SOR/2018-227201810
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TRADEMARKS ACTTrademarks RegulationsP.C.2018-1330201810
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Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to sections 65a, 65.1b and 65.2c of the Trademarks Actd, makes the annexed Trademarks Regulations.S.C. 2015, c. 36, s. 67S.C. 2014, c. 20, s. 358S.C. 2017, c. 6, s. 75R.S., c. T-13; S.C. 2014, c. 20, s. 318Rules of General ApplicationInterpretation
DefinitionsThe following definitions apply in these Regulations.Act means the Trademarks Act. (Loi)associate trademark agent means a trademark agent who is appointed by another trademark agent under subsection 22(2). (agent de marques de commerce associé)International Bureau means the International Bureau of the World Intellectual Property Organization. (Bureau international)International Register means the official collection of data concerning international registrations that is maintained by the International Bureau. (Registre international)international registration means a registration of a trademark that is on the International Register. (enregistrement international)trademark agent means a trademark agent as defined in section 2 of the College of Patent Agents and Trademark Agents Act. (agent de marques de commerce)SOR/2021-130, s. 1
Reference to a periodUnless otherwise indicated, a reference to a period in these Regulations is to be read, if the period is extended under section 47 or 47.1 or subsection 66(1) of the Act, as a reference to the period as extended.
General
Written communications to RegistrarWritten communications intended for the Registrar must be addressed to the “Registrar of Trademarks” and includein the case that the communication is submitted by a trademark agent, the name of that agent and, if all the trademark agents at the same firm are appointed in respect of the business to which the communication relates, the name of that firm; andin any other case, the name of the person submitting the communication.SOR/2021-130, s. 2
Limit on written communicationsA written communication intended for the Registrar must not relate to more than one application for the registration of a trademark or more than one registered trademark.ExceptionsSubsection (1) does not apply to a written communication in respect ofa change of name or address;a payment of a fee for the renewal of a registration;a cancellation of a registration;a transfer of a registered trademark or of an application for the registration of a trademark;a document affecting rights in respect of a registered trademark or of an application for the registration of a trademark;an appointment or revocation of an appointment of a trademark agent;a correction of an error; andthe provision of evidence, written representations, requests for a hearing or requests for the award of costs in a proceeding under section 11.13, 38 or 45 of the Act.SOR/2025-19, s. 1
Written communications regarding applications for registrationA written communication intended for the Registrar in respect of an application for the registration of a trademark must include the name of the applicant and, if known, the application number.Written communications regarding registered trademarksA written communication intended for the Registrar in respect of a registered trademark must include the name of the registered owner and either the registration number or the number of the application that resulted in the registration.
AddressJoint applicants, opponents and objectors must provide a single postal address for correspondence.Notice of change of addressA person that is doing business before the Office of the Registrar of Trademarks must notify the Registrar of any change of their postal address for correspondence.
Form of communicationThe Registrar is not required to have regard to any communication that is not submitted in writing, other than a communication made during a hearing held in a proceeding under section 11.13, 38 or 45 of the Act.
Intelligibility of documentsA document that is provided to the Registrar must be clear, legible and capable of being reproduced.
Document provided in non-official languageThe Registrar is not required to have regard to the whole or any part of a document that is provided in a language other than English or French unless a translation into English or French is also provided.
Manner of providing documents, information or feesUnless provided by an electronic means in accordance with subsection 64(1) of the Act, documents, information or fees must be provided to the Registrar by physical delivery to the Office of the Registrar of Trademarks or to an establishment that is designated by the Registrar as being accepted for that purpose.Date of receipt — physical delivery to OfficeDocuments, information or fees that are provided to the Registrar by physical delivery to the Office of the Registrar of Trademarks are deemed to have been received by the Registrarif they are delivered when the Office is open to the public, on the day on which they are delivered to the Office; andif they are delivered when the Office is closed to the public, on the first day on which the Office is next open to the public.Date of receipt — physical delivery to designated establishmentDocuments, information or fees that are provided to the Registrar by physical delivery to a designated establishment are deemed to have been received by the Registrarif they are delivered when the establishment is open to the public,in the case where the Office of the Registrar of Trademarks is open to the public for all or part of the day on which they are delivered, on that day, andin any other case, on the day on which the Office of the Registrar of Trademarks is next open to the public; andif they are delivered when the establishment is closed to the public, on the first day on which the Office of the Registrar of Trademarks is next open to the public that falls on or after the day on which the establishment is next open to the public.Date of receipt — provision by electronic meansDocuments, information or fees that are provided to the Registrar by an electronic means in accordance with subsection 64(1) of the Act are deemed to have been received on the day, according to the local time of the place where the Office of the Registrar of Trademarks is located, on which the Office receives it.Exception — certain applications and requestsSubsections (1) to (3) do not apply in respect ofan application for international registration referred to in sections 98 to 100;a request for the recording of a change in ownership referred to in sections 101 and 102;a request for division referred to in section 123; anda transformation application referred to in section 147.Exception — International BureauSubsections (1) to (4) do not apply in respect of documents, information or fees that are provided to the Registrar by the International Bureau.
Waiver of feesThe Registrar may waive the payment of a fee if the Registrar is satisfied that the circumstances justify it.
RefundOn request made no later than three years after the day on which a fee is paid, the Registrar must refund any overpayment of the fee.
Affidavit or statutory declarationA person that provides the Registrar with a copy of an affidavit or statutory declaration in a matter in respect of which an appeal lies under subsection 56(1) of the Act must retain the original for a retention period that ends one year after the day on which the applicable appeal period expires but, if an appeal is taken, ends on the day on which the final judgment is given in the appeal.Provision of originalOn request by the Registrar made before the end of the retention period, the person must provide the original to the Registrar.
Extension of time — feeA person that applies for an extension of time under section 47 of the Act must pay the fee set out in item 1 of the schedule to these Regulations.
Prescribed days — extension of time periodsThe following days are prescribed for the purpose of subsection 66(1) of the Act:Saturday;Sunday;January 1 or, if January 1 falls on a Saturday or Sunday, the following Monday;Good Friday;Easter Monday;the Monday before May 25;June 24 or, if June 24 falls on a Saturday or Sunday, the following Monday;July 1 or, if July 1 falls on a Saturday or Sunday, the following Monday;the first Monday in August;the first Monday in September;September 30 or, if September 30 falls on a Saturday or Sunday, the following Monday;the second Monday in October;November 11 or, if November 11 falls on a Saturday or Sunday, the following Monday;December 25 and 26 orif December 25 falls on a Friday, that Friday and the following Monday, andif December 25 falls on a Saturday or Sunday, the following Monday and Tuesday; andany day on which the Office of the Registrar of Trademarks is closed to the public for all or part of that day during ordinary business hours.SOR/2022-44, s. 3
Trademark Agents
[Repealed, SOR/2021-130, s. 3]
[Repealed, SOR/2021-130, s. 3]
[Repealed, SOR/2021-130, s. 3]
[Repealed, SOR/2021-130, s. 3]
[Repealed, SOR/2021-130, s. 3]
[Repealed, SOR/2021-130, s. 3]
Power to appoint trademark agentAn applicant, registered owner or other person, may appoint one trademark agent or all the trademark agents at the same firm to represent them in any business before the Office of the Registrar of Trademarks.Power to appoint associate trademark agentA trademark agent, other than an associate trademark agent may, in turn, appoint one trademark agent or all the trademark agents at the same firm as an associate trademark agent to represent the person that appointed them in any business before the Office of the Registrar of Trademarks.SOR/2021-130, s. 3
Appointment — one trademark agentThe appointment of one trademark agent is effective on the day on which the Registrar receives an appointment notice that includes the name and postal address of the trademark agent.Appointment — all trademark agentsThe appointment of all the trademark agents at the same firm is effective on the day on which the Registrar receives an appointment notice that includes the name and postal address of the firm.RevocationThe revocation of the appointment of one trademark agent or all the trademark agents at the same firm is effective on the day on which the Registrar receives a notice to that effect.SOR/2021-130, s. 3
Trademark agent — member of firmIf all the trademark agents at the same firm have been appointed, the following rules apply:a trademark agent who becomes a member of that firm after the appointment is deemed to be appointed on the day on which they become a member of the firm;a person who is a member of that firm who becomes a trademark agent after the appointment is deemed to be appointed on the day on which they become a trademark agent;the appointment of a trademark agent who ceases to be a member of that firm is deemed to be revoked on the day on which they cease to be a member of the firm; andthe appointment of a trademark agent whose licence is suspended, revoked or surrendered is deemed to be revoked on the day on which their licence is suspended, revoked, or surrendered.SOR/2021-130, s. 3
Written communication considered sentIf all the trademark agents at the same firm have been appointed, any written communication sent by the Registrar to the firm is considered to have been sent to all of the trademark agents at the firm.SOR/2021-130, s. 3
Acts done by or in relation to trademark agentIn any business before the Office of the Registrar of Trademarks, any act done by or in relation to a trademark agent, other than an associate trademark agent, has the same effect as an act done by or in relation to the person that appointed them in respect of that business.Acts done by or in relation to associate trademark agentIn any business before the Office of the Registrar of Trademarks, any act done by or in relation to an associate trademark agent has the same effect as an act done by or in relation to the person that appointed, in respect of that business, the trademark agent who, in turn, appointed the associate trademark agent.SOR/2021-130, s. 3
Persons authorized to actSubject to subsection (4), in any business before the Office of the Registrar of Trademarks, a person may be represented by another person only if that other person is a trademark agent.Cases involving trademark agentsSubject to subsections (3) and (4), in any business before the Office of the Registrar of Trademarks in respect of which a person has appointed a trademark agentthe person must not represent themselves; andno one other than the trademark agent, or an associate trademark agent appointed by that trademark agent, is permitted to represent that person.ExceptionsA person may represent themselves for the purpose offiling an application for the registration of a trademark, an application for international registration referred to in sections 98 to 100 or a transformation application referred to in section 147;paying a fee;giving notice under section 23;renewing the registration of a trademark under section 46 of the Act; ormaking a request or providing evidence under section 48 of the Act.ExceptionsWith respect to any business referred to in paragraphs (3)(a) to (e), a person may be represented by another person authorized by them, whether or not that other person is a trademark agent or an individual whose name is included in the Register of Trademark Agents under section 20 of the College of Patent Agents and Trademark Agents Regulations.SOR/2021-130, s. 4
Prohibited Marks
Fee — paragraph 9(1)(n) or (n.1) of ActAny person or entity that requests the giving of public notice under paragraph 9(1)(n) or (n.1) of the Act must pay the fee set out in item 4 of the schedule to these Regulations.SOR/2023-114, s. 1SOR/2025-19, s. 2
Fee — subsection 9(4) of ActFor the purpose of subsection 9(4) of the Act, the fee to be paid by a person who requests that public notice be given under that subsection is the fee set out in item 5 of the schedule to these Regulations.SOR/2025-19, s. 2
Geographical Indications
FeeAny person, firm or other entity that requests the protection of a geographical indication must pay the fee set out in item 6 of the schedule to these Regulations.SOR/2023-114, s. 1
Application for Registration of Trademark
ScopeA separate application must be filed for the registration of each trademark.
