Publication Date: 2019-06-17
This notice is intended to clarify the practice of the Trademarks Opposition Board (the "Board") with respect to the amendment and deletion of the claims of use, proposed use and use and registration abroad in trademark applications that have been filed before , namely the coming into force of the amendments to the Trademarks Act (the "Act").
Applications Not Yet Advertised
The Board will accept – but not require – an amendment or deletion of claims of proposed use, use in Canada, or use and registration abroad in trademark applications not yet advertised on . The amendment or deletion may be made at any time prior to registration.
It is acceptable for an applicant to remove all of the claims in an opposed application, as these claims are not required to assess compliance with sections 16 or 38(2)(f) of the Act (as amended).
Once the amendments to the Act have come into force, claims of use, proposed use, and use and registration abroad will not appear in the particulars of the advertisement of an application.
Applications Advertised But Not Yet Registered
The regulations prohibiting deletion or amendment of certain claims in an application are no longer in force as of . Therefore, an applicant who wants to amend or delete claims in its application, may do so after coming into force.
For the purposes of an opposition, an application must claim at least one basis of registration to comply with section 30 and to allow the Registrar to assess entitlement pursuant to section 16(1)-(3) of the Act as it read prior to coming into force. To determine compliance, the application is assessed as amended [YM Inc v Jacques Vert Group Limited, 2014 TMOB 42 at para 19, reversed for other reasons in 2014 FC 1242].
If an amendment is made prior to or during an opposition, an opponent may wish to request leave to amend its statement of opposition.