GreatNorthCollective/greatnorth-canada-federal-laws-text huggingface dataset:
Trademarks Regulations — 101
Request for recording 101 (1) A 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: (a) the transferee is a national of or is domiciled in Canada or has a real and effective industrial or commercial establishment in Canada; and (b) the 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 filing (2) The request must be in English or French and be filed by (a) using the online service that is designated by the Registrar as being accepted for that purpose; or (b) completing the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar. Accompanying documents (3) The request must be accompanied by (a) evidence of the transfer; and (b) a 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.
Trademarks Regulations — 102
Transmission to International Bureau 102 The 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.
Trademarks Regulations — 103
Request under Article 3 ter (1) of the Protocol 103 (1) On the registration of a trademark in the International Register on the basis of an application that contains a request made under Article 3 ter (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 3 ter (2) of the Protocol (2) On the recording in the International Register of a request made under Article 3 ter (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 mark (3) An 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.
Trademarks Regulations — 104
Goods or services outside scope of international registration 104 A 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.
Trademarks Regulations — 105
Non-application of sections 33 and 34 of Act 105 (1) Sections 33 and 34 of the Act do not apply in respect of a Protocol application. References to subsection 34(1) of the Act (2) In 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
Trademarks Regulations — 106
Date of international registration 106 (1) The filing date of a Protocol application is (a) if the Protocol application results from a request made under Article 3 ter (1) of the Protocol, the date of international registration of the corresponding international registration; and (b) if the Protocol application results from a request made under Article 3 ter (2) of the Protocol, the date borne by the subsequent designation under Rule 24(6) of the Common Regulations. Exception — priority (2) Despite 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, if (a) the 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; (b) 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; and (c) the 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.
Trademarks Regulations — 107
Recording resulting in deletion 107 (1) If 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, (a) 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; (b) 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; and (c) in 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: (i) 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, (ii) 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, (iii) 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, and (iv) the good or service is described in ordinary commercial terms and in a manner that identifies a specific good or service. Recording resulting in new list (2) In 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, (a) 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; and (b) if 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
Trademarks Regulations — 108
Complete renunciation 108 If, 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.
Trademarks Regulations — 109
Complete cancellation 109 If, 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.
Trademarks Regulations — 110
Partial cancellation 110 If, 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.
Trademarks Regulations — 111
Change of name or address 111 If, 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.
Trademarks Regulations — 112
Effective date of amendment or withdrawal 112 An 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.
Trademarks Regulations — 113
Non-renewal of international registration 113 If 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.
Trademarks Regulations — 114
Deemed amendment to application 114 If 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.
Trademarks Regulations — 115
Amendment to non-advertised application 115 If 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.
Trademarks Regulations — 116
Amendment to advertised application — all goods or services 116 If a Protocol application has been advertised under subsection 37(1) of the Act before the date of notification of a correction of an international registration on which the Protocol application is based and if the Registrar determines that the deemed amendment to the Protocol application is substantive in respect of 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, (a) the application is deemed to never have been advertised; and (b) 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.
Trademarks Regulations — 117
Amendment to advertised application — some goods or services 117 (1) If a Protocol application has been advertised under subsection 37(1) of the Act before the date of notification of a correction of an international registration on which the Protocol application is based and if the Registrar determines that the deemed amendment to the Protocol application is substantive in respect of at least one but not all of the goods or services specified in the amended Protocol application and is not limited to narrowing the scope of the statement of goods or services, then the Registrar must, by notice, invite the applicant to elect one of the following options: (a) that the Protocol application be amended to delete those goods or services; or (b) that the Protocol application be deemed to never have been advertised. Deletion of goods or services (2) If the applicant elects the option referred to in paragraph (1)(a) or does not make an election within two months after the date of the notice, the Protocol application is deemed to be amended to delete those goods or services. Deemed non-advertisement of application (3) If the applicant selects the option referred to in paragraph (1)(b) within two months after the date of the notice (a) the Protocol application is deemed never to have been advertised; and (b) a reference in sections 120 and 129 , paragraph 132 (1)(c) and subparagraph 132 (1)(d)(i) to “date of notification of territorial extension” is to be read as “day on which the International Bureau sent to the Registrar the notification of a correction of an international registration on which the Protocol application is based” in respect of that Protocol application.
Trademarks Regulations — 118
Effective date of amendment 118 An amendment to a Protocol application under section 114 or subsection 117 (2) is deemed to have taken effect on the later of the filing date of the Protocol application and the day on which the error was made that gave rise to the correction of the international registration.
Trademarks Regulations — 119
Statement of confirmation of total provisional refusal 119 If the Registrar treats a Protocol application as abandoned under section 36 of the Act, the Registrar must send a statement of confirmation of total provisional refusal to the International Bureau.
Trademarks Regulations — 120
Notification of provisional refusal 120 The Registrar must not refuse a Protocol application under subsection 37(1) of the Act without first sending to the International Bureau, before the end of 18 months after the date of notification of territorial extension, a notification of provisional refusal stating the Registrar’s objections.
Trademarks Regulations — 121
Statement of confirmation of total provisional refusal 121 If the Registrar refuses a Protocol application under subsection 37(1) of the Act, the Registrar must send a statement of confirmation of total provisional refusal to the International Bureau.
Trademarks Regulations — 122
Non-application of subsections 39(1), (2) and (5) of Act 122 Subsections 39(1), (2) and (5) of the Act do not apply in respect of a Protocol application.