LanguageAn application for the registration of a trademark, with the exception of the trademark itself, must be in English or French.
Manner of describing goods or servicesThe statement of the goods or services referred to in paragraph 30(2)(a) of the Act must describe each of those goods or services in a manner that identifies a specific good or service.
Representation or descriptionThe following requirements are prescribed for the purpose of paragraph 30(2)(c) of the Act:a representation may contain more than one view of the trademark only if the multiple views are necessary for the trademark to be clearly defined;a two-dimensional representation must not exceed 8 cm by 8 cm;if the trademark consists in whole or in part of a three-dimensional shape, a representation must be a two-dimensional graphic or photographic representation;if colour is claimed as a feature of the trademark or if the trademark consists exclusively of a single colour or a combination of colours without delineated contours, a visual representation must be in colour;if colour is not claimed as a feature of the trademark or if the trademark does not consist exclusively of a single colour or a combination of colours without delineated contours, a visual representation must be in black and white;if the trademark consists in whole or in part of a sound, a representation must include a recording of the sound in a format that is designated by the Registrar as being accepted for that purpose; anda description must be clear and concise.
ContentsThe following information and statements are prescribed for the purpose of paragraph 30(2)(d) of the Act:the applicant’s name and postal address;if the trademark consists in whole or in part of characters other than Latin characters, a transliteration of those other characters into Latin characters following the phonetics of the language of the application;if the trademark consists in whole or in part of numerals other than Arabic or Roman numerals, a transliteration of those other numerals into Arabic numerals;a translation into English or French of any words in any other language that are contained in the trademark;if the trademark consists in whole or in part of a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture or the positioning of a sign, a statement to that effect;if colour is claimed as a feature of the trademark, a statement to that effect, along with the name of each colour claimed and an indication of the principal parts of the trademark that are in that colour;if the trademark consists exclusively of a single colour or a combination of colours without delineated contours, a statement to that effect, along with the name of each colour; andif the trademark is a certification mark, a statement to that effect.
FeeA person that files an application for the registration of a trademark, other than a Protocol application as defined in section 96 or a divisional application, must pay the applicable fee set out in item 7 of the schedule.Fee for divisional applicationA person that files a divisional application that does not stem from a Protocol application as defined in section 96 must pay the applicable fee set out in item 7 of the schedule forin the case that the corresponding original application is itself a divisional application,if the filed divisional application stems from a series of divisional applications, the original application from which the series stems, andif the filed divisional application does not stem from a series of divisional applications, the original application from which the corresponding original application stems; andin any other case, the corresponding original application.Deemed payment of feesIf all or part of the applicable fee set out in item 7 of the schedule is paid in respect of an application, the applicable fee referred to in that item, or part of it, as the case may be, is deemed to have been paid forwhen that application is itself a divisional application,in the case that it stems from a series of divisional applications, the original application from which stems the series and every divisional application that stems from that original application, andin the case that it does not stem from a series of divisional applications, its corresponding original application and every divisional application that stems from it; andwhen that application is not itself a divisional application, every divisional application that stems from it.Fees for filing dateFor the purpose of paragraph 33(1)(f) of the Act, the prescribed fees are those fees set out in subparagraphs 7(a)(i) and (b)(i) of the schedule to these Regulations.
Request for Priority
Time of filingFor the purpose of paragraph 34(1)(b) of the Act, a request for priority must be filed within six months after the filing date of the application on which the request is based.Time and manner of withdrawalFor the purpose of subsection 34(4) of the Act, a request for priority may be withdrawn by filing a request to that effect before the application is advertised under subsection 37(1) of the Act.
Default in Prosecution of Application
Time for remedying defaultFor the purpose of section 36 of the Act, the time within which a default in the prosecution of an application may be remedied is two months after the date of the notice of the default.
Amendment of Application for Registration of a Trademark
Before registrationAn application for the registration of a trademark may be amended before the trademark is registered.ExceptionsDespite subsection (1), the application must not be amendedto change the identity of the applicant, unless the change results from the recording of a transfer of the application by the Registrar or, in the case of an application other than a Protocol application as defined in section 96, to correct an error in the applicant’s identification;to change the representation or description of the trademark, unless the application has not been advertised under subsection 37(1) of the Act and the trademark remains substantially the same;to broaden the scope of the statement of the goods or services contained in the application beyond the scope ofthat statement on the filing date of the application, determined without taking into account section 34 of the Act or subsection 106(2) of these Regulations,the narrower of that statement as advertised under subsection 37(1) of the Act and that statement as amended after that advertisement, andin the case of a Protocol application as defined in section 96, the list of goods or services, in respect of Canada, contained — at the time of the amendment, if it were made — in the international registration on which the application is based;to add an indication that it is a divisional application;to add or delete a statement referred to in paragraph 31(b) of the Act or paragraph 31(e), (f) or (g) of these Regulations, unless the application has not been advertised under subsection 37(1) of the Act and the trademark remains substantially the same; orafter the application is advertised under subsection 37(1) of the Act, to add or delete a statement referred to in paragraph 31(h) of these Regulations.Exceptions to exceptionsDespite subsection (2), an amendment referred to in that subsection may be made in accordance with section 107, 111, 114 or 117.SOR/2019-116, s. 1
Transfer of Application for Registration of a Trademark
FeeA person that requests the recording under subsection 48(3) of the Act of the transfer of an application for the registration of a trademark must pay the fee set out in item 8 of the schedule to these Regulations.
Required informationThe Registrar must not record the transfer of an application for the registration of a trademark under subsection 48(3) of the Act unless the Registrar has been provided with the transferee’s name and postal address.
Effect of transfer — separate applicationsIf the transfer to a person of an application for the registration of a trademark is, under subsection 48(3) of the Act or section 146 of these Regulations, recorded in respect of at least one but not all of the goods or services specified in the initial application,that person is deemed to be the applicant in respect of a separate application;the separate application is deemed to have the same filing date as that initial application; andany action taken, before the day on which the transfer is recorded, in relation to the initial application is deemed to have been taken in relation to that separate application.
Divisional Application
Manner of identifying corresponding original applicationFor the purpose of subsection 39(2) of the Act, the corresponding original application must be identified in a divisional application by means of its application number, if known.
Steps deemed takenAny action taken in respect of the corresponding original application, on or before the day on which the divisional application is filed, is deemed to be an action taken in respect of the divisional application, exceptan amendment of the statement of the goods or services contained in the original application; andthe payment of the applicable fee set out in item 7 of the schedule to these Regulations.SOR/2019-116, s. 2
Advertisement
MannerFor the purpose of subsection 37(1) of the Act, an application is advertised by publishing on the website of the Canadian Intellectual Property Officethe application number;the name and postal address of the applicant and of the applicant’s trademark agent, if any;any representation or description of the trademark contained in the application;if the trademark is in standard characters, a note to that effect;if the trademark is a certification mark, a note to that effect;the filing date of the application;if the applicant filed a request for priority in accordance with paragraph 34(1)(b) of the Act, the filing date and country or office of filing of the application on which the request for priority is based;the statement of the goods or services in association with which the trademark is used or proposed to be used, grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification;any disclaimer made under section 35 of the Act; andif the Registrar has restricted the registration to a defined territorial area in Canada under subsection 32(2) of the Act, a note to that effect.
Opposition Proceeding Under Section 38 of Act
FeeFor the purpose of subsection 38(1) of the Act, the fee to be paid for filing a statement of opposition is that set out in item 9 of the schedule to these Regulations.
CorrespondenceA person that corresponds with the Registrar in respect of an opposition proceeding must clearly indicate that the correspondence relates to that proceeding.
Forwarding copies of documentsA party to an opposition proceeding that, on a given day, after the Registrar has forwarded a copy of the statement of opposition to the applicant under subsection 38(5) of the Act, provides to the Registrar a document, other than a document that they are otherwise required to serve, that relates to that proceeding must, on that day, forward a copy of it to the other party.
Service on representative of applicantUnless they have appointed a trademark agent, an applicant may in their counter statement under subsection 38(7) of the Act set out, or may file with the Registrar and serve on the opponent a separate notice setting out, the name and address in Canada of a person on whom or a firm on which service of any document in respect of the opposition may be made with the same effect as if it had been served on the applicant.
Manner of serviceService of a document in respect of an opposition proceeding must be effectedby personal service in Canada;by registered mail to an address in Canada;by courier to an address in Canada;by the sending of a notice to the other party advising that the document to be served has been filed with or provided to the Registrar, if the party seeking to effect service does not have the information necessary to serve the other party in accordance with any of paragraphs (a) to (c); orin any manner that is agreed to by the parties.Service on trademark agentIf a party to be served appoints a trademark agent in respect of an opposition proceeding,that agent is deemed to replace any person or firm set out in a statement of opposition, counter statement or notice as a person on whom or a firm on which service of any document in respect of the opposition may be made with the same effect as if it had been served on the party directly; andservice must be effected on that agent unless the parties agree otherwise.Effective date of serviceSubject to subsections (4) to (7) and (10), service is effective on the day on which the document is delivered.Exception — service by registered mailService by registered mail is effective on the day on which the document is mailed.Exception — service by courierService by courier is effective on the day on which the document is provided to the courier.Exception — service by electronic meansService by an electronic means is effective on the day on which the document is transmitted.Exception — service by sending of noticeService by the sending of a notice under paragraph (1)(d) is effective on the day on which the notice is sent.Notice of manner and date of serviceThe party effecting service must notify the Registrar of the manner of service and the effective date of service.Proof of serviceA party that serves a document must, on request of the Registrar, provide proof of service within one month after the date of the request. If proof of service is not provided within that month, the document is deemed not to have been served.Validity of irregular serviceService of a document other than in accordance with subsection (1) is nonetheless valid if the Registrar determines that the document has been provided to the party being served and informs the parties of that determination. The service is effective on the day on which the document was provided to the party being served.SOR/2021-130, s. 5
Counter statement — timingFor the purpose of subsection 38(7) of the Act, the time is two months.
AmendmentNo amendment to a statement of opposition or counter statement may be made except with leave of the Registrar on terms that the Registrar considers to be appropriate.Interests of justiceThe Registrar must grant leave under subsection (1) if it is in the interests of justice to do so.
Manner of submitting evidenceEvidence in respect of an opposition proceeding, other than evidence referred to in subsection 56(3) of these Regulations, is to be submitted to the Registrar by way of affidavit or statutory declaration. However, if the evidence consists of a document or extract from a document that is in the official custody of the Registrar, it may be submitted by way of a certified copy referred to in section 54 of the Act.
