Publication Date: December 5, 2001
Amendment date: June 17, 2019, October 28, 2020,
This practice notice is intended to clarify the practice of the Trademarks Office with respect to transfers of trademark(s) resulting in a change in ownership and on changes in the name of an applicant or registered owner.
Transfers
If a transfer of an application for the registration of a trademark or a registered trademark is requested by the applicant or registered owner, the transfer will be recorded or registered upon the receipt of:
- the prescribed fee to record the transfer of an application for registration or to register the transfer of a registered trademark (to find out the exact amount of the fee, please consult the list of fees for trademarks); and
- the transferee' name and postal address
If a transfer of an application for the registration of a trademark or a registered trademark is requested by the transferee, the transfer will be recorded or registered upon the receipt of:
- the prescribed fee to record the transfer of an application for registration or to register the transfer of a registered trademark (to find out the exact amount of the fee, please consult the list of fees for trademarks)
- the transferee' name and postal address; and
- evidence satisfactory to the Registrar of Trademarks of the transfer
There is no requirement to provide the Trademarks Office with the original of any document that is provided as evidence of a transfer; the Office will accept copies of documents or of relevant excerpts from transfer documents.
Subsection 25(3) of the Trademarks Regulations (the Regulations) provides that if an applicant or registered owner has appointed a trademark agent, the applicant may nonetheless represent themselves for the purpose of:
(e) making a request or providing evidence [of a transfer] under section 48 of the Act.
In view of subsection 25(4) of the Regulations, the applicant or registered owner can be represented by another person authorized by them, whether or not that person is a trademark agent, to make a request or provide evidence of a transfer under section 48 of the Trademarks Act (the Act).
For each request initiated by the transferor (current applicant or registered owner), the authorized person must file proof or evidence that they are in fact authorized to act on behalf of the transferor for this purpose. Proof or evidence of authorization could, for example, take the form of a power of attorney or letter signed by the applicant or the registered owner.
Change of Name
In accordance with paragraph 41(1)(a) of the Act, the Office will amend the register to reflect a change in the name of the registered owner upon receipt of a written request.
In accordance with subsection 35(1) of the Regulations, the Office will amend an application for the registration of a trademark to reflect a change of name of the applicant upon receipt of a written request.
In both cases, the amendment will be acceptable so long as the identity of the applicant has not changed.
As a general rule, there is no requirement to provide the Office with evidence of a change of name.
If the change of name is a result of a transfer, please see the transfer requirements listed above.
Making a Request
A request to record or register a transfer, as well as a request to record a change of name or address may be submitted by mail, by fax, or through Trademarks eServices. For more information with respect to correspondence procedures and written communications, please refer to the practice notice entitled "Correspondence Procedures".
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.