The Trade-marks Regulations under the Canadian Trade-marks Act (the Regulations) have been amended after consultation with a number of organizations, including the Intellectual Property Institute of Canada (IPIC), the Canadian Group of the International Association for the Protection of Industrial Property, and the Canadian Bar Association.
In general, the main amendments to the Regulations provide clarification respecting the manner in which documents are submitted to the Registrar of Trade-marks (the Registrar) and when documents are considered received by the Office of the Registrar. Moreover, the amendments to the Regulations clarify the rules concerning electronic transmissions of documents, including facsimiles.
The more substantive amendments to the Regulations deal with the expansion of service of documents between parties in opposition proceedings beyond use of registered mail and now allow for service by courier, personal service or any other means as agreed by the parties.
The amendments have also done away with the requirement to pay a government fee to record certain amendments against applications or registrations, including name changes, address changes and mergers. However, the Canadian Intellectual Property Office (CIPO) will still charge a fee for the recording of an assignment.
Other amendments to the Regulations include the following:
- Correspondence addressed to the Registrar may be submitted electronically as soon as the Office of the Registrar acquires the technical ability to accept receipt. Electronic and facsimile transmissions may be sent to the Office of the Registrar, seven days a week, 24 hours a day.
- An application for the registration of a trade mark may be submitted to the Registrar by facsimile.
- Electronic and facsimile transmissions will be considered received by the Registrar on the date of delivery, if on that day the Office of the Registrar is open for business and if the transmission is received before midnight, local time of the place where the Office of the Registrar is located; otherwise, the transmission will be considered received on the next working day.
- Documents that are physically delivered to the Office of the Registrar or another designated establishment (Priority Post or a regional office) outside business hours will be considered to be received on the next working day.
No additional fee is charged for trade mark applicants wishing to submit documents electronically. Trade mark applicants not wishing to submit documents electronically will continue to be able to file all documents in paper form. While the foregoing amendments are in force as of June 2, 2007, others do not come into force until October 1, 2007. The latter include amendments to the rules regarding extension of time limits in opposition proceedings. These will be discussed in the next issue of IP Report Online.