Timing of opponent’s evidenceThe opponent may submit evidence referred to in subsection 38(8) of the Act to the Registrar within a period of four months after the day on which the applicant’s service on the opponent of a copy of the counter statement is effective.Timing of serviceFor the purpose of subsection 38(9) of the Act, the time within which the opponent must serve that evidence on the applicant is during that four-month period.Opponent’s statementIf the opponent does not wish to submit evidence referred to in subsection 38(8) of the Act, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) of this section and, if so, they must serve it on the applicant within that period.
Circumstances — deemed withdrawal of oppositionFor the purpose of subsection 38(10) of the Act, the circumstances under which the opponent’s not submitting and serving evidence referred to in subsection 38(8) of the Act or a statement that the opponent does not wish to submit evidence results in their opposition being deemed to have been withdrawn are that neither that evidence nor that statement has been submitted and served by the opponent by the end of the four-month period referred to in section 50 of these Regulations.
Timing of applicant’s evidenceThe applicant may submit evidence referred to in subsection 38(8) of the Act to the Registrar within a period of four months after the day on which the opponent’s service under section 50 of these Regulations is effective.Timing of serviceFor the purpose of subsection 38(9) of the Act, the time within which the applicant must serve that evidence on the opponent is during that four-month period.Statement of applicantIf the applicant does not wish to submit evidence referred to in subsection 38(8) of the Act, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) of this section and, if so, they must serve it on the opponent within that period.
Circumstances — deemed abandonment of applicationFor the purpose of subsection 38(11) of the Act, the circumstances under which the applicant’s not submitting and serving evidence referred to in subsection 38(8) of the Act or a statement that the applicant does not wish to submit evidence results in their application being deemed to have been abandoned are that neither that evidence nor that statement has been submitted and served by the applicant by the end of the four-month period referred to in section 52 of these Regulations.
Reply evidence — timingWithin one month after the day on which the service on the opponent under section 52 is effective, the opponent may submit to the Registrar reply evidence and, if so, they must serve it on the applicant within that one-month period.
Additional evidenceA party may submit additional evidence with leave of the Registrar on terms that the Registrar considers to be appropriate.Interests of justiceThe Registrar must grant leave under subsection (1) if it is in the interests of justice to do so.
Ordering of cross-examinationOn the application of a party made before the Registrar gives notice in accordance with subsection 57(1), the Registrar must order the cross-examination under oath or solemn affirmation, within the period specified by the Registrar, of any affiant or declarant on an affidavit or statutory declaration that has been submitted to the Registrar as evidence in the opposition proceeding.Conduct of cross-examinationThe cross-examination is to be conducted as agreed to by the parties or, in the absence of an agreement, as specified by the Registrar.Transcript and undertakingsWithin the period specified by the Registrar for conducting the cross-examination,the party that conducted the cross-examination must submit to the Registrar and serve on the other party the transcript of the cross-examination and the exhibits to the cross-examination; andthe party that was cross-examined must submit to the Registrar and serve on the other party any information, document or material that they undertook to provide in the course of the cross-examination.Inadmissibility in absence of cross-examinationAn affidavit or statutory declaration is not to be part of the evidence if the affiant or declarant declines or fails to attend for cross-examination.
Written representationsAfter all evidence has been filed, the Registrar must give the parties notice that they may submit written representations to the Registrar.Timing of opponent’s written representationsThe opponent may submit written representations to the Registrar within a period of two months after the date of that notice.Timing of serviceFor the purpose of subsection 38(9) of the Act, the time within which the opponent must serve their written representations on the applicant is during that two-month period.Statement of opponentIf the opponent does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period referred to in subsection (2) and, if so, they must serve it on the applicant within that period.Timing of applicant’s written representationsThe applicant may submit written representations to the Registrar within the following period:if service referred to in subsection (3) or (4), as the case may be, is effective within the two-month period referred to in subsection (2), two months after the day on which that service is effective; andin any other case, two months after the end of the two-month period referred to in subsection (2).Timing of serviceFor the purpose of subsection 38(9) of the Act, the time within which the applicant must serve their written representations on the opponent is during the two-month period determined under subsection (5) of this section for their submission of written representations.Statement of applicantIf the applicant does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period determined under subsection (5) for their submission of written representations and, if so, they must serve it on the opponent within that period.
Request for hearingWithin one month after the day on which the applicant’s service on the opponent of written representations or of a statement that the applicant does not wish to make written representations is effective — or, if no such service is effective within the two-month period determined under subsection 57(5) for their submission of written representations, within one month after the end of that two-month period — a party that wishes to make representations to the Registrar at a hearing must file with the Registrar a request that indicateswhether they intend to make representations in English or French and whether they will require simultaneous interpretation if the other party makes representations in the other official language; andwhether they wish to make representations in person, by telephone, by video conference or by another means of communication offered by the Registrar, and that sets out any information necessary to permit the use of the chosen means of communication.When representations may be madeA party may make representations at the hearing only if they file a request in accordance with subsection (1).ChangesIf a party, at least one month before the date of the hearing, notifies the Registrar of changes to be made in respect of any of the information provided under subsection (1), the Registrar must modify the administrative arrangements for the hearing accordingly.
CostsThe Registrar may, on request, award costs against a party to an opposition proceeding in the following amounts:in the case where the party’s application for the registration of a trademark is refused on the ground that it was filed in bad faith with respect to one or more of the goods or services, an amount that is ten times the fee set out in item 9 of the schedule to these Regulations for filing a statement of opposition under subsection 38(1) of the Act;in the case where the party files a divisional application on or after the day on which the original application is advertised under subsection 37(1) of the Act and the costs are awarded in respect of the divisional application, an amount that is two times the fee set out in item 9 of the schedule to these Regulations for filing a statement of opposition under subsection 38(1) of the Act;in the case where the party withdraws a request for a hearing less than 14 days before the day on which the hearing is scheduled to take place, an amount that is two times the fee set out in item 9 of the schedule to these Regulations for filing a statement of opposition under subsection 38(1) of the Act; orin the case where the party engages in unreasonable conduct that causes undue delay or expense in the proceeding, an amount that is five times the fee set out in item 9 of the schedule to these Regulations for filing a statement of opposition under subsection 38(1) of the Act.RestrictionThe Registrar must not award costs if the opposition proceeding is ended before the final decision is issued.Non-applicationSubsection (1) does not apply ifin the circumstances referred to in paragraph (1)(a), the ground referred to in that paragraph is included in a statement of opposition that is filed or amended before the day on which this section comes into force;in the circumstances referred to in paragraph (1)(b), the divisional application is filed before the day on which this section comes into force;in the circumstances referred to in paragraph (1)(c), the hearing is scheduled to take place on or before the day on which this section comes into force or within 14 days after that day; orin the circumstances referred to in paragraph (1)(d), the unreasonable conduct occurs before the day on which this section comes into force.SOR/2025-19, s. 3
Request for costsA request by a party that costs be awarded must be filed using the online service that is designated by the Registrar as being accepted for that purpose and must specify the reasons for the request and the circumstances for which costs are sought.Timing of requestThe request for costs must be filedin the case where a party has filed a request for a hearing under subsection 58(1), within 14 days after the day on which the hearing ends or within 14 days after the day on which the Registrar notifies the parties that the hearing has been cancelled; orin any other case, within 14 days after the end of the one-month period for filing a request for a hearing under subsection 58(1).SOR/2025-19, s. 3
RepresentationsThe Registrar must give the other party notice of the request for costs and an opportunity to make written representations, which must, within 14 days after the day on which the notice is given, be made using the online service that is designated by the Registrar as being accepted for that purpose.SOR/2025-19, s. 3
Register
ParticularsFor the purpose of paragraph 26(2)(f) of the Act, the following are other particulars that are required to be entered on the register:the registration number;the name and postal address of the registered owner on the date of registration;any representation or description of the trademark that is contained in the application for the registration of the trademark;if the trademark is in standard characters, a note to that effect;if the trademark is a certification mark, a note to that effect; andif the Registrar has restricted the registration to a defined territorial area in Canada under subsection 32(2) of the Act, a note to that effect.
Fee for extending statement of goods or servicesFor the purpose of subsection 41(1) of the Act, the fee to be paid by a registered owner that makes an application to extend the statement of goods or services in respect of which a trademark is registered is that set out in item 10 of the schedule to these Regulations.
Merger of registrationsThe Registrar may merge registrations under paragraph 41(1)(f) of the Act only if the trademarks to which the registrations apply are the same and have the same registered owner.
Fee for the giving of noticeFor the purpose of subsection 44(1) of the Act, the fee to be paid by a person that requests that a notice be given under that subsection is that set out in item 11 of the schedule to these Regulations.
Requested statement of goods or services — timingFor the purpose of subsection 44.1(1) of the Act, the time within which a registered owner must furnish the Registrar with a statement of goods and services grouped in the manner described in subsection 30(3) of the Act is six months after the date of the notice that was given to them.
Transfer of Registered Trademark
FeeA person that requests the registration of the transfer of a registered trademark under subsection 48(4) of the Act must pay the fee set out in item 12 of the schedule to these Regulations.
Required informationThe Registrar must not register the transfer of a registered trademark under subsection 48(4) of the Act unless the Registrar has been provided with the transferee’s name and postal address.
Effect of transfer — separate registrationsIf the transfer to a person of a registered trademark is, under subsection 48(4) of the Act or section 146 of these Regulations, registered in respect of at least one but not all of the goods or services that are specified in the initial registration, that person is deemed to be the registered owner of a separate registration that is deemed to have the same registration date as that initial registration.
Proceeding Under Section 45 of Act
FeeFor the purpose of subsection 45(1) of the Act, the fee to be paid by a person that requests that a notice be given under that subsection is that set out in item 13 of the schedule to these Regulations.
CorrespondenceA person that corresponds with the Registrar in respect of a proceeding under section 45 of the Act must clearly indicate that the correspondence relates to that proceeding.
Forwarding copies of documentsA party to a proceeding under section 45 of the Act that, on a given day after the Registrar has given notice under subsection 45(1) of the Act, provides to the Registrar a document, other than a document that they are otherwise required to serve, that relates to that proceeding must, on that day, forward a copy of it to any other party.
Service on representative of partyA party to a proceeding under section 45 of the Act may file with the Registrar and serve on any other party to the proceeding a notice setting out the name and address in Canada of a person on whom or a firm on which service of any document in respect of the proceeding may be made with the same effect as if it had been served on them.
