Trademarks Regulations (SOR/2018-227)

Marginal note:Deemed date — merged registrations

77 For the purpose of a renewal under section 46 of the Act, the deemed day of registration in respect of a registration of a trademark that results from the merger of registrations under paragraph 41(1)(f) of the Act is the day that is 10 years before the earliest day, after the day of the merger, on which the initial period or the renewal period, as the case may be, in respect of any of the registrations being merged would have expired, had the merger not occurred.

Objection Proceeding Under Section 11.13 of Act

Marginal note:Fee

78 For the purpose of subsection 11.13(1) of the Act, the fee to be paid for filing a statement of objection is that set out in item 15 of the schedule to these Regulations.

Marginal note:Correspondence

79 A person that corresponds with the Registrar in respect of an objection proceeding must clearly indicate that the correspondence relates to that proceeding.

Marginal note:Forwarding copies of documents

80 A party to an objection proceeding that, on a given day after a statement of objection has been filed with the Registrar under subsection 11.13(1) of the Act, provides to the Registrar a document, other than a document that they are otherwise required to serve on another party, that relates to that proceeding must, on that day, forward a copy of it to the other party.

Marginal note:Manner of service

• 81 (1) Service of a document in respect of an objection proceeding 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) If a party to be served appoints a trademark agent in respect of an objection proceeding,

  • (a) that agent is deemed, in respect of any party that has been served with notice of the appointment, to replace any person or firm set out in a statement by the Minister or a statement of objection as a person on whom or a firm on which service of any document may be made with the same effect as if it had been served on the party directly; and

  • (b) 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:Amendment

• 82 (1) No amendment to a statement of objection or counter statement may be made except with leave of the Registrar on terms that the Registrar considers to be appropriate.

• Marginal note:Interests of justice

  (2) The Registrar must grant leave under subsection (1) if it is in the interests of justice to do so.

Marginal note:Manner of submitting evidence

83 Evidence in respect of an objection proceeding, other than evidence referred to in subsection 91(3) of these Regulations, is to be submitted to the Registrar by way of affidavit or statutory declaration. However, if the evidence consists of a document or extract from a document that is in the official custody of the Registrar, it may be submitted by way of a certified copy referred to in section 54 of the Act.

Marginal note:Timing of objector’s evidence

• 84 (1) The objector may submit evidence referred to in subsection 11.13(5) of the Act to the Registrar within a period of four months after the day on which the responsible authority’s service on the objector of a copy of the counter statement is effective.

• Marginal note:Timing of service

  (2) For the purpose of subsection 11.13(5.1) of the Act, the time within which the objector must serve that evidence on the responsible authority is during that four-month period.

• Marginal note:Objector’s statement

  (3) If the objector does not wish to submit evidence, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) and, if so, they must serve it on the responsible authority within that period.

Marginal note:Circumstances — deemed withdrawal of objection

85 For the purpose of subsection 11.13(6) of the Act, the circumstances under which the objector’s not submitting and serving evidence or a statement referred to in that subsection results in their objection being deemed to have been withdrawn are that neither that evidence nor that statement has been submitted and served by the objector by the end of the four-month period referred to in section 84 of these Regulations.

Marginal note:Timing of responsible authority’s evidence

• 86 (1) The responsible authority may submit evidence referred to in subsection 11.13(5) of the Act to the Registrar within a period of four months after the day on which the objector’s service under section 84 of these Regulations is effective.

• Marginal note:Timing of service

  (2) For the purpose of subsection 11.13(5.1) of the Act, the time within which the responsible authority must serve that evidence on the objector is during that four-month period.

• Marginal note:Statement of responsible authority

  (3) If the responsible authority does not wish to submit evidence, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) and, if so, they must serve it on the objector within that period.

Marginal note:Non-application of subsection 11.13(5) of Act — circumstances

87 For the purpose of paragraph 11.13(5)(a) of the Act, the circumstances under which the responsible authority’s not submitting evidence or a statement that they do not wish to submit evidence results in the loss of the opportunity to submit evidence and to make representations to the Registrar are that neither that evidence nor that statement has been submitted and served by the responsible authority by the end of the four-month period referred to in section 86 of these Regulations.

