Marginal note:Timing if notice given at Registrar’s initiative

  (2) For the purpose of subsection 45(2) of the Act, if the notice referred to in subsection 45(1) of the Act was given on the Registrar’s own initiative, the time within which the registered owner may submit written representations to the Registrar is two months after the date of the notice given under subsection (1) of this section.

• Marginal note:Statement of registered owner

  (3) If the registered owner does not wish to submit written representations in respect of a notice referred to in subsection 45(1) of the Act that was given on the Registrar’s own initiative, they may submit a statement to that effect to the Registrar within the two-month period referred to in subsection (2) of this section.

• Marginal note:Timing if notice given on request

  (4) For the purpose of subsections 45(2) and (2.1) of the Act, if the notice referred to in subsection 45(1) of the Act was given at the request of a person, the time within which that person may submit written representations to the Registrar and must serve those representations on the registered owner is two months after the date of the notice given under subsection (1) of this section.

• Marginal note:Statement of person requesting notice

  (5) If that person does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period referred to in subsection (4) and, if so, they must serve it on the registered owner within that period.

• Marginal note:Timing of registered owner’s written representations

  (6) For the purpose of subsections 45(2) and (2.1) of the Act, if the notice referred to in subsection 45(1) of the Act was given at the request of a person, the time within which the registered owner may submit written representations to the Registrar and must serve those representations on that person is

  • (a) in the case that a service referred to in subsection (4) or (5) of this section, as the case may be, is effective within the two-month period referred to in that subsection (4), two months after the day on which that service is effective; and

  • (b) in any other case, two months after the end of the two-month period referred to in that subsection (4).

• Marginal note:Statement of registered owner

  (7) If the registered owner does not wish to submit written representations in respect of a notice referred to in subsection (6), they may submit a statement to that effect to the Registrar within the two-month period determined under subsection (6) for their submission of written representations and, if so, they must serve it on the person requesting the notice within that period.

Marginal note:Request for hearing

• 74 (1) Every party that wishes to make representations to the Registrar at a hearing must file with the Registrar a request that indicates

  • (a) whether the party intends to make representations in English or French and whether they will require simultaneous interpretation if another party makes representations in the other official language; and

  • (b) whether the party wishes to make representations in person, by telephone, by video conference or by another means of communication offered by the Registrar and that sets out any information necessary to permit the use of the chosen means of communication.

• Marginal note:Period

  (2) The request must be filed within the following period:

  • (a) if the notice referred to in subsection 45(1) of the Act was given on the Registrar’s own initiative, one month after the day on which the registered owner submits to the Registrar written representations or a statement that they do not wish to make written representations or, if no such submission is made within the two-month period referred to in subsection 73(2) of these Regulations, one month after the end of that two-month period; and

  • (b) if the notice referred to in subsection 45(1) of the Act was given at the request of a person, one month after the day on which the registered owner’s service of written representations or of a statement that they do not wish to make written representations is effective or, if no such service is effective within the two-month period determined under 73(6) of these Regulations for their submission of written representations, one month after the end of that two-month period.

• Marginal note:When representations may be made

  (3) A party may make representations at the hearing only if they file a request in accordance with this section.

• Marginal note:Changes

  (4) If a party, at least one month before the date of the hearing, notifies the Registrar of changes to be made in respect of any of the information provided under subsection (1), the Registrar must modify the administrative arrangements for the hearing accordingly.

Marginal note:Costs

• 74.1 (1) The Registrar may, on request, award costs against a party to a proceeding under section 45 of the Act in the following amounts:

  • (a) in the case where the party withdraws a request for a hearing less than 14 days before the day on which the hearing is scheduled to take place, an amount that is two times the fee set out in item 13 of the schedule to these Regulations for a request that a notice be given under subsection 45(1) of the Act; or

  • (b) in the case where the party engages in unreasonable conduct that causes undue delay or expense in the proceeding, an amount that is five times the fee set out in item 13 of the schedule to these Regulations for a request that a notice be given under subsection 45(1) of the Act.

• Marginal note:Restriction

  (2) The Registrar must not award costs if the proceeding is ended before the final decision is issued.

• Marginal note:Non-application

  (3) Subsection (1) does not apply if

  • (a) in the circumstances referred to in paragraph (1)(a), the hearing is scheduled to take place on or before the day on which this section comes into force or within 14 days after that day; or

  • (b) in the circumstances referred to in paragraph (1)(b), the unreasonable conduct occurs before the day on which this section comes into force.

Marginal note:Request for costs

• 74.2 (1) A request by a party that costs be awarded must be filed using the online service that is designated by the Registrar as being accepted for that purpose and must specify the reasons for the request and the circumstances for which costs are sought.

• Marginal note:Timing of request

  (2) The request for costs must be filed

  • (a) in the case where a party has filed a request for a hearing under subsection 74(1), within 14 days after the day on which the hearing ends or within 14 days after the day on which the Registrar notifies the parties that the hearing has been cancelled; or

  • (b) in any other case, within 14 days after the end of the one-month period for filing a request for a hearing under subsection 74(1).

Marginal note:Representations

74.3 The Registrar must give the other party notice of the request for costs and an opportunity to make written representations, which must, within 14 days after the day on which the notice is given, be made using the online service that is designated by the Registrar as being accepted for that purpose.

Renewal of Registration

Marginal note:Fee

75 For the purpose of section 46 of the Act, the renewal fee to be paid is that set out in item 14 of the schedule to these Regulations.

Marginal note:Period

76 For the purpose of section 46 of the Act, the period within which the renewal fee is to be paid

• (a) begins on the day that is six months before the end of the initial period or the renewal period, as the case may be, and

• (b) ends at the later of

  • (i) the end of the six-month period that begins after the end of that initial or renewal period, and

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