Manner of serviceService of a document in respect of a proceeding under section 45 of the Act must be effectedby personal service in Canada;by registered mail to an address in Canada;by courier to an address in Canada;by the sending of a notice to the other party advising that the document to be served has been filed with or submitted to the Registrar, if the party seeking to effect service does not have the information necessary to serve the other party in accordance with any of paragraphs (a) to (c); orin any manner that is agreed to by the parties.Service on trademark agentDespite section 70, if a party to be served appoints a trademark agent in respect of a proceeding under section 45 of the Act, service must be effected on that agent unless the parties agree otherwise.Effective date of serviceSubject to subsections (4) to (7) and (10), service is effective on the day on which the document is delivered.Exception — service by registered mailService by registered mail is effective on the day on which the document is mailed.Exception — service by courierService by courier is effective on the day on which the document is provided to the courier.Exception — service by electronic meansService by an electronic means is effective on the day on which the document is transmitted.Exception — service by sending of noticeService by the sending of a notice under paragraph (1)(d) is effective on the day on which the notice is sent.Notice of manner and date of serviceThe party effecting service must notify the Registrar of the manner of service and the effective date of service.Proof of serviceA party that serves a document must, on request of the Registrar, provide proof of service within one month after the date of the request. If proof of service is not provided within that month, the document is deemed not to have been served.Validity of irregular serviceService of a document other than in accordance with subsection (1) is nonetheless valid if the Registrar determines that the document has been provided to the party being served and informs the parties of that determination. The service is effective on the day on which the document was provided to the party being served.SOR/2021-130, s. 6
Evidence — timingFor the purpose of subsection 45(2.1) of the Act, the time within which the registered owner of the trademark must serve their evidence on the person at whose request the notice was given is the three-month period referred to in subsection 45(1) of the Act.
Written representationsAfter the registered owner has furnished an affidavit or statutory declaration to the Registrar in response to a notice given under subsection 45(1) of the Act, the Registrar must give the parties notice that they may submit written representations to the Registrar.Timing if notice given at Registrar’s initiativeFor the purpose of subsection 45(2) of the Act, if the notice referred to in subsection 45(1) of the Act was given on the Registrar’s own initiative, the time within which the registered owner may submit written representations to the Registrar is two months after the date of the notice given under subsection (1) of this section.Statement of registered ownerIf the registered owner does not wish to submit written representations in respect of a notice referred to in subsection 45(1) of the Act that was given on the Registrar’s own initiative, they may submit a statement to that effect to the Registrar within the two-month period referred to in subsection (2) of this section.Timing if notice given on requestFor the purpose of subsections 45(2) and (2.1) of the Act, if the notice referred to in subsection 45(1) of the Act was given at the request of a person, the time within which that person may submit written representations to the Registrar and must serve those representations on the registered owner is two months after the date of the notice given under subsection (1) of this section.Statement of person requesting noticeIf that person does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period referred to in subsection (4) and, if so, they must serve it on the registered owner within that period.Timing of registered owner’s written representationsFor the purpose of subsections 45(2) and (2.1) of the Act, if the notice referred to in subsection 45(1) of the Act was given at the request of a person, the time within which the registered owner may submit written representations to the Registrar and must serve those representations on that person isin the case that a service referred to in subsection (4) or (5) of this section, as the case may be, is effective within the two-month period referred to in that subsection (4), two months after the day on which that service is effective; andin any other case, two months after the end of the two-month period referred to in that subsection (4).Statement of registered ownerIf the registered owner does not wish to submit written representations in respect of a notice referred to in subsection (6), they may submit a statement to that effect to the Registrar within the two-month period determined under subsection (6) for their submission of written representations and, if so, they must serve it on the person requesting the notice within that period.
Request for hearingEvery party that wishes to make representations to the Registrar at a hearing must file with the Registrar a request that indicateswhether the party intends to make representations in English or French and whether they will require simultaneous interpretation if another party makes representations in the other official language; andwhether the party wishes to make representations in person, by telephone, by video conference or by another means of communication offered by the Registrar and that sets out any information necessary to permit the use of the chosen means of communication.PeriodThe request must be filed within the following period:if the notice referred to in subsection 45(1) of the Act was given on the Registrar’s own initiative, one month after the day on which the registered owner submits to the Registrar written representations or a statement that they do not wish to make written representations or, if no such submission is made within the two-month period referred to in subsection 73(2) of these Regulations, one month after the end of that two-month period; andif the notice referred to in subsection 45(1) of the Act was given at the request of a person, one month after the day on which the registered owner’s service of written representations or of a statement that they do not wish to make written representations is effective or, if no such service is effective within the two-month period determined under 73(6) of these Regulations for their submission of written representations, one month after the end of that two-month period.When representations may be madeA party may make representations at the hearing only if they file a request in accordance with this section.ChangesIf a party, at least one month before the date of the hearing, notifies the Registrar of changes to be made in respect of any of the information provided under subsection (1), the Registrar must modify the administrative arrangements for the hearing accordingly.
CostsThe Registrar may, on request, award costs against a party to a proceeding under section 45 of the Act in the following amounts:in the case where the party withdraws a request for a hearing less than 14 days before the day on which the hearing is scheduled to take place, an amount that is two times the fee set out in item 13 of the schedule to these Regulations for a request that a notice be given under subsection 45(1) of the Act; orin the case where the party engages in unreasonable conduct that causes undue delay or expense in the proceeding, an amount that is five times the fee set out in item 13 of the schedule to these Regulations for a request that a notice be given under subsection 45(1) of the Act.RestrictionThe Registrar must not award costs if the proceeding is ended before the final decision is issued.Non-applicationSubsection (1) does not apply ifin the circumstances referred to in paragraph (1)(a), the hearing is scheduled to take place on or before the day on which this section comes into force or within 14 days after that day; orin the circumstances referred to in paragraph (1)(b), the unreasonable conduct occurs before the day on which this section comes into force.SOR/2025-19, s. 4
Request for costsA request by a party that costs be awarded must be filed using the online service that is designated by the Registrar as being accepted for that purpose and must specify the reasons for the request and the circumstances for which costs are sought.Timing of requestThe request for costs must be filedin the case where a party has filed a request for a hearing under subsection 74(1), within 14 days after the day on which the hearing ends or within 14 days after the day on which the Registrar notifies the parties that the hearing has been cancelled; orin any other case, within 14 days after the end of the one-month period for filing a request for a hearing under subsection 74(1).SOR/2025-19, s. 4
RepresentationsThe Registrar must give the other party notice of the request for costs and an opportunity to make written representations, which must, within 14 days after the day on which the notice is given, be made using the online service that is designated by the Registrar as being accepted for that purpose.SOR/2025-19, s. 4
Renewal of Registration
FeeFor the purpose of section 46 of the Act, the renewal fee to be paid is that set out in item 14 of the schedule to these Regulations.
PeriodFor the purpose of section 46 of the Act, the period within which the renewal fee is to be paidbegins on the day that is six months before the end of the initial period or the renewal period, as the case may be, andends at the later ofthe end of the six-month period that begins after the end of that initial or renewal period, andif a notice is sent under subsection 46(2) of the Act, the end of the two-month period that begins after the date of that notice.
Deemed date — merged registrationsFor the purpose of a renewal under section 46 of the Act, the deemed day of registration in respect of a registration of a trademark that results from the merger of registrations under paragraph 41(1)(f) of the Act is the day that is 10 years before the earliest day, after the day of the merger, on which the initial period or the renewal period, as the case may be, in respect of any of the registrations being merged would have expired, had the merger not occurred.
Objection Proceeding Under Section 11.13 of Act
FeeFor the purpose of subsection 11.13(1) of the Act, the fee to be paid for filing a statement of objection is that set out in item 15 of the schedule to these Regulations.
CorrespondenceA person that corresponds with the Registrar in respect of an objection proceeding must clearly indicate that the correspondence relates to that proceeding.
Forwarding copies of documentsA party to an objection proceeding that, on a given day after a statement of objection has been filed with the Registrar under subsection 11.13(1) of the Act, provides to the Registrar a document, other than a document that they are otherwise required to serve on another party, that relates to that proceeding must, on that day, forward a copy of it to the other party.
Manner of serviceService of a document in respect of an objection proceeding must be effectedby personal service in Canada;by registered mail to an address in Canada;by courier to an address in Canada;by the sending of a notice to the other party advising that the document to be served has been filed with or submitted to the Registrar, if the party seeking to effect service does not have the information necessary to serve the other party in accordance with any of paragraphs (a) to (c); orin any manner that is agreed to by the parties.Service on trademark agentIf a party to be served appoints a trademark agent in respect of an objection proceeding,that agent is deemed, in respect of any party that has been served with notice of the appointment, to replace any person or firm set out in a statement by the Minister or a statement of objection as a person on whom or a firm on which service of any document may be made with the same effect as if it had been served on the party directly; andservice must be effected on that agent unless the parties agree otherwise.Effective date of serviceSubject to subsections (4) to (7) and (10), service is effective on the day on which the document is delivered.Exception — service by registered mailService by registered mail is effective on the day on which the document is mailed.Exception — service by courierService by courier is effective on the day on which the document is provided to the courier.Exception — service by electronic meansService by an electronic means is effective on the day on which the document is transmitted.Exception — service by sending of noticeService by the sending of a notice under paragraph (1)(d) is effective on the day on which the notice is sent.Notice of manner and date of serviceThe party effecting service must notify the Registrar of the manner of service and the effective date of service.Proof of serviceA party that serves a document must, on request of the Registrar, provide proof of service within one month after the date of the request. If proof of service is not provided within that month, the document is deemed not to have been served.Validity of irregular serviceService of a document other than in accordance with subsection (1) is nonetheless valid if the Registrar determines that the document has been provided to the party being served and informs the parties of that determination. The service is effective on the day on which the document was provided to the party being served.SOR/2021-130, s. 7
AmendmentNo amendment to a statement of objection or counter statement may be made except with leave of the Registrar on terms that the Registrar considers to be appropriate.Interests of justiceThe Registrar must grant leave under subsection (1) if it is in the interests of justice to do so.
Manner of submitting evidenceEvidence in respect of an objection proceeding, other than evidence referred to in subsection 91(3) of these Regulations, is to be submitted to the Registrar by way of affidavit or statutory declaration. However, if the evidence consists of a document or extract from a document that is in the official custody of the Registrar, it may be submitted by way of a certified copy referred to in section 54 of the Act.
Timing of objector’s evidenceThe objector may submit evidence referred to in subsection 11.13(5) of the Act to the Registrar within a period of four months after the day on which the responsible authority’s service on the objector of a copy of the counter statement is effective.Timing of serviceFor the purpose of subsection 11.13(5.1) of the Act, the time within which the objector must serve that evidence on the responsible authority is during that four-month period.Objector’s statementIf the objector does not wish to submit evidence, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) and, if so, they must serve it on the responsible authority within that period.
