Archived — Proposed Amendments to the Trade-marks Regulations 2014 — Page 2 of 5

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Part 1 - Proposed Amendments to the Trade-marks Regulations- Examination and General Provisions

Correspondence

Amendments are required to the rules for general correspondence in order to comply with the Singapore Treaty. In addition, other amendments are proposed to better reflect more modern communication practices, including allowing electronic means of communications with CIPO.

The proposed amendments include:

  1. Amend subsection 3(4) of the Regulations to replace the reference to the Trademarks Journal to reference the website of the Canadian Intellectual Property Office.
  2. Amend subsection 3(6) of the Regulations to replace the reference to the Trademarks Journal to reference the web site of the Canadian Intellectual Property Office. Correspondence addressed to the Registrar may be sent at any time by electronic or other means of transmission specified on the web site of the Canadian Intellectual Property Office.
  3. Amend subsections 3(7) and 3(8) to comply with Rule 6(8) of the Singapore Regulations which, for electronic communications, provides that the date on which an Office receives the communication, shall constitute the date of receipt of the communication.
  4. Repeal subsection 3(9) of the Regulations since electronic submissions will now be accepted for affidavits or statutory declarations.
  5. Section 4 does not require amendment.
  6. Amend subsection 5(2) to provide that subsection (1) does not apply in respect of a request for the correction of a clerical error under section 33 of the Regulations, provided that the mistake and the requested correction are the same for each application or registration, and that the application numbers or registration numbers of all applications and registrations concerned are indicated in the request. This amendment is required to comply with Articles 12(1)(d) and (2) of the Singapore Treaty.
  7. Amend subsection 5(2) to provide that subsection(1) does not apply in respect of an appointment of agent, which may relate to one or more applications and/or registrations identified in the appointment of agent or, subject to any exception indicated by the appointing person, to all existing and future applications and/or registrations of that person. This amendment is required to comply with Article 4(3)(b) of the Singapore Treaty.
  8. Replace the current requirement in subsection 6(1) of the Regulations by providing that any address required to be furnished pursuant to the Act or these Regulations shall be sufficiently detailed to enable the Registrar to contact the addressee at that address and, in any case, consist of all the relevant administrative units up to, and including, the house or building number, if any. This amendment corresponds to Rule 2(2)(a) of the Singapore Regulations that permits an Office to regulate the form an address should take.
  9. The information provided under paragraph 8 above relating to the applicant's address may, in accordance with Rule 2(2)(c) of the Singapore Regulations also contain any or all of the following:
    1. A telephone number.
    2. A fax number.
    3. An email address.
  10. Delete paragraph 5(2)(e) because "representative for service" has been removed from the Act. Articles 3(1) and (4) of the Singapore Treaty do not permit Canada to maintain the representative for service requirements found in s.30(g) of the Act.
  11. Add a new provision to provide that for the purpose of any communication with the Registrar in the name of 2 or more persons with different addresses, the persons must provide the Registrar with a single address as the address for correspondence. (Rule 2(2) of Singapore). Also provide that where the persons fail to provide a single address, the Registrar will send correspondence to the first listed address.
  12. Amend subsection 6(2) to provide that as soon as practicable, applicants and other persons doing business before the Office of the Registrar of Trademarks, including registered owners and parties to proceedings under section 38 and 45, and any appointed trademark agent must notify the Registrar of all changes of address. If the Registrar has not been notified of a change of address, the Registrar is not responsible for any correspondence not received. Remove the reference to "representative for service".
  13. Amend subsection 7(1) to provide that communications to the Registrar in respect of an application for the registration of a trademark shall include:
    1. the name of the applicant; and
    2. the application number, if one has been assigned and is known.
  14. Amend subsection 7(2) to provide that communications to the Registrar in respect of a registered trademark shall include:
    1. the name of the registered owner; and
    2. the registration number.

TM Agents

Amendments are being proposed to reflect the amendment to s.28 of the Act, which provides that trademark agents may now be appointed to act on behalf of registered owners and parties to opposition proceedings and section 45 proceedings as well as others in all business before the Office of the Registrar of Trademarks. These amendments are permitted in accordance with Article 4 of the Singapore Treaty.

