Trademarks Regulations (SOR/2018-227)

Marginal note:Amendment to advertised application — some goods or services

• 117 (1) If a Protocol application has been advertised under subsection 37(1) of the Act before the date of notification of a correction of an international registration on which the Protocol application is based and if the Registrar determines that the deemed amendment to the Protocol application is substantive in respect of at least one but not all of the goods or services specified in the amended Protocol application and is not limited to narrowing the scope of the statement of goods or services, then the Registrar must, by notice, invite the applicant to elect one of the following options:

  • (a) that the Protocol application be amended to delete those goods or services; or

  • (b) that the Protocol application be deemed to never have been advertised.

• Marginal note:Deletion of goods or services

  (2) If the applicant elects the option referred to in paragraph (1)(a) or does not make an election within two months after the date of the notice, the Protocol application is deemed to be amended to delete those goods or services.

• Marginal note:Deemed non-advertisement of application

  (3) If the applicant selects the option referred to in paragraph (1)(b) within two months after the date of the notice

  • (a) the Protocol application is deemed never to have been advertised; and

  • (b) a reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph 132(1)(d)(i) to “date of notification of territorial extension” is to be read as “day on which the International Bureau sent to the Registrar the notification of a correction of an international registration on which the Protocol application is based” in respect of that Protocol application.

Marginal note:Effective date of amendment

118 An amendment to a Protocol application under section 114 or subsection 117(2) is deemed to have taken effect on the later of the filing date of the Protocol application and the day on which the error was made that gave rise to the correction of the international registration.

Abandonment

Marginal note:Statement of confirmation of total provisional refusal

119 If the Registrar treats a Protocol application as abandoned under section 36 of the Act, the Registrar must send a statement of confirmation of total provisional refusal to the International Bureau.

Examination

Marginal note:Notification of provisional refusal

120 The Registrar must not refuse a Protocol application under subsection 37(1) of the Act without first sending to the International Bureau, before the end of 18 months after the date of notification of territorial extension, a notification of provisional refusal stating the Registrar’s objections.

Marginal note:Statement of confirmation of total provisional refusal

121 If the Registrar refuses a Protocol application under subsection 37(1) of the Act, the Registrar must send a statement of confirmation of total provisional refusal to the International Bureau.

Divisional Application

Marginal note:Non-application of subsections 39(1), (2) and (5) of Act

122 Subsections 39(1), (2) and (5) of the Act do not apply in respect of a Protocol application.

Marginal note:Filing of request for division

• 123 (1) The applicant in respect of a Protocol application may limit the original Protocol application to one or more of the goods or services that were within its scope and file with the Registrar for presentation to the International Bureau a request for the division, in respect of Canada, of the international registration on which the original Protocol application is based for any other goods or services that were within the scope of

  • (a) the original Protocol application on its filing date, determined without taking into account subsection 106(2);

  • (b) the original Protocol application on the day on which the request is filed, if the request is filed on or after the day on which the Protocol application is advertised under subsection 37(1) of the Act; and

  • (c) the international registration in respect of Canada on the day on which the request is filed.

• Marginal note:Manner of filing

  (2) The request must be in English or French and be filed by

  • (a) using the online service that is designated by the Registrar as being accepted for that purpose; or

  • (b) completing the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar.

• Marginal note:Contents

  (3) The request must indicate

  • (a) the number of the international registration on which the original Protocol application is based;

  • (b) the name of the holder of that international registration;

  • (c) the name of the goods or services to be set apart, grouped according to the classes of the Nice Classification; and

  • (d) the amount of the fee being paid to the International Bureau and the method of payment, or instructions to debit the required amount to an account opened with the International Bureau, and the name of the person effecting the payment or giving the instructions.

• Marginal note:Sending of request to International Bureau

  (4) The Registrar must send to the International Bureau any request that is filed in accordance with subsections (1) to (3).

Marginal note:Deemed divisional application

• 124 (1) If, following receipt of a request under section 123, the International Bureau notifies the Registrar of the creation of a divisional international registration in respect of Canada, the applicant is deemed to have filed a divisional application for the registration of the same trademark as in the divisional international registration and in respect of the same goods or services that are listed in the divisional international registration in respect of Canada.

• Marginal note:Division of divisional application

  (2) The divisional application may itself be divided under subsection (1) and section 123, in which case those provisions apply as if that divisional application were an original Protocol application.

Opposition

Marginal note:Limitation of extension

125 In respect of a Protocol application, the Registrar is not permitted, on application made to the Registrar, to extend, under section 47 of the Act, the two-month period referred to in subsection 38(1) of the Act by more than four months.