Circumstances — deemed withdrawal of objectionFor the purpose of subsection 11.13(6) of the Act, the circumstances under which the objector’s not submitting and serving evidence or a statement referred to in that subsection results in their objection being deemed to have been withdrawn are that neither that evidence nor that statement has been submitted and served by the objector by the end of the four-month period referred to in section 84 of these Regulations.
Timing of responsible authority’s evidenceThe responsible authority may submit evidence referred to in subsection 11.13(5) of the Act to the Registrar within a period of four months after the day on which the objector’s service under section 84 of these Regulations is effective.Timing of serviceFor the purpose of subsection 11.13(5.1) of the Act, the time within which the responsible authority must serve that evidence on the objector is during that four-month period.Statement of responsible authorityIf the responsible authority does not wish to submit evidence, they may submit a statement to that effect to the Registrar within the four-month period referred to in subsection (1) and, if so, they must serve it on the objector within that period.
Non-application of subsection 11.13(5) of Act — circumstancesFor the purpose of paragraph 11.13(5)(a) of the Act, the circumstances under which the responsible authority’s not submitting evidence or a statement that they do not wish to submit evidence results in the loss of the opportunity to submit evidence and to make representations to the Registrar are that neither that evidence nor that statement has been submitted and served by the responsible authority by the end of the four-month period referred to in section 86 of these Regulations.
Circumstances — indication or translation not entered on listFor the purpose of subsection 11.13(6.1) of the Act, the circumstances under which the responsible authority’s not submitting and serving evidence or a statement that they do not wish to submit evidence results in the indication or the translation not being entered on the list are that neither that evidence nor that statement has been submitted and served by the responsible authority by the end of the four-month period referred to in section 86 of these Regulations.
Reply evidence — timingWithin one month after the day on which the service on the objector under section 86 is effective, the objector may submit to the Registrar reply evidence and, if so, they must serve it on the responsible authority within that one-month period.
Additional evidenceA party may submit additional evidence with leave of the Registrar on terms that the Registrar considers to be appropriate.Interests of justiceThe Registrar must grant leave under subsection (1) if it is in the interests of justice to do so.
Ordering of cross-examinationOn the application of a party made before the Registrar gives notice in accordance with subsection 92(1), the Registrar must order the cross-examination under oath or solemn affirmation, within the period specified by the Registrar, of any affiant or declarant on an affidavit or statutory declaration that has been submitted to the Registrar as evidence in the objection proceeding.Conduct of cross-examinationThe cross-examination is to be conducted as agreed to by the parties or, in the absence of an agreement, as specified by the Registrar.Transcript and undertakingsWithin the period specified by the Registrar for conducting the cross-examination,the party that conducted the cross-examination must submit to the Registrar and serve on the other party the transcript of the cross-examination and exhibits to the cross-examination; andthe party that was cross-examined must submit to the Registrar and serve on the other party any information, document or material that they undertook to provide in the course of the cross-examination.Inadmissibility in absence of cross-examinationAn affidavit or statutory declaration is not to be part of the evidence if an affiant or declarant declines or fails to attend for cross-examination.
Written representationsAfter all evidence has been filed, the Registrar must give the parties notice that they may submit written representations to the Registrar.Timing of objector’s written representationsThe objector may submit written representations to the Registrar within a period of two months after the date of that notice.Timing of serviceFor the purpose of subsection 11.13(5.1) of the Act, the time within which the objector must serve their written representations on the responsible authority is during that two-month period.Statement of objectorIf the objector does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period referred to in subsection (2) and, if so, they must serve it on the responsible authority within that period.Timing of responsible authority’s written representationsThe responsible authority may submit written representations to the Registrar within the following period:if service referred to in subsection (3) or (4), as the case may be, is effective within the two-month period referred to in that subsection, two months after the day on which that service is effective; andin any other case, two months after the end of the two-month period referred to in subsection (2).Timing of serviceFor the purpose of subsection 11.13(5.1) of the Act, the time within which the responsible authority must serve their written representations on the objector is during the two-month period determined under subsection (5) of this section for their submission of written representations.Statement of responsible authorityIf the responsible authority does not wish to submit written representations, they may submit a statement to that effect to the Registrar within the two-month period determined under subsection (5) for their submission of written representations and, if so, they must serve it on the objector within that period.
Request for hearingWithin one month after the day on which the responsible authority’s service on the objector of written representations or of a statement that the responsible authority does not wish to make written representations is effective — or, if no such service is effective within the two-month period determined under subsection 92(5) for their submission of written representations, within one month after the end of that two-month period — a party that wishes to make representations to the Registrar at a hearing must file with the Registrar a request that indicateswhether they intend to make representations in English or French and whether they will require simultaneous interpretation if the other party makes representations in the other official language; andwhether they wish to make representations in person, by telephone, by video conference or by another means of communication offered by the Registrar, and that sets out any information necessary to permit the use of the chosen means of communication.When representations may be madeA party may make representations at the hearing only if they file a request in accordance with subsection (1).ChangesIf a party, at least one month before the date of the hearing, notifies the Registrar of changes to be made in respect of any of the information provided under subsection (1), the Registrar must modify the administrative arrangements for the hearing accordingly.
CostsThe Registrar may, on request, award costs against a party to an objection proceeding in the following amounts:in the case where the party withdraws a request for a hearing less than 14 days before the day on which the hearing is scheduled to take place, an amount that is two times the fee set out in item 15 of the schedule to these Regulations for filing a statement of objection under subsection 11.13(1) of the Act; orin the case where the party engages in unreasonable conduct that causes undue delay or expense in the proceeding, an amount that is five times the fee set out in item 15 of the schedule to these Regulations for filing a statement of objection under subsection 11.13(1) of the Act.RestrictionThe Registrar must not award costs if the objection proceeding is ended before the final decision is issued.Non-applicationSubsection (1) does not apply ifin the circumstances referred to in paragraph (1)(a), the hearing is scheduled to take place on or before the day on which this section comes into force or within 14 days after that day; orin the circumstances referred to in paragraph (1)(b), the unreasonable conduct occurs before the day on which this section comes into force.SOR/2025-19, s. 5
Request for costsA request by a party that costs be awarded must be filed using the online service that is designated by the Registrar as being accepted for that purpose and must specify the reasons for the request and the circumstances for which costs are sought.Timing of requestThe request for costs must be filedin the case where a party has filed a request for a hearing under subsection 93(1), within 14 days after the day on which the hearing ends or within 14 days after the day on which the Registrar notifies the parties that the hearing has been cancelled; orin any other case, within 14 days after the end of the one-month period for filing a request for a hearing under subsection 93(1).SOR/2025-19, s. 5
RepresentationsThe Registrar must give the other party notice of the request for costs and an opportunity to make written representations, which must, within 14 days after the day on which the notice is given, be made using the online service that is designated by the Registrar as being accepted for that purpose.SOR/2025-19, s. 5
Copies of Documents
Fee for certified copiesA person that requests a certified copy of a document that is in the Registrar’s possession must pay the fee set out in item 16 or 17 of the schedule, as applicable.ExceptionSubsection (1) does not apply in respect of a certified copy that is transmitted under section 60 of the Act or rule 318 of the Federal Courts Rules, including as modified by rule 350 of those Rules.
Fee for non-certified copiesA person that requests a non-certified copy of a document that is in the Registrar’s possession must pay the fee set out in item 18 or 19 of the schedule, as applicable.
Confidentiality Order Under Section 45.1 of Act
Confidentiality orderA party to a proceeding under section 11.13, 38 or 45 of the Act who makes a request to the Registrar under subsection 45.1(1) of the Act for an order that evidence be kept confidential must submit the following information to the Registrar:a description of the evidence that the party wishes to be kept confidential;a statement that the evidence has not been made public;the reasons why the evidence should be kept confidential;an indication of whether the other party consents to the request; andany other information that the Registrar requires in order to make a decision with respect to the request.Public interestIn deciding whether to make a confidentiality order under subsection 45.1(4) of the Act, the Registrar must consider the public interest in open and accessible proceedings.Confidential designationA party who submits information to the Registrar that is subject to a confidentiality order must ensure that the information is designated as confidential.Revocation or amendment of orderFor greater certainty, at any time in the proceeding, the Registrar may, under subsection 45.1(4) of the Act, amend the confidentiality order if the Registrar considers it appropriate in the circumstances or revoke it if the Registrar is no longer satisfied that the evidence should be kept confidential.SOR/2025-19, s. 6
Registrar’s Powers
Orders and directionsThe Registrar may, as the circumstances and considerations of fairness permit, make any order or give any direction that the Registrar considers appropriate to deal with a proceeding under section 11.13, 38 or 45 of the Act in an efficient and cost-effective manner.SOR/2025-19, s. 6
Case managementThe Registrar may, at any time in a proceeding under section 11.13, 38 or 45 of the Act, designate the proceeding as a case-managed proceeding to which this section applies, subject to any terms that the Registrar considers appropriate.Circumstances to be consideredIn determining whether to designate a proceeding as a case-managed proceeding, the Registrar must consider all the surrounding circumstances, includingthe extent of intervention by the Registrar that the proceeding is likely to require for matters to be dealt with in an efficient and cost-effective manner;the nature and extent of evidence;the complexity of the proceeding;whether the parties are represented;the number of related files; andwhether substantial delay has occurred or is anticipated to occur in the conduct of the proceeding.Time and mannerThe Registrar may fix the time by which or the manner in which any step in a case-managed proceeding is to be completed, despite any time or manner that is provided for under the Act with respect to the proceeding.SOR/2025-19, s. 6
Implementation of Madrid ProtocolGeneral
InterpretationThe following definitions apply in this Part.basic application means an application for the registration of a trademark that has been filed under subsection 30(1) of the Act and that constitutes the basis for an application for international registration, but does not include a Protocol application. (demande de base)basic registration means a registration of a trademark that is on the register and that constitutes the basis for an application for international registration, but does not include a Protocol registration. (enregistrement de base)Common Regulations means the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement, as modified from time to time. (Règlement d’exécution commun)contracting party means any state or intergovernmental organization that is a party to the Protocol. (partie contractante)date of international registration means the date borne by an international registration under Rule 15 of the Common Regulations. (date de l’enregistrement international)date of notification of territorial extension means the day on which the International Bureau notifies the Registrar of a request made under Article 3ter(1) or (2) of the Protocol. (date de la notification d’extension territoriale)holder means the person in whose name an international registration is recorded in the International Register. (titulaire)opposition period means the two-month period referred to in subsection 38(1) of the Act. (délai d’opposition)Protocol means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989, including any amendments, modifications and revisions made from time to time to which Canada is a party. (Protocole)Protocol application means an application referred to in subsection 103(1) or (2) or a divisional application referred to in subsection 124(1). (demande prévue au Protocole)Protocol registration means the registration of a trademark under subsection 132(1). (enregistrement prévu au Protocole)
Non-application of section 66 of ActSection 66 of the Act does not apply in respect of periods fixed by this Part, exceptthe two-month period fixed by subsections 117(2) and (3) of these Regulations;the maximum four-month extension fixed by section 125 of these Regulations; andthe three-month period fixed by section 147 of these Regulations.Application of Rule 4(4) of Common RegulationsRule 4(4) of the Common Regulations applies to all periods fixed by this Part other than those referred to in paragraphs (1)(a) to (c) of this section.
