Canada's Modernized Domestic Trademark Regime Explained

From: Canadian Intellectual Property Office

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Presentation overview

Towards implementation
Non-traditional trademarks
Amendments to an application
Dividing applications and merging registrations
Inherent distinctiveness
Withdrawal of advertisement
Corrections of errors on a registration
Notification of third party rights
Renewals
Notice to group and class
Extensions of time
Force majeure
Un-complicating the transitional provisions

Towards implementation

Focus now is implementation and operational readiness

Finalizing new Practice Notices
Training of Operations and Examination staff
Updates to information guides, the Trademarks Examination Manual, existing practice notices, all web pages
Formal accession to the three trademarks treaties

Non-traditional trademarks

The amended Trademarks Regulations reflect the requirements for the representation of non-traditional trademarks, particularly with respect to sound, scent, texture, moving image, 3D and hologram trademarks.

Requirements summary

An application must include a representation or description, or both, of the trademark.
The representation must not exceed 8cm x 8cm in size, and may provide more than one view of the trademark.
For colour trademarks or trademarks that are claiming colour(s) as a feature, representations must be submitted in colour, along with a description of the colour(s).

Representation vs description
Trademark type	Representation	Description
Standard Characters	Yes	No
Design	Yes	No
Colour per se	Yes	Yes
3-D	Yes	Optional
Positioning of a sign	Yes	Yes
Hologram	Yes – Electronic or static	Yes
Moving Image	Yes – Electronic or static	Yes
Sound	Yes – Sound	Yes
Taste	No	Yes
Scent	No	Yes
Texture	Optional	Yes
Mode of Packaging	Yes	Yes

Amendment of an application for the registration of a trademark

The amended Regulations provide applicants with more flexibility to amend an application prior to registration.

Amendment of applications

New subsection 35(1) of the Regulations allows for an application for registration to be amended before the trademark is registered.
The Regulations also include exceptions to this rule and are listed in paragraphs 35(2)(a)-(f).

Identity of an applicant

Paragraph 35(2)(a)

Must not change the identity of the applicant unless:

it results from the recording of a transfer; or
it is to correct an error in the applicant's identification

Examples

Acceptable circumstances:

Transfer of ownership (e.g. assignment)
Change of name
Correct error in identity

Examples of an "error in the applicant's identification" include, but are not limited to:

spelling error;
omission of a legal entity identifier (Ltd., Co., LLP);
incorrect legal entity identifier (Ltd. to Co.),
change from single owner to multiple owners

Representation or description

Paragraph 35(2)(b)

Must not change the representation or description of the trademark unless:

The application has not been advertised; and
The trademark remains substantially the same

Goods or service

Paragraph 35(2)(c)

Must not broaden the statement of goods or services beyond the scope of:

that statement on the filing date (not including any priority date)
the narrower of that statement as advertised and that statement as amended after advertisement

Divisional application

Paragraph 35(2)(d)

Must not add an indication that the application is a divisional application

Statements

Paragraph 35(2)(e)

Must not add or delete a statement that the trademark is in standard characters, a non-traditional trademark, or a colour trademark unless:

the application has not been advertised; and
the trademark remains substantially the same

Certification marks

Paragraph 35(2)(f)

Must not add or delete a statement that the trademark is a certification mark after the application is advertised

Dividing applications and merging registrations

A divisional application is a separate application that contains goods or services that have been divided out from the original application into a new application.

Why make a request?

A divisional application can be filed for reasons which include, but are not limited to:

if a confusion objection is raised in respect of particular goods or services, the applicant may decide to divide out those goods or services so that the original application can proceed to advertisement
if a clearly descriptive objection has been raised or maintained in relation to some of the goods or services of the application, the applicant may wish to divide out those goods or services so that the original application can proceed to advertisement

Making the request - Domestic

A divisional application can be filed at the same time as the original application is limited or it can be filed at a later date (up to the date of advertisement of the original application.
It is only possible to limit an active application (i.e. not abandoned, refused or registered).
When filing a divisional application, the applicant must reference the application number of the original application, if known, and clearly indicate that it is a divisional application.
The Registrar will send the applicant a notice confirming that the divisional application has been created.