Marginal note:Circumstances — indication or translation not entered on list

88 For the purpose of subsection 11.13(6.1) of the Act, the circumstances under which the responsible authority’s not submitting and serving evidence or a statement that they do not wish to submit evidence results in the indication or the translation not being entered on the list are that neither that evidence nor that statement has been submitted and served by the responsible authority by the end of the four-month period referred to in section 86 of these Regulations.

Marginal note:Reply evidence — timing

89 Within one month after the day on which the service on the objector under section 86 is effective, the objector may submit to the Registrar reply evidence and, if so, they must serve it on the responsible authority within that one-month period.

Marginal note:Additional evidence

• 90 (1) A party may submit additional evidence with leave of the Registrar on terms that the Registrar considers to be appropriate.

• Marginal note:Interests of justice

  (2) The Registrar must grant leave under subsection (1) if it is in the interests of justice to do so.

Marginal note:Ordering of cross-examination

• 91 (1) On the application of a party made before the Registrar gives notice in accordance with subsection 92(1), the Registrar must order the cross-examination under oath or solemn affirmation, within the period specified by the Registrar, of any affiant or declarant on an affidavit or statutory declaration that has been submitted to the Registrar as evidence in the objection proceeding.

• Marginal note:Conduct of cross-examination

  (2) The cross-examination is to be conducted as agreed to by the parties or, in the absence of an agreement, as specified by the Registrar.

• Marginal note:Transcript and undertakings

  (3) Within the period specified by the Registrar for conducting the cross-examination,

  • (a) the party that conducted the cross-examination must submit to the Registrar and serve on the other party the transcript of the cross-examination and exhibits to the cross-examination; and

  • (b) the party that was cross-examined must submit to the Registrar and serve on the other party any information, document or material that they undertook to provide in the course of the cross-examination.

• Marginal note:Inadmissibility in absence of cross-examination

  (4) An affidavit or statutory declaration is not to be part of the evidence if an affiant or declarant declines or fails to attend for cross-examination.

Marginal note:Written representations

• 92 (1) After all evidence has been filed, the Registrar must give the parties notice that they may submit written representations to the Registrar.

• Marginal note:Timing of objector’s written representations

  (2) The objector may submit written representations to the Registrar within a period of two months after the date of that notice.

• Marginal note:Timing of service

  (3) For the purpose of subsection 11.13(5.1) of the Act, the time within which the objector must serve their written representations on the responsible authority is during that two-month period.

• Marginal note:Statement of objector

  (4) If the objector 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 (2) and, if so, they must serve it on the responsible authority within that period.

• Marginal note:Timing of responsible authority’s written representations

  (5) The responsible authority may submit written representations to the Registrar within the following period:

  • (a) if service referred to in subsection (3) or (4), as the case may be, is effective within the two-month period referred to in that subsection, 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 subsection (2).

• Marginal note:Timing of service

  (6) For the purpose of subsection 11.13(5.1) of the Act, the time within which the responsible authority must serve their written representations on the objector is during the two-month period determined under subsection (5) of this section for their submission of written representations.

• Marginal note:Statement of responsible authority

  (7) If the responsible authority does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period determined under subsection (5) for their submission of written representations and, if so, they must serve it on the objector within that period.

Marginal note:Request for hearing

• 93 (1) Within one month after the day on which the responsible authority’s service on the objector of written representations or of a statement that the responsible authority does not wish to make written representations is effective — or, if no such service is effective within the two-month period determined under subsection 92(5) for their submission of written representations, within one month after the end of that two-month period — a party that wishes to make representations to the Registrar at a hearing must file with the Registrar a request that indicates

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

  • (b) whether they wish 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:When representations may be made

  (2) A party may make representations at the hearing only if they file a request in accordance with subsection (1).

• Marginal note:Changes

  (3) 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

• 93.1 (1) The Registrar may, on request, award costs against a party to an objection proceeding 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 15 of the schedule to these Regulations for filing a statement of objection under subsection 11.13(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 15 of the schedule to these Regulations for filing a statement of objection under subsection 11.13(1) of the Act.

• Marginal note:Restriction

  (2) The Registrar must not award costs if the objection 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

• 93.2 (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 93(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 93(1).