Application for International Registration (Office of Registrar as Office of Origin)Qualification
ConditionsA person may file with the Registrar an application for international registration of a trademark for presentation to the International Bureau if they meet the following conditions:the person is a national of or is domiciled in Canada or has a real and effective industrial or commercial establishment in Canada; andthe person is the applicant in respect of a basic application for the trademark or, if there is a basic registration in respect of the trademark, the registered owner of the trademark.
Contents and Form
ContentsEvery application for international registration filed with the Registrar must include the following information:the applicant’s name and postal address;the number and filing date of the basic application or the number and date of registration of the basic registration;a statement thatthe applicant is a national of Canada,the applicant is domiciled in Canada, accompanied by the address of the applicant’s domicile in Canada if the address filed under paragraph (a) is not in Canada, orthe applicant has a real and effective industrial or commercial establishment in Canada, accompanied by the address of the applicant’s industrial or commercial establishment in Canada if the address filed under paragraph (a) is not in Canada;if colour is claimed as a feature of the trademark in the basic application or basic registration, the same claim;a reproduction of the trademark, which must be in colour if the trademark is in colour in the basic application or basic registration or if colour is claimed as a feature of the trademark in the basic application or the basic registration;if the trademark in the basic application or basic registration is a certification mark, it consists in whole or in part of a three-dimensional shape or a sound or it consists exclusively of a single colour or a combination of colours without delineated contours, an indication to that effect;a list of the goods or services for which international registration is sought that mustinclude only goods or services that are within the scope of the basic application or basic registration, andgroup the goods or services according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification; andthe names of the contracting parties for which the extension of protection is requested under Article 3ter(1) of the Protocol.LanguageThe application, with the exception of the trademark itself, must be in English or French.Manner of filingThe application must be filed byusing the online service that is designated by the Registrar as being accepted for that purpose; orcompleting the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar.
Functions of Registrar
Office of originOn receipt of an application for international registration that is filed in accordance with section 99 by a person that meets the conditions set out in section 98, the Registrar must, in respect of that application, act as the Office of origin in accordance with the Protocol and the Common Regulations, including bycertifying that the information included in the application for international registration corresponds to the information included in the basic application or basic registration;presenting the application for international registration to the International Bureau; andin the case that the application for international registration results in an international registration, notifying the International Bureau to the following effect:if, in respect of all or any of the goods or services listed in the international registration, the basic application is withdrawn, abandoned or refused or the basic registration is cancelled or expunged before the end of five years after its date of international registration, andif a proceeding that began before the end of that five-year period leads, in respect of all or any of the goods or services listed in the international registration, to the withdrawal, abandonment or refusal of the basic application or to the cancellation or expungement of the basic registration after that period.
Change in Ownership of International Registration
Request for recordingA transferee of an international registration may file with the Registrar a request for the recording of a change in ownership of the international registration for presentation to the International Bureau if they meet the following requirements:the transferee is a national of or is domiciled in Canada or has a real and effective industrial or commercial establishment in Canada; andthe transferee has been unable to obtain, on a request for the recording of a change in ownership of the international registration, the signature of the holder of the international registration or of the holder’s representative recorded in accordance with Rule 3(4)(a) of the Common Regulations.Manner of filingThe request must be in English or French and be filed byusing the online service that is designated by the Registrar as being accepted for that purpose; orcompleting the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar.Accompanying documentsThe request must be accompanied byevidence of the transfer; anda statement to the effect that the transferee made efforts to obtain the signature of the holder of the international registration or that of their representative recorded in accordance with Rule 3(4)(a) of the Common Regulations and that their efforts were not successful.
Transmission to International BureauThe Registrar must transmit to the International Bureau a request for the recording of a change in ownership that is filed in accordance with section 101 if the Registrar considers the evidence of the transfer to be satisfactory.
Territorial Extension to CanadaProtocol Application
Request under Article 3ter(1) of the ProtocolOn the registration of a trademark in the International Register on the basis of an application that contains a request made under Article 3ter(1) of the Protocol for the extension to Canada of the protection of a trademark resulting from its international registration, an application is deemed to have been filed under subsection 30(1) of the Act by the holder of the international registration for the registration of the trademark and in respect of the same goods or services that are listed in that request.Request under Article 3ter(2) of the ProtocolOn the recording in the International Register of a request made under Article 3ter(2) of the Protocol for the extension to Canada of the protection of a trademark resulting from its international registration, an application is deemed to have been filed under subsection 30(1) of the Act by the holder of the international registration for the registration of the trademark and in respect of the same goods or services that are listed in that request.Deemed application for certification markAn application referred to in subsection (1) or (2) is deemed to be an application for the registration of a certification mark if the international registration relates to a collective mark, a certification mark or a guarantee mark.
Non-Registrable Trademarks
Goods or services outside scope of international registrationA trademark that is the subject of a Protocol application is not registrable if the goods or services specified in the Protocol application are not within the scope of the international registration.
Filing Date
Non-application of sections 33 and 34 of ActSections 33 and 34 of the Act do not apply in respect of a Protocol application.References to subsection 34(1) of the ActIn respect of the filing date of a Protocol application, the reference in subsections 12(3) and 32(1) and paragraphs 38(2)(e) and (f) of the Act to “subsection 34(1)” is to be read as “subsection 106(2) of the Trademark Regulations”.SOR/2019-116, s. 3
Date of international registrationThe filing date of a Protocol application isif the Protocol application results from a request made under Article 3ter(1) of the Protocol, the date of international registration of the corresponding international registration; andif the Protocol application results from a request made under Article 3ter(2) of the Protocol, the date borne by the subsequent designation under Rule 24(6) of the Common Regulations.Exception — priorityDespite subsection (1), in the case that, before the filing date of a Protocol application as determined under that subsection, the applicant of the Protocol application or the applicant’s predecessor in title had applied, in or for any country of the Union other than Canada, for the registration of the same or substantially the same trademark in association with the same kind of goods or services, the filing date of the application in or for the other country is deemed to be the filing date of the Protocol application and the applicant is entitled to priority in Canada accordingly despite any intervening use in Canada or making known in Canada or any intervening application or registration, ifthe international registration on which the Protocol application is based contains a declaration claiming the priority of the application in or for the other country, along with an indication of the name of the country or office where the filing was made and of the filing date;the filing date of the Protocol application as determined under subsection (1) is within a period of six months after the date on which the earliest application was filed in or for any country of the Union for the registration of the same or substantially the same trademark in association with the same kind of goods or services; andthe applicant of the Protocol application, at the filing date of the Protocol application as determined under subsection (1), is a citizen or national of or is domiciled in a country of the Union or has a real and effective industrial or commercial establishment in a country of the Union.
Amendment or Withdrawal of Protocol Application
Recording resulting in deletionIf the International Bureau notifies the Registrar of the recording in the International Register under Rule 27(1)(a) of the Common Regulations of a limitation of the list of goods or services, in respect of Canada, of an international registration on which a Protocol application is based,in the case that the recording results in a deletion of all goods or services from that list without giving rise to a resulting new list, the Protocol application is deemed to be withdrawn;subject to paragraph (a), in the case that the recording results in a deletion of all goods or services from that list of a particular class of the Nice Classification without giving rise to a resulting new list for that particular class of the Nice Classification, the Protocol application is deemed to be amended accordingly; andin the case that the recording results in a deletion of one or more of the goods or services from a list of a particular class of the Nice Classification and gives rise to a resulting new list for that particular class of the Nice Classification, the Registrar must determine, with respect to each good or service in that resulting new list for that particular class, whether the following requirements are met:the good or service is within the scope of the Protocol application on its filing date, determined without taking into account subsection 106(2), and on the date of the recording in the International Register,the good or service is within the scope of the Protocol application as advertised, if the date of the recording in the International Register is on or after the day on which the application is advertised under subsection 37(1) of the Act,the good or service is within the scope of the Protocol application as amended, if the Protocol application is amended on or after the day on which the application is advertised under subsection 37(1) of the Act and if the date of the recording in the International Register is on or after the day of the amendment, andthe good or service is described in ordinary commercial terms and in a manner that identifies a specific good or service.Recording resulting in new listIn the case that the recording results in a deletion of one or more of the goods or services from a list of a particular class of the Nice Classification and gives rise to a resulting new list for that particular class of the Nice Classification,if the Registrar determines that the requirements set out in paragraph (1)(c) are not met for any good or service in that resulting list for that particular class, the Registrar must, in accordance with Rule 27(5) of the Common Regulations, send to the International Bureau a declaration to the effect that the limitation has no effect in Canada in respect of all of the goods and services in that class; andif the Registrar determines that the requirements set out in paragraph (1)(c) are met for all of the goods or services in that resulting list for that particular class, the Protocol application is deemed to be amended accordingly.SOR/2019-116, s. 4
Complete renunciationIf, in respect of an international registration on which a Protocol application is based, the International Bureau notifies the Registrar of the recording in the International Register of a renunciation in respect of Canada for all of the goods or services that are listed in the international registration, the Protocol application is deemed to be withdrawn.
Complete cancellationIf, in respect of an international registration on which a Protocol application is based, the International Bureau notifies the Registrar of the recording in the International Register of a cancellation of the international registration for all of the goods or services that are listed in the international registration, the Protocol application is deemed to be withdrawn.
Partial cancellationIf, in respect of an international registration on which a Protocol application is based, the International Bureau notifies the Registrar of the recording in the International Register of a cancellation of the international registration for at least one but not all of the goods or services that are listed in the international registration, the Protocol application is deemed to be amended or withdrawn accordingly.
Change of name or addressIf, in respect of an international registration on which a Protocol application is based, the International Bureau notifies the Registrar of the recording in the International Register of a change of name or address of the holder, the Protocol application is deemed to be amended accordingly.
Effective date of amendment or withdrawalAn amendment or withdrawal of a Protocol application under any of sections 107 to 111 is deemed to have taken effect on the date of the limitation, renunciation, cancellation or change, as the case may be, as recorded in the International Register.
Non-renewal of international registrationIf the international registration on which a Protocol application is based is not renewed in respect of Canada and the International Bureau so notifies the Registrar, the Protocol application is deemed to have been withdrawn at the expiry of the international registration in respect of Canada.
Effect of Correction of International Registration on Protocol Application
Deemed amendment to applicationIf the International Bureau notifies the Registrar of a correction of an international registration affecting a Protocol application, the Protocol application is deemed to be amended accordingly.