The proposed amendments include:

  1. Amend section 8(1) to provide that except as otherwise provided by the Act or these Regulations, the Registrar shall only have regard to communications from, as applicable, applicants and others, including the registered owner of a trademark and parties to the proceedings under sections 38 and 45 in all business before the Office of the Registrar of Trade-marks. Repeal 8(4).
  2. Amend section 8(2) to provide that the Registrar must receive notice in writing that an applicant, opponent, registered owner, requesting party or any other person who is doing business before the Office of the Registrar of Trade-marks has appointed a trademark agent. This notice may come from the agent itself and does not require a signed power of attorney from the applicant, opponent, registered owner, requesting party or any other person who is doing business before the Office of the Registrar of Trade-marks. Subject to the scope of the trademark agent's authority, an agent may act for the agent's principal in any proceeding or take any step on that principal's behalf.
  3. If a trademark agent has been appointed and is authorized to act on behalf of a person who is doing business before the Office of the Registrar of Trade-marks, the Registrar shall only have regard to communications from that appointed trademark agent. Repeal section 11.
  4. The Registrar satisfies any requirement under the Act and Regulations for the issuance to, notice on, correspondence with or service on, a person who is doing business before the Office by issuing to, serving on, giving notice to or corresponding with that person's trademark agent.
  5. No amendment is required to section 8(3) or section 9.
  6. Repeal section 10.
  7. Add a new provision to provide that despite the above provisions with respect to the appointment of a trademark agent, that any person may pay a registration or renewal fee.

Third Party Correspondence – TM Examination

This proposed amendment will permit CIPO to accept correspondence from third parties during the examination process. Such correspondence will not commence an inter partes proceeding but will provide examiners with information that could potentially help in their assessment of an application.

The proposed amendment is as follows:

  1. Add a new provision to allow the Registrar to receive correspondence from a third party other than the applicant any time before advertisement. A person who files such correspondence must explain the pertinence of the document – such pertinence pertaining to the registrability of the applied for trademark. The acceptance of such correspondence will not result in the commencement of inter partes proceedings, and will only be accepted after an application has received a filing date but before it is advertised (see section 34.1 of the Patent Act). The Registrar will forward a copy of any such correspondence which it determines to be pertinent to the applicant.

Address for Service

The following proposed amendments ensure that the address for service provisions are consistent with Article 4(2) of the Singapore Treaty.

The proposed amendments include:

  1. Where a trademark agent is appointed by an applicant, registered owner or others including parties to the proceedings under sections 38 and 45, that trademark agent's address is considered to be the address for service, provided that it is a Canadian address.
  2. Where no agent is appointed by an applicant, registered owner or others including parties to the proceedings under sections 38 and 45 and they have a Canadian address, that address will be considered to be the address for service.
  3. The Registrar may require an address for service in Canada be provided for the purposes of any procedure before the Office of the Registrar of Trade-marks, of an applicant and others including the registered owner of a trademark and parties to the proceedings under sections 38 and 45, in all business before the Office of the Registrar of Trademarks who:
    1. does not have an agent with a Canadian address; and
    2. the applicant, registered owner or others including parties to the proceedings under sections 38 and 45, has not provided the Registrar with the address of its principal office or place of business in Canada (Paragraph 4(2)(b) of the Singapore Treaty)
  4. Where the applicant, registered owner or others including parties to the proceedings under sections 38 and 45 does not provide the Registrar with an address for service upon request, or where such person fails to keep such address up to date, they will no longer be served with documents in relation to their application, registration or ongoing proceeding under section 38 or 45 of the Act.

General

The following proposed amendments make minor changes relating to the submission of documents to CIPO by getting rid of very prescriptive requirements.