Scope of goods or services

The scope of goods or services that can be divided will depend on where the application is in the registration process.

If the original application has not been advertised at the date the divisional application is filed, the goods or services must be within the scope of the original application on its filing date.

Example

An initial application is filed in association with "clothing, namely, jackets, pants, sweaters and t-shirts, and casual footwear".

At some point prior to advertisement the application is limited by removing "sweaters".

The applicant cannot file a divisional application prior to advertisement for "clothing namely, hosiery" as it would extend the goods outside the scope of the original application on its filing date.

Scope of goods or services

If a divisional application is filed after the original application has been advertised, the goods or services in the divisional application must be within the scope of the original application on the day on which the divisional application is filed.

Example

An initial application is filed in association with "clothing, namely, jackets, pants, sweaters and t-shirts, and casual footwear".

Prior to advertisement, the application is limited to remove the goods "casual footwear".

The applicant may not file a divisional application for "casual footwear" after advertisement in an effort to circumvent possible opposition proceedings.

Payment of fees

A divisional application is considered a separate application, including with respect to the payment of any fees.
However, if the filing fees listed under item 7 of the Tariff of Fees have been paid on the original application, they are considered to have been paid on any divisional application.
As well, the divisional application's filing date is deemed to be the original application's filing date.

Steps deemed to have been taken

Subject to the exceptions listed in subsection 40(2) of the Trademarks Regulations, any action taken in respect of the corresponding original application up to and including the day on which the divisional application is filed, is deemed to be an action taken in respect of the divisional application.

Example #1

If an examiner's report has issued on the original application before a divisional application was filed, the deadline to respond to the report will also apply to the divisional application and the Office will not re-issue a new examiner's report.

Example #2

If a transfer has been requested on the original application before a divisional application was filed, but could not be processed due to missing information, the transfer will be deemed to have been requested on the divisional application. Once the missing information has been provided, the request will be processed on both the original and divisional applications. Please note that the fee listed in item 8 of the Tariff of Fees will have to be paid on each divisional application.

Steps deemed to have been taken

Filing a divisional application is not considered a response to an objection; all issues in the office action must be addressed. If all issues are not addressed, a notice of default may be issued.

After advertisement

An application may also be divided any time after advertisement but before registration, including during the two-month period following advertisement, any extended opposition period and after the filing of a statement of opposition, so long as the goods and services divided out are within the scope of the original application on the day on which the divisional application is filed.

Merging registrations - Domestic

Under paragraph 41(1)(f) of the Act, if a trademark that is the subject of an application that has been previously divided proceeds to registration, it may be merged with other registrations of the trademark that stem from the same original application and where the trademarks are the same and have the same registered owner.

Deemed date

Under section 77 of the Regulations, the deemed registration date of any merged registration will be the shorter of all the registration dates.
For example, the merging of two registrations, one of which expires in two years and the other in eight years, would result in one merged registration that expires in two years.

Extending the statement of goods or services

Applications filed under subsection 41(2) of the Act to extend the goods or services of a registration may also be divided and merged.
Upon registration, the divisional application will be merged automatically with the registration it extended (not the original application from which was divided).

Extending the statement of goods or services for a word mark or distinguishing guise

When a divisional application that stems from an application to extend the goods or services of a registration for a word mark or a distinguishing guise proceeds to registration and is merged automatically, the Office will also change the "type" of the registered trademark to a standard character, a three-dimensional shape or a mode of packaging goods, as applicable.

For applications in respect of a registered trademark that is a word mark or a distinguishing guise, the divisional application should, at the time of filing, include a statement under paragraph 31(b) of the Act to the effect that the applicant wishes the trademark to be registered in standard characters, or paragraph 31(e) of the Regulations that the trademark consists in whole or in part a three-dimensional shape or mode of packaging goods, as applicable.

Division after advertisement of a word mark or distinguishing guise

In the case of a divisional application filed after advertisement in respect of a word mark or a distinguishing guise, the divisional application must, at the time of its filing, include a statement under paragraph 31(b) of the Act, or under paragraph 31(e) of the Regulations, as applicable.

