Typically, regulations are procedural rules intended to
implement a law, which in this case is the Trade-marks
Act. Regulations do not often substantively affect the law.
However, in this case, the proposed amendments to the
Regulations will have a substantive impact beyond purely
Some of the more significant changes are summarized below.
Non-traditional marks. Historically, the
Trade-marks Office has refused applications to register sound
marks. The proposed amendments explicitly allow for the filing of
applications to register sound marks as well as holograms and
motion marks. This is a significant change.
Amendments to applications. While the current
Regulations allow for an application to be amended to
claim a later date of first use without the need to file evidence,
evidence is required to claim an earlier date of first use. The
amendments will simplify the process as it will not be necessary to
file evidence in either case.
Under the current Regulations, it is possible to amend an
application based on prior use in Canada to be based on proposed
use. However, unlike in the United States, the reverse is not
possible as it is not possible to amend an application based on
proposed use to be based on prior use. The proposed amendments to
the Regulations would allow both types of
Assignments. Currently, to record an
assignment, the Trade-marks Office requires documentary support
such as a photocopy of the executed assignment document. The
proposed amendments eliminate the need for filing any documents as
nothing other than a request to transfer the mark(s) will need to
Cross-examination in oppositions. Currently,
after one party has been served with evidence in an opposition,
that party can cross-examine upon the evidence and obtain an
extension of time to file its own evidence. Under the proposed
amendments, a party can no longer insist that cross-examinations be
completed before it is required to file its own evidence. Under the
proposed amendments, both parties will have the same deadline to
complete all cross-examinations. This is generally consistent with
the practice in litigation proceedings as a party's evidence
must be filed before it can cross-examine upon the other
Written arguments in oppositions. Currently,
in oppositions, both parties must file their written arguments at
the same time without the benefit of being able to read the other
party's written arguments. Under the proposed amendments, the
opponent will have two months to file its written argument. The
applicant will then have two months to respond.
Electronic filing and electronic service in
oppositions. A number of years ago, the
Regulations were amended to allow for the electronic
filing of some documents, with many exceptions. Under the proposed
amendments, most of the exceptions will be removed.
Currently, to encourage electronic filing, the Trade-marks Office
offers a discount for filing trade-mark applications
electronically. The proposed amendments will extend the discounts
to cases where the following documents are filed electronically:
Statements of Opposition, section 45 (summary expungement)
requests, and registration fees.
In oppositions, it will now be explicitly permitted to serve any
and all documents on the other party by email.
There are many proposed amendments beyond those summarized
above. This summary merely highlights some of the proposed
amendments that we believe are likely to be the most
The Trade-marks Office is soliciting comments on the proposals
from the Canadian trade-mark profession. Once the Trade-marks
Office has considered those comments and finalized the wording of
the proposed amendments, a number of regulatory hurdles will have
to be completed before any amendments are implemented. Accordingly,
if the amendments are implemented, the implementation will not
likely be within the next year.
We will continue to provide timely updates.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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