The proposed amendments include:

  1. Section 12 of the Regulations does not require amendment.
  2. Amend section 13 to provide that documents shall be clear, legible and capable of being reproduced.
  3. Amend section 14 to provide that:
    1. The Registrar will refuse to take cognizance of any document submitted to the Registrar that is not in the English or French language unless a translation of the document into one of those languages is submitted to the Registrar.
    2. An application for the registration of a trademark must, with the exception of the trademark, be entirely either in English or in French.
    3. If an affidavit or statutory declaration submitted to the Registrar is not an original affidavit or statutory declaration, the original shall be retained by the person who submitted the affidavit or statutory declaration for one year after the expiry of all appeal periods and the original shall be submitted to the Registrar upon request.

Advertisement of Applications

The following proposed amendments make minor revisions to the information that the Registrar must publish when a trademark is advertised for opposition purposes. Most notable are the changes required to implement the Nice Classification which will make the lists of goods and services more user-friendly and accessible.

The proposed amendments include:

  1. Repeal paragraphs 15(b) and (c) as the particulars of registrations will no longer be published. Paragraphs 15(a), (d) and (e) of the Regulations do not require amendment.
  2. Amend section 16 to provide that the advertisement of an application must contain:
    1. The representation, description or both of the trademark;
    2. The name and address of the applicant and the applicant's trademark agent, if any;
    3. The application number;
    4. The filing date of the application and priority date, if any;
    5. The names of the goods or services, grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification;
    6. In the case of an application for a certification trademark or a trademark consisting of standard characters, a note to that effect;
    7. The particulars of any translation or transliteration; and
    8. In the case of evidence of acquired distinctiveness and/or the particulars of the territorial restriction, a note to that effect.
  3. Repeal section 17 of the Regulations as the particulars of every registration will no longer be published.

Application for Registration

  1. Amend section 24 of the Regulations to only indicate that a separate application must be filed for the registration of each trademark.
  2. Repeal section 25 because the filing date requirements are now in section 33 of the Act.

Application Requirements

The following proposed amendments will clarify what information is required in an application using simplified language. These changes will help to simplify the application process for clients and reduce the number of applications that are missing information.

  1. Create a new provision that, for the purposes of section 30(2) of the Act, the following information is required for a complete application for registration
    1. The name and address of the applicant or in the case of joint applicants, the name and address of each applicant.
    2. An address for correspondence, if any
    3. Where the applicant has a trademark agent, the name and address of that agent.
  2. Amend section 26 to provide that a Registered Owner of a trademark may file an application to extend under s.41(2) of the Act that must comply with the requirements of the Act and Regulations for filing a trademark application and must also contain the registration number.

Representation or Description of the Trademark

The following proposed amendments aim to modernize the requirements for the representation of trademarks, including most notably non-traditional trademarks. The outdated provisions requiring "drawings" and lines for colours will be replaced with new provisions that include the use of modern technologies for both the creation and the reproduction of representations. These changes aim to simplify the representation requirements while ensuring that trademarks are more clearly represented; it also will serve to codify existing office practice.

The proposed amendments include:

  1. Repeal section 27 of the Regulations. The provision of a "drawing" in accordance with subparagraph 30(h) of the Act has been replaced with the broader concept of "representation" or "description" or both.
  2. Create a new provision to provide that the representation or description of the trademark must be capable of being legibly reproduced for the purposes of advertisement (section 37 of the Act) and shall not include any matter that is not part of the trademark. Where the representation of the trademark is not suitable for reproduction in the Trademarks Journal, the Registrar may require an applicant to submit a new representation.
  3. Create a new provision to provide that any or all (up to 6) visual, pictorial or graphic (hereinafter referred to as "graphic") representation of the trademark must be no larger than 8cm X 8cm.
  4. Repeal section 28 of the Regulations.
  5. Create a new provision to provide that the representation or description of the trademark must relate to only one trademark.

Standard Characters

  1. For the purposes of subparagraph 31(a) of the Act the list of standard characters adopted by the Registrar will appear, as amended from time to time, on the web site of the Canadian Intellectual Property Office.
  2. Where a graphic representation is required, an application for a trademark that is not in standard characters may contain a representation that consists of more than one (1) view of the trademark, where that is required to clearly define the sign, but in no case more than six (6) views.