Pending transfer

Should there be a pending transfer of any of the registrations that stem from the same original application, the request to merge will only be processed once the transfer is registered to ensure that all registrations are in the name of the same registered owner.

Inherent distinctiveness

The Registrar will be able to refuse, under paragraph 37(1)(d) of the Act, trademarks which are not inherently distinctive.

What is inherent distinctiveness?

Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated.
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources.

The assessment

An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the goods and services applied for assuming no use (as defined in section 4 of the Act) has occurred.

Inherent distinctiveness

Applicants will be given the opportunity to furnish the Registrar with evidence that the trademark had acquired distinctiveness at the date of filing of the application.

Applications not advertised

Applications not advertised by June 17, 2019 will require reassessment by an Examiner for inherent distinctiveness under subsection 32(1) of the Act.

Withdrawal of the advertisement of an application

The Registrar will have explicit authority to withdraw the advertisement of an application.

Subsection 37(4) of the act

Subsection 37(4) gives the Registrar the authority to withdraw the advertisement of an application under two conditions:

the application should not have been advertised; or
the application was incorrectly advertised

Examples

Should not have been advertised:

The applicant was not entitled to registration in view of the priority filing date of a confusing pending application.
An objection under section 12 of the Act was overlooked or withdrawn in error.

Incorrectly advertised:

Information, amendments or statements that were included in the latest application were omitted from the advertisement in error.

Conditions

The Registrar must be satisfied that the application should not have been advertised or was incorrectly advertised.
The Registrar must consider it reasonable to withdraw the advertisement.
If the advertisement is withdrawn by the Registrar, the application is deemed never to have been advertised.
As a result, an application will never be "re-advertised" under the amended Act.

Correct obvious error in registration

Subsection 41(3) of the Act provides the Registrar with the authority to correct errors in registrations.

Under the current Act, only the Federal Court may correct errors in a registration. The expense of a Federal Court proceeding under section 57 must generally be borne by the registered owner.

Obvious errors

The Registrar may only correct an error on the register if the documentation containing the accurate information was on file at the time the trademark was entered on the register.
An example: some of the goods or services listed in the application on the registration date were omitted from the entry on the register.

Timing

The correction must be made by the Registrar within six months from the day on which the trademark is entered on the register.
It is not enough that the Registrar receives the request within the six months; the correction must be made within that period.
The Registrar must receive requests to correct an error in a timely fashion as requests sent at the end of the period may not be processed in time.

Notification of third party rights

An informal way for third parties to bring to the attention of the Registrar information bearing on the registrability of a pending trademark application.

Notifications

This correspondence procedure is limited to three grounds;
Does not create an inter partes proceeding between the applicant and the third party; and
Does not replace opposition proceedings.

Communication procedures

Third parties who wish to notify the Registrar of these grounds must submit a written request, by mail or fax, addressed to the Deputy Director of Examination.
Must include the name of the applicant and application number of the relevant application.
Notifications will be placed on the relevant file and available for public inspection.
No information as to any action taken on the relevant application as a result of the notification will be provided.
Receipt of notifications will be indicated by a note on the action history page of the relevant application on the Canadian Trademarks Database.

Appropriate grounds

A notification of third party rights must only inform the Registrar of the following:

confusion with a registered trademark under paragraph 12(1)(d) of the Trademarks Act;
entitlement under paragraph 37(1)(c) of the Act;
registered trademark(s) used to describe goods or services in the application

Required information

A notification of third party rights must be limited to information related to the appropriate grounds along with a list of relevant registrations or pending applications, including the registration or application numbers.
Written arguments or evidence of prior use will not be accepted or considered.

Timing

While a notification may be filed at any time before a trademark is registered, subsection 37(4) of the Act prescribes the conditions under which the Registrar may withdraw the advertisement of an application.

Monitoring

It is recommended to monitor the status of the relevant application as it may be approved for advertisement despite the submission of a notification.
Ongoing monitoring will give third parties the opportunity to take other appropriate action, such as filing a statement of opposition.
Filing a notification of third party rights does not stay or extend the time for filing a notice of opposition nor does it extend the deadline for responding to an examiner's report.