Trademarks Regulations — 123
Filing of request for division 123 (1) The applicant in respect of a Protocol application may limit the original Protocol application to one or more of the goods or services that were within its scope and file with the Registrar for presentation to the International Bureau a request for the division, in respect of Canada, of the international registration on which the original Protocol application is based for any other goods or services that were within the scope of (a) the original Protocol application on its filing date, determined without taking into account subsection 106(2); (b) the original Protocol application on the day on which the request is filed, if the request is filed on or after the day on which the Protocol application is advertised under subsection 37(1) of the Act; and (c) the international registration in respect of Canada on the day on which the request is filed. Manner of filing (2) The request must be in English or French and be filed by (a) using the online service that is designated by the Registrar as being accepted for that purpose; or (b) completing the form issued by the International Bureau and providing it to the Registrar by an electronic means specified by the Registrar. Contents (3) The request must indicate (a) the number of the international registration on which the original Protocol application is based; (b) the name of the holder of that international registration; (c) the name of the goods or services to be set apart, grouped according to the classes of the Nice Classification; and (d) the amount of the fee being paid to the International Bureau and the method of payment, or instructions to debit the required amount to an account opened with the International Bureau, and the name of the person effecting the payment or giving the instructions. Sending of request to International Bureau (4) The Registrar must send to the International Bureau any request that is filed in accordance with subsections (1) to (3). SOR/2019-116, s. 5
Trademarks Regulations — 124
Deemed divisional application 124 (1) If, following receipt of a request under section 123 , the International Bureau notifies the Registrar of the creation of a divisional international registration in respect of Canada, the applicant is deemed to have filed a divisional application for the registration of the same trademark as in the divisional international registration and in respect of the same goods or services that are listed in the divisional international registration in respect of Canada. Division of divisional application (2) The divisional application may itself be divided under subsection (1) and section 123 , in which case those provisions apply as if that divisional application were an original Protocol application.
Trademarks Regulations — 125
Limitation of extension 125 In respect of a Protocol application, the Registrar is not permitted, on application made to the Registrar, to extend, under section 47 of the Act, the two-month period referred to in subsection 38(1) of the Act by more than four months.
Trademarks Regulations — 126
Filing of statement of opposition 126 A statement of opposition under section 38 of the Act in respect of a Protocol application must be in English or French and be filed by using the online service that is designated by the Registrar as being accepted for that purpose.
Trademarks Regulations — 127
Notification of provisional refusal 127 If, in respect of a Protocol application, a statement of opposition is filed, the Registrar must send to the International Bureau a notification of provisional refusal.
Trademarks Regulations — 128
No new ground of opposition 128 If the Registrar sends to the International Bureau a notification of provisional refusal based on an opposition, the statement of opposition may not be amended to add a new ground of opposition.
Trademarks Regulations — 129
Notice of opposition period 129 If, in respect of a Protocol application, it is likely that the opposition period will extend beyond the end of 18 months after the date of notification of territorial extension, the Registrar must so inform the International Bureau.
Trademarks Regulations — 130
Statement of confirmation of total provisional refusal 130 The Registrar must send a statement of confirmation of total provisional refusal in respect of a Protocol application to the International Bureau if (a) the Protocol application is deemed to have been abandoned under subsection 38(11) of the Act; or (b) the Registrar refuses the Protocol application under subsection 38(12) of the Act with respect to all of the goods or services specified in it and either the period for filing an appeal has ended and no appeal has been filed or, if an appeal has been taken, the final judgment has been decided in favour of the opponent.
Trademarks Regulations — 131
Non-application of section 40 of Act 131 Section 40 of the Act does not apply in respect of a Protocol application.
Trademarks Regulations — 132
Obligations of Registrar 132 (1) In respect of a trademark that is the subject of a Protocol application, the Registrar must register the trademark in the name of the applicant, issue a certificate of its registration and send a statement to the International Bureau that protection is granted to the trademark if (a) the Protocol application has not been opposed and the opposition period has ended; (b) the Protocol application has been opposed and the opposition has been decided in favour of the applicant and either the period for filing an appeal has ended and no appeal has been filed or, if an appeal has been taken, the final judgment has been decided in favour of the applicant; (c) 18 months have passed after the date of notification of territorial extension and, within that 18-month period, the Registrar did not inform the International Bureau that it was likely that the opposition period would extend beyond that 18-month period and (i) did not send to the International Bureau a notification of provisional refusal, or (ii) did send to the International Bureau a notification of provisional refusal, but not one based on an opposition, and is not satisfied that any of paragraphs 37(1)(a) to (d) of the Act apply; or (d) the Protocol application has been opposed, the following periods have ended, the Registrar informed the International Bureau, in the period referred to in subparagraph (i), that it was likely that the opposition period would extend beyond that period and the Registrar did not send to the International Bureau, before the end of the period referred to in subparagraph (ii), a notification of provisional refusal based on an opposition: (i) the 18-month period after the date of notification of territorial extension, and (ii) the period that ends at the earlier of the end of the seven-month period after the day on which the opposition period began and the end of the one-month period after the day on which the opposition period ended. Non-advertisement (2) Despite subsection 37(1) of the Act, the Registrar must not cause the Protocol application to be advertised if the trademark was registered under subsection (1) of this section without the Protocol application having been advertised.