3D, Scent, Taste, Texture, Colour, Sound, Hologram, Moving Image, Mode of Packaging, Position

  1. Where an applicant wishes to claim colour as a distinctive feature of the trademark, the application must contain a colour representation of the trademark, must provide the name of the colour or colours claimed and, in respect of each colour, the principal parts of the trademark which are in that colour. The applicant may include a reference to an internationally recognized colour system for each colour. (Rule 3(2) of the Singapore Regulations)

3D

  1. An application for the registration of a trademark that contains or consists of a three-dimensional shape, must contain a graphic representation. Where the Registrar considers that the different views and/or description do not sufficiently show the particulars of the three-dimensional trademark, the Registrar may invite the applicant to furnish specimens of the trademark (Rule 3(4) of the Singapore Regulations).

Single colour or a combination of colours without delineated contours

  1. An application for the registration of a trademark that consists exclusively of a single colour or a combination of colours without delineated contours must indicate the name of the colour or colours and contain a graphic representation showing the colour or colours. The applicant may include a reference to an internationally recognized colour system for each colour. (Rule 3(2) of the Singapore Regulations).

Sound

  1. An application for the registration of a trademark that contains or consists of a sound, must contain an electronic recording of the sound in a format specified by the Registrar on the web site of the Canadian Intellectual Property Office.

Hologram

  1. An application for the registration of a trademark that contains or consists of a hologram must contain a graphic representation capturing the holographic effect or an electronic recording of the hologram in a format specified by the Registrar on the web site of the Canadian Intellectual Property Office.

Moving Image

  1. An application for the registration of a trademark that contains or consists of a moving image must contain a graphic representation depicting the movement or an electronic recording of the moving image in a format specified by the Registrar on the web site of the Canadian Intellectual Property Office.

Position

  1. An application for the registration of a trademark consisting of a position must contain a graphic representation clearly showing the placement of the trademark.
  2. Repeal section 29 of the Regulations (Rule 29(a) and (b) moved to application requirements above and specimens may be required for three-dimensional trademarks).

Goods and Services

The following proposed amendments aim to ensure that, along with goods and services being classified in accordance with the Nice Classification, anyone consulting the Register will find that it provides an appropriate level of detail regarding the goods and services related to a given trademark.

The proposed amendments include:

  1. Add a new provision to provide that the goods and/or services must, as far as practicable, be specified in terms appearing in any listing of goods and services that is published by the Registrar via the Canadian Intellectual Property Office web site.
  2. Add a new provision to provide that goods and/or service not appearing in any listing of goods and services that are published by the Registrar must be defined in a manner that is clear, accurate and precise.

Processing of Trademark Applications

This amendment sets the time limit for parties to remedy situations where the applicant has failed to meet a time limit.

The proposed amendment is as follows:

  1. Create a new provision to provide that the prescribed period under section 36 of the Act, where the applicant is in default of the prosecution of an application, will be 2 months. (Rule 9 of the Singapore Regulations)

Nice – Registered Trademarks

The following proposed amendment sets the prescribed time that the Registrar must grant to Registered Owners requiring them to group and class their lists of goods and services in accordance with the Nice Classification.

The proposed amendment is as follows:

  1. Create a new provision to provide that the prescribed time for the purposes of subsection 44.1(1) of the Act, the prescribed time in which the Registered Owner will be required to submit its statement of goods or services grouped and classed will be within one year of the date of the notice.

Division and Merger of Applications

The following proposed amendments detail the requirements for both the division of an application and the merger of divisionals. Divisional applications were introduced in the recent amendments to the Act and will benefit applicants who receive objections during the examination phase of the application as well as during negotiations at the opposition stage. These amendments are required pursuant to Article 7 of the Singapore Treaty.

The proposed amendments are as follows:

Divided Applications

  1. Create a new provision to provide that an application for division must be in writing and contain the following information:
    1. the original application number of the application for registration;
    2. in the case of division of classes, a list of the classes to be divided out;
    3. in the case of division of goods or services, a list of the goods or services to be divided out;
    4. if a request for an extension of time to oppose or a statement of opposition has been filed, a statement from any opponent that the opposition will be withdrawn for the classes, goods or services divided out; and
    5. the prescribed fee.
  2. Create a new provision to provide that where an application has been divided, the part of the application that was divided out will be treated as independent from the application from which it was divided. However, it will retain:
    1. the filing date or convention priority filing date if any;
    2. any documents filed with the Registrar since the filing of the application;
    3. any time period for action by the applicant which is outstanding in the original application at the time of the division will apply to each separate new application created by the division.

