Publication date: June 17, 2019
Amendment date: October 28, 2020
This notice is intended to clarify the practice of the Trademarks Office with respect to written communications on pending applications from third parties notifying the Registrar of their prior trademark rights and replaces the practice notice of the same name published on the CIPO website on June 17, 2019.
Background
Notifications of third party rights are an informal way for third parties to bring to the attention of the Registrar information bearing on the registrability of a pending trademark application. 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.
Submitting a notification
Third parties who wish to notify the Registrar of these grounds must submit a written notification, preferably using the “Notification of Third Party Rights” form, by mail or fax using the contact information outlined below, or through the General Correspondence online service for trademarks.
The notification must include the name of the applicant and application number of the relevant application.
Notice of third party rights
c/o Deputy Director, Examination Division
Trademarks Office
Canadian Intellectual Property Office
50 Victoria Street
Gatineau, Quebec K1A 0C9
Fax: 819-953-2476
Notifications will be placed on the relevant file and available for public inspection. The Registrar will not provide to the person who submitted the notification information as to any action taken on the relevant application as a result of the notification. Receipt of notifications will be indicated by a note "Notification of third-party rights received on [date])" 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:
- the trademark is confusing with a registered trademark under paragraph 12(1)(d) of the Trademarks Act (the Act);
- the applicant is not the person entitled to registration of the trademark in view of paragraph 37(1)(c) of the Act;
- registered trademark(s) are being used in the application to describe goods or services.
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. Please refer to the practice notice entitled "Withdrawal of Advertisement of a Trademark Application" for further information.
Continued monitoring
Third parties who submit a notification should continue 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. Please note that 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.
This practice notice is intended to provide guidance on the Canadian Intellectual Property Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. The provisions of this practice notice are general guidelines only, are not binding in any particular case and are subject to change.