Renewals

The renewal term has changed from 15 to 10 years and was required by the Singapore Treaty.

Period to renew

It will no longer be possible to renew a registration at any time.
Under the new Act and for trademarks registered after June 17, 2019, a request to renew can only be filed at any time between 6 months before and 6 months after the expiry of the registration.

Fees and requirements to class

Where goods or services of a registration have not been grouped and classed, the owner will be permitted to renew by only paying the basic renewal fee for the first class.
Where the goods or services have been grouped and classed, the complete fee for all classes is required.

Partial renewals

Bill C-86 introduced an amendment allowing registered owners, to partially renew their trademark
For registrations already grouped and classed, the owner will be permitted to renew any goods or services, while paying the corresponding fee.
The goods or services not renewed will be deleted from the registration.

Notice to group and class

Section 44.1 of the Act and section 63 of the Regulations have been established to facilitate the classification of the goods or services found in existing registrations.

Amendment requirement

Subsection 44.1(1) provides the Registrar with the authority to require, by way of notice, all registered owners to group and class the goods or services of their registered trademark.

Prescribed time

Section 63 of the Regulations states that the registered owner must provide the Registrar with the statement of goods or services grouped and classed according to the Nice Classification within 6 months after the date of the notice.

Failing to furnish statement

If the registered owner does not respond to the notice by providing the classes for the goods or services, the Registrar will send a further notice under subsection 44.1(3) giving the registered owner 2 months to comply.
If the classes are still not provided, the registration may be expunged or not renewed.

Extensions of time

A person can apply under subsection 47(1) of the Act to extend a time limit only if that time is set by the Act or prescribed by the Regulations.

Section 47 of the act

Under subsection 47(1) a person can apply for an extension of time to:

remedy a default in the prosecution of an application under section 36 of the Act
furnish the Registrar with a statement required under subsection 44.1(1) of the Act

Subsection 47(2) gives a person the opportunity to request an extension of time after that time has lapsed.

Fees

In view of section 14 of the Regulations, a person that applies for an extension of time under either subsections 47(1) or (2) of the Act must pay the prescribed fee of $125.
Therefore, a fee is required to apply for an extension of time and it does not depend on whether the extension is granted.

Force majeure

Relief measures for force majeure events that provide more flexibility to extend certain prescribed deadlines in the Trademarks Act.

Subsection 34(5) of the act

Subsection 34(5) of the Act permits an applicant to apply for an extension of time based on force majeure to file an application in Canada containing a priority claim.

The time limit to file an application in Canada under paragraph 34(1)(a) is 6 months after the filing date of the earliest foreign application.
This is different from the requirement under paragraph 34(1)(b) to declare (add) a claim to priority to an existing application in Canada within 6 months of the filing of the earliest foreign application.

Therefore, an applicant may request an extension of time under section 47 of the Act to file a Canadian application containing a priority claim due to a force majeure event but not to declare (add) a claim to priority to an existing application in Canada.

Subsection 46(5) of the act

Subsection 46(5) of the Act permits a registered owner to apply for an extension of time to renew a registered trademark.

Force majeure

While not explicitly stated as such, subsections 34(5) and 46(5) of the Act provide relief measures for applicants to extend time limits due to a "force majeure" event.
The uncontrollable character of the event refers to it being something unexpected and beyond reasonable human foresight.

Characteristics

In addition to its unexpected character, the event must also be directly responsible for why the obligation could not be met.
Force majeure events can also include political or medical events at an international, national or personal level.

Examples

ice storms, fires, explosions, earthquakes, drought, tidal waves and floods;
war, hostilities, invasion, act of foreign enemies, mobilisation, embargo;
rebellion, revolution, insurrection, civil war;
contamination by radioactivity
riots, strikes, go slows, lock outs or disorder (unless solely restricted to employees of the party);
viral/bacterial epidemic outbreak;
acts or threats of terrorism;
emergency hospitalization; unscheduled operation

Requesting extension of time

An applicant or registered owner may request this type of extension of time only after the time limit has passed.
The request must be made under subsection 47(2) of the Act and sent to the Deputy Director, Examination Section for review and approval.
In the request, the applicant or registered owner must explain the reason(s) why it could not do the act within the prescribed period.
Evidence that the event has occurred is not required; it is enough that the event is clearly described in the request.

