Amendments to the Canadian Trade-marks Regulations (Regulations) have been drafted to establish procedures for facilitating recent amendments to the Canadian Trade-marks Act (Act), introduced in 2014 in accordance with Bill C-31 — Economic Action Plan 2014 Act, No. 1. The amended Trade-marks Act is not expected to be brought into force until the new Regulations are finalised. The Canadian Intellectual Property Office (CIPO) has recently indicated that this will likely occur in early 2019.

The proposed amendments to the Regulations are intended to facilitate Canada’s adherence to three international trade-mark treaties - the Madrid Protocol, the Singapore Treaty and the Nice Agreement. The proposed amendments to the Regulations are significant and address three main areas: (a) Rules of General Application, (b) Implementation of Madrid Protocol and (c) Opposition, Section 45 and Objection Proceedings.

1) Rules of General Application:

Many of the amendments to the Regulations pertain to communication between CIPO and its clients and are intended to streamline and modernize correspondence procedures. The proposed amendments also include transitional provisions for handling applications filed before the coming into force date of the amended Act and Regulations. Notable amendments include:

  • Provisions for submitting Letters of Protest, a procedure which will permit third parties to object to the registrability of pending applications;
  • Requirements and procedures for processing and merging divisional applications, a new practice which will allow applicants to divide goods and services in an application into two or more applications during examination and opposition. This will allow applications to advance in respect of certain goods and services if others are challenged;
  • A per class application and renewal fee structure. With the adoption of the Nice Classification system as part of Canada’s adherence to the Nice Agreement, applicants will be required to pay only an application fee (no registration fee); however, multiple class filings will require payment, at filing and renewal, of an additional fee per Nice class covered. In situations where the examiner determines that there are more Nice classes than identified in the application at the time of filing, the applicant will be required to pay the applicable fees for additional classes prior to advertisement;
  • Renewal provisions whereby registrations may only be renewed within the period of six months before or six months after a renewal deadline. Registrations with a renewal deadline that falls after the coming into force date may be renewed prior to the implementation of the amended Regulations but will be allocated the new 10 year renewal term established by the amended Act;
  • Provisions regarding treatment of electronic correspondence, which will now be deemed to have been received on the day on which CIPO receives it, including holidays and weekends (currently electronic correspondence received on a day CIPO is closed is deemed received on the next day CIPO is open).

2) Implementation of Madrid Protocol

The Madrid Protocol will allow Canadian applicants to secure international registration of a mark through a single application and will allow foreign applicants to secure registration in Canada through the Madrid Protocol. The amended Regulations set out the responsibilities of the Registrar as an Office of Origin with respect to the certification of applications for international registration and set out how international registrations will be processed, including opposition and section 45 cancellation procedures, renewal, owner changes and corrections.

3) Opposition, Section 45 and Objection Proceedings

The proposed amendments to the Regulations to complement the amended Act include the following amendments of note:

Sequential filing and service of written representations in opposition and objection proceedings;

  • Shared responsibility in cross-examination with the examined party to be responsible for submission of any undertakings;
  • Ability to submit evidence electronically;
  • Clarification of procedures before the Trade-marks Opposition Board – confirmation that same correspondence procedures apply to all three procedures;
  • Registrar will no longer issue notices advising parties they may request a hearing; the proposed amendments set a prescribed time period in which a hearing may be requested;
  • Provisions regarding the treatment of divisional applications which are the subject of opposition.

CIPO has invited feedback from businesses, individuals, groups, and organizations on the proposed amendments. The consultation period runs between June 19 and July 21, 2017. It is therefore possible that the current amendments will be revised before implementation.