Amendment to non-advertised applicationIf a Protocol application has not 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 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 a reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph 132(1)(d)(i) of these Regulations 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.
Amendment to advertised application — all goods or servicesIf 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 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,the application is deemed to never have been advertised; anda reference in sections 120 and 129, paragraph 132(1)(c) and subparagraph 132(1)(d)(i) of these Regulations 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.
Amendment to advertised application — some goods or servicesIf 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:that the Protocol application be amended to delete those goods or services; orthat the Protocol application be deemed to never have been advertised.Deletion of goods or servicesIf 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.Deemed non-advertisement of applicationIf the applicant selects the option referred to in paragraph (1)(b) within two months after the date of the noticethe Protocol application is deemed never to have been advertised; anda 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.
Effective date of amendmentAn 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
Statement of confirmation of total provisional refusalIf 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
Notification of provisional refusalThe 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.
Statement of confirmation of total provisional refusalIf 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
Non-application of subsections 39(1), (2) and (5) of ActSubsections 39(1), (2) and (5) of the Act do not apply in respect of a Protocol application.
Filing of request for divisionThe 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 ofthe original Protocol application on its filing date, determined without taking into account subsection 106(2);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; andthe international registration in respect of Canada on the day on which the request is filed.Manner of filingThe request must be in English or French and be filed byusing the online service that is designated by the Registrar as being accepted for that purpose; orcompleting the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar.ContentsThe request must indicatethe number of the international registration on which the original Protocol application is based;the name of the holder of that international registration;the name of the goods or services to be set apart, grouped according to the classes of the Nice Classification; andthe 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.Sending of request to International BureauThe Registrar must send to the International Bureau any request that is filed in accordance with subsections (1) to (3).SOR/2019-116, s. 5
Deemed divisional applicationIf, 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.Division of divisional applicationThe 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
Limitation of extensionIn 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.
Filing of statement of oppositionA 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.
Notification of provisional refusalIf, 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.
No new ground of oppositionIf 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.
Notice of opposition periodIf, 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.
Statement of confirmation of total provisional refusalThe Registrar must send a statement of confirmation of total provisional refusal in respect of a Protocol application to the International Bureau ifthe Protocol application is deemed to have been abandoned under subsection 38(11) of the Act; orthe 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
Non-application of section 40 of ActSection 40 of the Act does not apply in respect of a Protocol application.
Obligations of RegistrarIn 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 ifthe Protocol application has not been opposed and the opposition period has ended;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;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 anddid not send to the International Bureau a notification of provisional refusal, ordid 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; orthe 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:the 18-month period after the date of notification of territorial extension, andthe 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.Non-advertisementDespite 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
Non-application of statutory provisionsParagraphs 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.
Filing of request for mergerThe 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 andall of the Protocol registrations stem from the same original Protocol application;they relate to the same trademark; andtheir registered owner is the holder of the international registrations.Manner of filingThe request must be in English or French and be filed byusing the online service that is designated by the Registrar as being accepted for that purpose; orcompleting the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar.ContentsThe request must indicate the number of each of the international registrations to be merged and the name of the holder of those international registrations.Sending of request to International BureauThe Registrar must send to the International Bureau any request that is filed in accordance with subsections (1) to (3).Merger of Protocol registrationsIf, 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.
Recording resulting in deletionIf the International Bureau notifies the Registrar of the recording in the International Register under Rule 27(1)(a) of the Common Regulations of a limitation of the list of goods or services, in respect of Canada, of an international registration on which a Protocol registration is based,in the case that the recording results in a deletion of all goods or services from that list without giving rise to a resulting new list, the Registrar must cancel the Protocol registration; andsubject to paragraph (a), in the case that the recording results in a deletion of all goods or services from that list of a particular class of the Nice Classification without giving rise to a resulting new list for that particular class of the Nice Classification, the Registrar must amend the register accordingly; andin the case that the recording results in a deletion of one or more of the goods or services from a list of a particular class of the Nice Classification and gives rise to a resulting new list for that particular class of the Nice Classification, the Registrar must determine, with respect to each good or service in that resulting new list for that particular class, whether the following requirements are met:the good or service is within the scope of the Protocol registration on the date of the recording in the International Register, andthe good or service is described in ordinary commercial terms and in a manner that identifies a specific good or service.Recording resulting in new listIn the case that the recording results in a deletion of one or more of the goods or services from a list of a particular class of the Nice Classification and gives rise to a resulting new list for that particular class of the Nice Classification,if the Registrar determines that the requirements set out in paragraph (1)(c) are not met for any good or service in that resulting list for that particular class, the Registrar must, in accordance with Rule 27(5) of the Common Regulations, send to the International Bureau a declaration to the effect that the limitation has no effect in Canada in respect of all of the goods and services in that class; andif the Registrar determines that the requirements set out in paragraph 1(c) are met for all of the goods or services in that resulting list for that particular class, the Registrar must amend the register accordingly.
Complete renunciationIf, in respect of an international registration on which a Protocol registration is based, the International Bureau notifies the Registrar of the recording in the International Register of a renunciation in respect of Canada for all of the goods or services that are listed in the international registration, the Registrar must cancel the Protocol registration.
Complete cancellationIf, in respect of an international registration on which a Protocol registration is based, the International Bureau notifies the Registrar of the recording in the International Register of a cancellation of the international registration for all of the goods or services that are listed in the international registration, the Registrar must cancel the Protocol registration.
Partial cancellationIf, in respect of an international registration on which a Protocol registration is based, the International Bureau notifies the Registrar of the recording in the International Register of a cancellation of the international registration for at least one but not all of the goods or services that are listed in the international registration, the Registrar must cancel the Protocol registration or amend the register accordingly.
Change of name or addressIf, in respect of an international registration on which a Protocol registration is based, the International Bureau notifies the Registrar of the recording in the International Register of a change of name or address of the holder, the Registrar must amend the register accordingly.
Correction of international registrationIf the International Bureau notifies the Registrar of a correction of an international registration affecting a Protocol registration andif the Registrar considers that protection can still be granted to the international registration as corrected, the Registrar must amend the register accordingly; orif the Registrar considers that protection cannot, or can no longer, be granted to the international registration as corrected, the Registrar must so declare and state their grounds in a notification of provisional refusal sent to the International Bureau within 18 months after the date on which the notification of the correction was sent.Period to respondThe Registrar must by notice invite the registered owner to respond to a declaration made under paragraph (1)(b) within the period specified in the notice.Protection grantedIf — after considering any response received within the specified period or, if there is none, at the end of that period — the Registrar considers that protection can be granted to the international registration as corrected, the Registrar must so notify the International Bureau and amend the register accordingly.Protection not grantedIf — after considering any response received within the specified period or, if there is none, at the end of that period — the Registrar still considers that protection cannot, or can no longer, be granted to the international registration as corrected, the Registrar must so notify the International Bureau and amend the register or cancel the Protocol registration accordingly.
Effective date of cancellation or amendmentA cancellation of a Protocol registration or an amendment of the register under any of sections 135 to 140 is deemed to take effect on the date of the limitation, renunciation, cancellation, change or correction, as the case may be, as recorded in the International Register.
Failure to consider request for extension of timeThe Registrar may remove a Protocol registration from the register if the Registrar registered the trademark without considering a previously filed request for an extension of time to file a statement of opposition, unless the time limit under Article 5(2) of the Protocol to make a notification of provisional refusal based on an opposition has ended.NotificationIf the Registrar removes a Protocol registration from the register under subsection (1), the Registrar must so notify the International Bureau.
Renewal
Non-application of section 46 of ActSection 46 of the Act does not apply in respect of a Protocol registration.
Period of registrationSubject to the Act and any other provision of these Regulations, a Protocol registration is on the register for the period that begins on the day of the registration and that ends at the moment of its cancellation or expungement.ExpungementIf the international registration on which a Protocol registration is based is not renewed in respect of Canada and the International Bureau so notifies the Registrar, the Registrar must expunge the Protocol registration. The Protocol registration is deemed to have been expunged at the expiry of the international registration in respect of Canada.
Transfer
Non-application of subsections 48(3) to (5) of ActSubsections 48(3) to (5) of the Act do not apply in respect of a Protocol application or a Protocol registration.
Recording or registrationIf the International Bureau notifies the Registrar of the recording in the International Register of a change in ownership in respect of Canada of an international registration on which a Protocol application or a Protocol registration is based, the Registrar must record the transfer of the Protocol application or register the transfer of the Protocol registration accordingly.
Transformation
ApplicationIf an international registration on which a Protocol application or Protocol registration is based is cancelled under Article 6(4) of the Protocol for all or any of the goods or services listed in the international registration, the person that was the holder of the international registration on the date of cancellation recorded in the International Register, or their successor in title, may, within three months after that date, file with the Registrar an application (referred to in these Regulations as a “transformation application”) to revive the former Protocol application as an application for the registration of the trademark or the former Protocol registration as a registration of the trademark.Single application or registrationThe transformation application may only be filed in respect of a single Protocol application or Protocol registration.List of goods or services — scopeThe statement of the goods or services in the transformation application may only include goods or services that are within the scope ofgoods or services that were cancelled from the international registration in respect of Canada; andgoods or services in the Protocol application or Protocol registration on the date of cancellation recorded in the International Register.Contents of applicationThe transformation application must include the following:a statement to the effect that the application is for transformation of an international registration;a statement of the goods or services in respect of which the registration of the trademark is sought;the international registration number of the cancelled international registration; andinformation that permits the Registrar to identify the Protocol application or Protocol registration that was based on the cancelled international registration.Manner of filingThe transformation application must be in English or French and be filed by an electronic means specified by the Registrar.No extensionThe applicant may not apply under section 47 of the Act for an extension of the three-month period referred to in subsection (1) of this section.
Consequences — trademark subject of cancelled Protocol applicationIf a transformation application is filed in accordance with section 147 for the revival of a Protocol application,an application is deemed to have been filed under subsection 30(1) of the Act by the person that, on the date of cancellation recorded in the International Register, was the holder of the same trademark as in the cancelled international registration and in respect of the goods or services specified in the transformation application;the deemed application is deemed to include any document or information contained in the Protocol application, other than the statement of goods or services;the deemed application is deemed to have the same filing date as the Protocol application; andany steps taken in relation to the Protocol application before the day on which the International Bureau notifies the Registrar of the recording of the cancellation of the international registration are deemed to have been taken in relation to the deemed application.