Granting of request

If the Office grants the extension of time due to Force Majeure, the period may only be extended by a maximum of seven days.

Transitional provisions

A guide has been drafted to help understand the transitional provisions
The guide is divided into four sections.
Each section details how applications will be dealt with depending on where they are in the registration process on the coming-into-force (CIF) date.

1 Filing date not granted

Applications which have been received by the Office but have not met the filing requirements set out in Rule 25 of the current Regulations will be re-assessed under the requirements in section 33 of the amended Act.
If an application was not granted a filing date prior to the CIF date but does meet the requirements under new subsection 33(1), the filing date will be the CIF date.

Examples

Lack of a mailing address for the applicant but an email address or phone number is provided;
An incomplete claim;
An application for a trademark consisting of a design which did not include the drawing but contained only a written description.

Requirements still missing

If all requirements under new subsection 33(1) of the Act were not provided by the CIF date, the Registrar will issue a notice to the applicant.
Applicants will have 2 months from the date of the notice to correct the deficiencies.
If the applicant does not submit the outstanding items within those 2 months, the application will be deemed never to have been filed.

Payment of fees

Given the changes to the fee structure on the CIF date, if the only outstanding requirement is the prescribed filing fee under paragraph 33(1)(f) of the Act, the Registrar will send a notice to the applicant outlining the deficiency unless the application contained a general authorization to charge a deficiency.

2 Filing date granted prior to CIF

Applications which received a filing date but have not yet been advertised before the CIF will be subject to most provisions of the amended Act.
Applications will be re-assessed to ensure they meet the registrability requirements of the amended Act.
For example, applications that have:
- been filed but not assigned to an Examiner;
- an outstanding Examiner's report;
- a reply to an Examiner's report

Basis for registration

All references to a basis of registration (use; intention to use; use and registration abroad) have been removed in the amended Act.
Applications not advertised at the CIF date can retain any use-related claims, but the bases will not appear in the advertisement at this stage. An applicant can request that the bases be deleted from the application, but only prior to advertisement.
Certified copies of foreign registrations are no longer required.

Not inherently distinctive

The Registrar will be able to refuse trademarks which are not inherently distinctive under new paragraph 37(1)(d).
Applications not advertised by the CIF date will require reassessment by an Examiner for inherent distinctiveness under new subsection 32(1) of the Act.
Applicants will be given the opportunity to furnish the Registrar with evidence that the trademark was distinctive at the date of filing of the application.

Division

Applications filed but not yet advertised can be divided so long as, at the date the divisional application is filed, the divided goods or services are within the scope of the original application at its filing date.

Section 14

As this provision has been removed from the Act, applications which have not been advertised by the CIF date may not claim the benefit of section 14 to overcome an objection under paragraphs 12(1)(a)/(b).
The application must be amended to delete this claim.

Certification marks

Use of a certification mark prior to the filing date is no longer a requirement under the amended Act.
Applications for certification marks filed on the basis of proposed use prior to the CIF date can proceed to advertisement if all requirements are met and there are no outstanding objections.

New subsection 12(2)

The Registrar will be able to object to the registration of a trademark if its features are dictated primarily by a utilitarian function.
Applications which have not been advertised prior to the CIF date will require reassessment by an Examiner to determine if the trademark contravenes new subsection 12(2) of the Act.

Distinguishing guise

As the amended Act no longer includes a definition of "distinguishing guise", any application for a guise not advertised at the CIF date will require amendment to indicate that the trademark consists of either a:

three-dimensional shape, or
mode of packaging goods.

Nice classification

Under the amended Act, goods and services in an application must be grouped according to the Nice Classification.
Applications not advertised at the CIF date will need to be amended to properly group and class the goods or services.