Marginal note:Filing of statement of opposition

126 A statement of opposition under section 38 of the Act in respect of a Protocol application must be in English or French and be filed by using the online service that is designated by the Registrar as being accepted for that purpose.

Marginal note:Notification of provisional refusal

127 If, in respect of a Protocol application, a statement of opposition is filed, the Registrar must send to the International Bureau a notification of provisional refusal.

Marginal note:No new ground of opposition

128 If the Registrar sends to the International Bureau a notification of provisional refusal based on an opposition, the statement of opposition may not be amended to add a new ground of opposition.

Marginal note:Notice of opposition period

129 If, in respect of a Protocol application, it is likely that the opposition period will extend beyond the end of 18 months after the date of notification of territorial extension, the Registrar must so inform the International Bureau.

Marginal note:Statement of confirmation of total provisional refusal

130 The Registrar must send a statement of confirmation of total provisional refusal in respect of a Protocol application to the International Bureau if

• (a) the Protocol application is deemed to have been abandoned under subsection 38(11) of the Act; or

• (b) the Registrar refuses the Protocol application under subsection 38(12) of the Act with respect to all of the goods or services specified in it and either the period for filing an appeal has ended and no appeal has been filed or, if an appeal has been taken, the final judgment has been decided in favour of the opponent.

Registration of Trademarks

Marginal note:Non-application of section 40 of Act

131 Section 40 of the Act does not apply in respect of a Protocol application.

Marginal note:Obligations of Registrar

• 132 (1) In respect of a trademark that is the subject of a Protocol application, the Registrar must register the trademark in the name of the applicant, issue a certificate of its registration and send a statement to the International Bureau that protection is granted to the trademark if

  • (a) the Protocol application has not been opposed and the opposition period has ended;

  • (b) the Protocol application has been opposed and the opposition has been decided in favour of the applicant and either the period for filing an appeal has ended and no appeal has been filed or, if an appeal has been taken, the final judgment has been decided in favour of the applicant;

  • (c) 18 months have passed after the date of notification of territorial extension and, within that 18-month period, the Registrar did not inform the International Bureau that it was likely that the opposition period would extend beyond that 18-month period and

    • (i) did not send to the International Bureau a notification of provisional refusal, or

    • (ii) did send to the International Bureau a notification of provisional refusal, but not one based on an opposition, and is not satisfied that any of paragraphs 37(1)(a) to (d) of the Act apply; or

  • (d) the Protocol application has been opposed, the following periods have ended, the Registrar informed the International Bureau, in the period referred to in subparagraph (i), that it was likely that the opposition period would extend beyond that period and the Registrar did not send to the International Bureau, before the end of the period referred to in subparagraph (ii), a notification of provisional refusal based on an opposition:

    • (i) the 18-month period after the date of notification of territorial extension, and

    • (ii) the period that ends at the earlier of the end of the seven-month period after the day on which the opposition period began and the end of the one-month period after the day on which the opposition period ended.

• Marginal note:Non-advertisement

  (2) Despite subsection 37(1) of the Act, the Registrar must not cause the Protocol application to be advertised if the trademark was registered under subsection (1) of this section without the Protocol application having been advertised.

Amendment of Register

Marginal note:Non-application of statutory provisions

133 Paragraphs 41(1)(a) to (c) and (f), subsections 41(2) and (4) and section 44.1 of the Act do not apply in respect of a Protocol registration.

Marginal note:Filing of request for merger

• 134 (1) The holder of a divisional international registration in respect of Canada may file with the Registrar for presentation to the International Bureau a request to merge the divisional international registration with the international registration from which it was divided if there is at least one Protocol registration based on each of those international registrations and

  • (a) all of the Protocol registrations stem from the same original Protocol application;

  • (b) they relate to the same trademark; and

  • (c) their registered owner is the holder of the international registrations.

• Marginal note:Manner of filing

  (2) The request must be in English or French and be filed by

  • (a) using the online service that is designated by the Registrar as being accepted for that purpose; or

  • (b) completing the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar.

• Marginal note:Contents

  (3) The request must indicate the number of each of the international registrations to be merged and the name of the holder of those international registrations.

• Marginal note:Sending of request to International Bureau

  (4) The Registrar must send to the International Bureau any request that is filed in accordance with subsections (1) to (3).

• Marginal note:Merger of Protocol registrations

  (5) If, following receipt of the request, the International Bureau notifies the Registrar of the merger of a divisional international registration in respect of Canada into the international registration from which it was divided, the Registrar must amend the register to merge the Protocol registrations that are based on those international registrations and that stem from the same original Protocol application.