Consequences — trademark subject of cancelled Protocol registrationIf a transformation application is filed in accordance with section 147 for the revival of a Protocol registration,the Registrar must, in respect of the goods or services specified in the transformation application, register the trademark in the name of the applicant and issue a certificate of its registration;the registration of the trademark is deemed to have resulted from the Protocol application that resulted in the Protocol registration;the day of registration of the trademark is deemed to be the day of registration of the Protocol registration;despite subsection 46(1) of the Act and subject to any other provision of the Act, the registration of the trademark is or is deemed to be on the register foran initial period that begins on the day of registration of the trademark and ends when the international registration’s term of protection would have expired had the international registration not been cancelled, andsubsequent renewal periods of 10 years if the fee set out in item 14 of the schedule to these Regulations is paidfor the first renewal period, within the period referred to in section 76 or within six months after the day on which the trademark is registered under paragraph (a), determined without taking into account paragraph (c), whichever ends later, andfor each subsequent renewal period, within the period referred to in section 76; andany steps taken in relation to the Protocol registration before the day on which the International Bureau notifies the Registrar of the recording of the cancellation of the international registration are deemed to have been taken in relation to the registration made under paragraph (a).SOR/2019-116, s. 6
Denunciation
Application of Article 15(5) of ProtocolArticle 15(5) of the Protocol applies to a holder of an international registration on which a Protocol application or a Protocol registration is based if that holder is no longer entitled to file international applications under Article 2(1) of the Protocol because of the denunciation of the Protocol by a contracting party.
Transitional Provisions, Repeal and Coming into ForceTransitional Provisions
DefinitionsThe following definitions apply in this Part.coming-into-force day means the day on which these Regulations come into force under subsection 162(1). (date d’entrée en vigueur)former Regulations means the Trade-marks Regulations as they read immediately before the coming-into-force day. (ancien règlement)
Filing date already determinedIf, before the coming-into-force day, the date of filing of an application for the registration of a trademark has been determined in accordance with section 25 of the former Regulations, the filing date of the application is that date of filing.
Filing date — coming into forceIf, in respect of an application for the registration of a trademark, all of the items set out in subsection 33(1) of the Act have been received by the Registrar before the coming-into-force day but not all of the items set out in section 25 of the former Regulations have been delivered to the Registrar before that day, the filing date of the application is, subject to section 34 of the Act as it read immediately before the day on which section 339 of the Economic Action Plan 2014 Act, No. 1 comes into force:the coming-into-force day, in the case that the difference between the fee set out in item 7 of the schedule to these Regulations and the fee referred to in section 1 of the schedule to the former Regulations has been paid before the coming-into-force day; andthe date on which that difference is paid, in the case that that difference has not been paid before the coming-into-force day.
Exception to subsections 32(1) and (2)If the filing date, determined without taking into account section 34 of the Act, of an application for the registration of a trademark, other than a Protocol application as defined in section 96 of these Regulations, precedes the coming-into-force day and the trademark has not yet been registered on that day, subsections 32(1) and (2) of these Regulations do not apply and the person that filed the application must pay the fee set out in item 20 of the schedule to these Regulations in addition to the fee, set out in item 1 of the schedule to the former Regulations, that they have already paid.Deemed payment of feesIf the fee set out in item 20 of the schedule to these Regulations is paid in respect of an application referred to in subsection (1), the fee referred to in that item is deemed to have been paid forwhen that application is itself a divisional application,in the case that it stems from a series of divisional applications, the original application from which stems the series and every divisional application that stems from that original application, andin the case that it does not stem from a series of divisional applications, its corresponding original application and every divisional application that stems from it; andwhen that application is not itself a divisional application, every divisional application that stems from it.SOR/2019-116, s. 7SOR/2023-114, s. 2
Exception to subsection 32(4)If, before the coming-into-force day, in respect of an application for the registration of a trademark, the items set out in paragraphs 33(1)(a) to (e) of the Act have been received by the Registrar, the fee for the purpose of paragraph 33(1)(f) of the Act, referred to in section 69.1 of the Act, in respect of that application is, despite subsection 32(4) of these Regulations, the fee set out in item 1 of the schedule to the former Regulations.
Exception to section 34Despite section 34, if the date of a notice of a default in the prosecution of an application precedes the coming-into-force day, the time within which the default may be remedied is that specified in the notice.
Exception to paragraph 35(2)(e)Despite paragraph 35(2)(e) of these Regulations, an application for registration referred to in section 69.1 of the Act may, if the trademark remains substantially the same, be amended to add a statement referred to in paragraph 31(b) of the Act or paragraph 31(e), (f) or (g) of these Regulations.
Exception to section 75Despite section 75 of these Regulations, for the purpose of section 46 of the Act, the renewal fee for a registration in respect of which the day of the last renewal — or, if the registration has never been renewed, the day of the registration — is more than 15 years before the coming-into-force day is the fee set out in item 7 of the schedule to the former Regulations.
Exception to section 76 — first renewalDespite section 76 of these Regulations and subject to section 160 of these Regulations, for the purpose of subsections 46(2) to (5) of the Act, in respect of the first renewal, on or after the coming-into-force day, of a registration that is on the register on the day before the coming-into-force day, the period within which the renewal fee must be paidbegins on the later of the day of registration and the day of last renewal, andends on the later ofthe end of the period of 15 years and six months that begins after the later day described in paragraph (a), andif a notice is sent under subsection 46(2) of the Act, the end of the two-month period that begins after the date of that notice.
Exception to section 76 — goods or services not groupedDespite section 76 of these Regulations, if the goods or services in respect of which a trademark is registered are not, at the end of the period established by section 76 or 159 of these Regulations, as the case may be, grouped on the register in accordance with paragraph 26(2)(e.1) of the Act, the period within which the fees set out in subparagraphs 14(a)(ii) and (b)(ii) of the schedule to these Regulations must be paid ends on the expiry of the two-month period that begins after the day on which the Registrar sends to the registered owner a notice stating that the register has been amended to so group the goods or services and that the registration will be expunged in the event that the fees are not paid within the prescribed period, in the case where that two-month period ends later than that period established by section 76 or 159 of these Regulations.
Repeal
The Trade-marks Regulations1 are repealed.SOR/96-195; SOR/2007-91, s. 1
Coming into Force
S.C. 2015, c. 36Subject to subsection (2), these Regulations come into force on the day on which section 67 of the Economic Action Plan 2015 Act, No. 1, 2015 comes into force.February 1, 2019If section 67 of the Economic Action Plan 2015 Act, No. 1 comes into force before February 1, 2019, sections 123, 124 and 134 come into force on February 1, 2019.[Note: Regulations in force June 17, 2019, see SI/2018-100.]
(Sections 14, 26, 26.01, 26.1, 32 and 36, paragraph 40(b), section 42, subsection 58.1(1), sections 60, 62, 64 and 67, subsection 74.1(1), sections 75 and 78, subsections 93.1(1) and 94(1), section 95, subparagraph 149(d)(ii), paragraph 153(a) and sections 154 and 160)Tariff of FeesColumn 1Column 2ItemDescriptionFee ($)1Application for an extension of time under section 47 of the Act, for each act for which the extension is sought150.002[Repealed, SOR/2021-130, s. 8]3[Repealed, SOR/2021-130, s. 8]4Request for the giving of public notice under paragraph 9(1)(n) or (n.1) of the Act, for each badge, crest, emblem, mark or armorial bearing694.005Request under subsection 9(4) of the Act for the giving of public notice that subparagraph 9(1)(n)(iii) of the Act does not apply with respect to a badge, crest, emblem or mark325.006Request for the protection of a geographical indication638.007Application for the registration of a trademarkif the application and fee are submitted online through the Canadian Intellectual Property Office websitefor the first class of goods or services to which the application relates458.00for each additional class of goods or services to which the application relates as of the filing date139.00in any other casefor the first class of goods or services to which the application relates597.00for each additional class of goods or services to which the application relates as of the filing date139.008Request for the recording of the transfer of one or more applications for the registration of a trademark under subsection 48(3) of the Act, for each application125.009Statement of opposition under subsection 38(1) of the Act1,040.0010Application to amend the register under subsection 41(1) of the Act to extend the statement of goods or services in respect of which a trademark is registeredfor the first class of goods or services to which the application relates597.00for each additional class of goods or services to which the application relates as of the filing date139.0011Request for the giving of one or more notices under subsection 44(1) of the Act, for each notice requested555.0012Request for the registration of the transfer of one or more registered trademarks under subsection 48(4) of the Act, for each trademark125.0013Request for the giving of one or more notices under subsection 45(1) of the Act, for each notice requested555.0014Renewal of the registration of a trademark under section 46 of the Actif the renewal is requested and the fee submitted online through the Canadian Intellectual Property Office websitefor the first class of goods or services to which the request for renewal relates555.00for each additional class of goods or services to which the request for renewal relates173.00in any other casefor the first class of goods or services to which the request for renewal relates694.00for each additional class of goods or services to which the request for renewal relates173.0015Statement of objection under subsection 11.13(1) of the Act1,387.0016Certified copy in paper formfor each certification44.00for each page1.0017Certified copy in electronic formfor each certification44.00for each trademark to which the request relates13.0018Non-certified copy in paper form, for each pageif the requesting person makes the copy using equipment of the Office of the Registrar of Trademarks1.00if the office makes the copy1.0019Non-certified copy in electronic formfor each request13.00for each trademark to which the request relates13.00if the copy is requested on a physical medium, for each physical medium provided other than the first13.0020Registration of a trademark in respect of an application with a filing date before June 17, 2019277.00
SOR/2021-130, s. 8SOR/2021-130, s. 9SOR/2023-114, s. 3SOR/2023-114, s. 4SOR/2023-114, s. 5SOR/2023-114, s. 6SOR/2023-114, s. 7SOR/2023-114, s. 8SOR/2023-114, s. 9SOR/2023-114, s. 10SOR/2023-114, s. 11SOR/2025-19, s. 7SOR/2025-19, s. 8RELATED PROVISIONS — SOR/2021-130, s. 10
The following definitions apply in this section.former Regulations means the Trademarks Regulations as they read immediately before the day on which these Regulations come into force. (ancien règlement)new Regulations means the Trademarks Regulations as they read on the day on which these Regulations come into force. (nouveau règlement)On the day on which these Regulations come into force,the appointment of any trademark agent who is not resident in Canada is revoked;an associate trademark agent who was appointed by a trademark agent who is not resident in Canada is deemed to have been appointed as a trademark agent under subsection 22(1) of the former Regulations;all the trademark agents who are members of a firm that was appointed as a trademark agent under subsection 22(1) of the former Regulations are deemed to be appointed under subsection 22(1) of the new Regulations; andall the trademark agents who are members of a firm that was appointed as an associate trademark agent under subsection 22(3) of the former Regulations are deemed to be appointed under subsection 22(2) of the new Regulations.
SOR/2025-192025-04-01SOR/2023-1142024-01-01SOR/2022-442022-03-04SOR/2021-1302021-06-282014, c. 20, s. 366(3)2019-06-17SOR/2019-1162019-06-17