Merger of Divided Applications

  1. Create a new provision to provide that a request to merge a registration should be in writing and contain the following information:
    1. the registration number that the subject registration will be merged to;
    2. in the case of merging only certain classes in the registration, a list of the classes to be merged; and
    3. in the case of merging only certain goods or services in the registration, a list of the goods or services to be merged.
  2. Create a new provision to provide that the Registrar may merge the registrations only if:
    1. the trademarks are the same;
    2. stand in the name of the same Registered Owner; and
    3. are classified according to the same edition of the Nice Classification.

Amendments

The following amendments are proposed with respect to possible amendments to trademark applications. The proposed amendments will provide applicants with more flexibility to amend an application prior to registration.

The proposed amendments include:

  1. Section 30 does not require amendment.
  2. Amend section 31 of the Regulations to provide that no application for the registration of a trademark may be amended where the amendment would change,
    1. the identity of the applicant, except after recognition of a transfer by the Registrar or to correct an error in the naming of the applicant;
    2. the trademark, unless the trademark remains substantially the same;
    3. the statement of goods or services so as to be broader than the statement of goods or services contained in the application at the time the application was filed.
  3. Amend section 32 of the Regulations to provide that no application for the registration of a trademark may be amended, after it has been advertised to change:
    1. the identity of the applicant, except after recognition of a transfer by the Registrar or to correct an error in the naming of the applicant;
    2. the trademark, unless the trademark remains substantially the same;
    3. the statement of goods or services so as to be broader than the statement of goods or services contained in the application at the time of advertisement.
  4. Section 33 does not require amendment.

Advertisement of Application for Registration

  1. Repeal section 34 of the Regulations since it is redundant in view of s.37 of the Act and paragraph 30 above.

Transfers

  1. Repeal section 48 of the Regulations.
  2. Amend section 49(1) of the Regulations to provide that where the Registrar receives a request to record a partial transfer of a trademark application from either the applicant or the transferee, the request must indicate the list of goods and/or services associated with the trademark that are to be transferred to the transferee. Ensure subsection 49(2) specifies that the application owned by the transferee is a continuation of the original 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.
  3. Amend section 50 to provide that in cases where the Registrar has registered a partial transfer of a trademark registration, each person is deemed to be a separate registered owner of the trademark with a separate trademark registration.

Renewal

The following proposed amendments set the prescribed time required by the new section 46 of the Act and to require that all trademark registrations be renewed electronically.

The proposed amendments include:

  1. Create a provision to provide that the prescribed period referred to in subsection 46(1) of the Act, will be 12 months beginning 6 months before the initial renewal period expires. (Rule 8 of the Singapore Regulations).
  2. Create a provision to provide that all trademark registrations must be renewed electronically through the on-line services available on CIPO's web site.

The Register

The list of particulars required to be published by the Registrar on the Trademarks Register are proposed to be amended to reflect the requirements of the Nice Classification, remove references to terms and concepts no longer found in the Act including references to representatives for service, distinguishing guises and applications filed on the basis of use and registration abroad.

The proposed amendments include:

  1. Repeal section 51 of the Regulations as "summary of an application" has been removed from paragraph 26(2)(b).
  2. Amend section 52 of the Regulations to indicate, in respect of each registered trademark, the following particulars:
    1. The representation or description of the trademark;
    2. The name and address of the applicant and the applicant's trademark agent, if any;
    3. The registration number;
    4. The filing date of the application and priority date, if any;
    5. The names of the goods or services, grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification;
    6. In the case of a registration for a certification trademark or a trademark consisting of standard characters, a note to the effect;
    7. The particulars of any translation or transliteration; and
    8. In the case of evidence of acquired distinctiveness and/or territorial restriction, a note to that effect.