Associated trademarks

The concept of "associated trademarks" will no longer exist in the amended Act.
At the CIF date, information pertaining to associated trademarks will be removed for all applications and registrations.

Standard characters

An application filed before, but not advertised on, the CIF date may be amended to add a statement that the applicant wishes the trademark to be registered in standard characters, but only if the trademark remains substantially the same.

Non-traditional trademarks & colour

Applications filed before, but not advertised on, the CIF date may be amended to add a statement as referred to in paragraphs 31(e) to (g) of the amended Regulations, but only if the trademark remains substantially the same, namely:

3-D shape, hologram, moving image, mode of packaging, sound, scent, taste, texture or positioning of a sign, a statement must be made;
if colour is claimed as a feature of the trademark;
exclusively of one colour or a combination of colours

Fees

The filing fee for applications filed before the CIF will be the fee under the previous Tariff of Fees ($250 if submitted online; $300 in any other case) and the new fee per additional Nice class will not apply.

The registration fee of $200 from the current Regulations must still be paid.

3 Advertised and allowed

Trademarks advertised or allowed prior to the CIF date will be subject to most of the provisions of the current Act.
Applications will no longer require a Declaration of Use prior to registration
For applications not yet registered at the CIF date:
- The registration fee of $200 from the current Regulations must still be paid
- If this fee is paid, it is deemed to have been paid for all original and divisional applications.

No need to group and class goods or services

The grouping of the goods or services according to the classes of the Nice Classification will not be required for an application that was filed and advertised prior to the CIF date since it is only required for the purposes of advertisement, renewal or following a notice issued under section 44.1 of the amended Act.

Division after advertisement

Applications filed and advertised can be divided so long as, at the date the divisional application is filed, the divided goods or services are within the scope of the original application on the day on which the divisional application is filed.

In the case of a divisional application filed after advertisement in respect of a word mark or a distinguishing guise:
- the divisional application must, at the time of its filing, include a statement that the applicant wishes the trademark to be registered in standard characters;
- or that the trademark consists in whole or in part a three-dimensional shape or mode of packaging goods, as applicable.

These statements are required since it will only be permissible to add or delete these statements if the application has not been advertised and the trademark remains substantially the same.
If merged, the resultant "type" of merged registration will be either a standard character, a three-dimensional shape or a mode of packaging goods, as applicable.

Term of registration

For applications filed prior to the CIF, the term of registration (10 or 15 years) will depend on the date on which the Registrar has processed the registration fee.

Examples

If the registration fee is processed prior to the CIF date, the registration will be granted an initial 15-year term.
If the registration fee is processed on or after the CIF date, the registration will be granted a 10-year term.

4 Registered prior to CIF

During the transition to the new Act, the fee, renewal term, and requirement to group and class goods or services according to Nice Classification will be dependent on several factors.

Group and class goods or services

If a trademark was registered prior to the CIF and the goods or services are not grouped according to the classes of the Nice Classification, the Office will issue a notice under section 44.1 of the amended Act.
The registered owner will have 6 months after the date of the notice to furnish the Registrar with a statement of goods or services grouped according to the Nice Classification.

Timing of renewal

If the renewal is requested after the CIF and the registration or renewal expired prior to the CIF date:

old renewal fee ($350 or $400) applies;
renewal period is 15 years;
owner not required to group and class goods or services according to Nice Classification; and
Registrar will send notice shortly after renewal requiring grouping of goods and services according to Nice Classification (where applicable)

If renewal was requested and processed before the CIF date and registration or renewal expires after the CIF date:

old renewal fee applies;
grouping of the goods or services is not required until a notice under section 44.1 issues; and
if the renewal period granted was for 15 years, it will be amended to 10 years.

If a renewal is requested after the CIF date:

new renewal fee applies;
renewal period is for 10 years; and
registered owner will be required to group and class goods or services according to Nice.

Fees

In all cases where the goods or services of a registration have not been grouped and classed and where the new renewal fees apply, the prescribed fee will be the basic renewal fee for the first class.
Where the goods or services have been grouped and classed, the complete fee for all classes is required.
If fees are not paid or if the goods or services are not grouped and classed, the Registrar may expunge the registration.

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