INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - CANADA

Proposed amendments to the Trade-marks Regulations

Regulations Amending the Trade-marks Regulations (1996)

Statutory Authority
Trade-marks Act

Sponsoring Department
Department of Industry

REGULATORY IMPACT
ANALYSIS STATEMENT

Description

The main changes included in the proposed amendments reflect the federal government’s commitment to facilitate electronic commerce. As a result of these amendments, trade-mark applicants and their agents will be provided the opportunity of electronically filing trade-mark applications and communicating a number of other documents to the Office of the Registrar. Thus, filing costs for trade-mark applicants will be contained and the Office of the Registrar will further advance its capacity to electronically process and store trade-mark documents.

A first series of amendments to the Trade-marks Regulations (1996), reflecting the main changes, provide clarification on the manner in which documents are submitted to the Registrar of Trade-marks and on when they are considered received by the Office of the Registrar, at the Canadian Intellectual Property Office. They enable electronic commerce by clarifying the rules concerning electronic transmissions of documents, including facsimiles.

The following refinements to the rules on correspondence have been made:

• correspondence addressed to the Registrar may be submitted electronically at such time as the Office of the Registrar acquires the technical ability to accept receipt;

• an application for the registration of a trade-mark may be submitted to the Registrar by facsimile;

• evidence in opposition and other proceedings cannot be submitted to the Registrar by electronic or facsimile transmission;

• electronic and facsimile transmissions may be sent to the Office of the Registrar, 7 days a week, 24 hours a day;

• electronic and facsimile transmissions will be considered received by the Registrar on the date of delivery, if on that day the Office of the Registrar is open for business and if the transmission is received before midnight, local time of the place where the Office of the Registrar is located; otherwise, it will be considered received on the next working day; and

• documents that are physically delivered to the Office of the Registrar or another designated establishment (Priority Post or a regional office), outside business hours, will be considered to be received on the next working day.

Secondly, separate housekeeping amendments are also being made at this time. Where the Regulations refer to a “registration in a country of the Union”, they will be revised to refer to a “registration in or for a country of the Union”. This change ensures consistent wording between the Trade-marks Act and the Trade-marks Regulations (1996). Also, limits to correcting clerical errors are clarified and made subject to conditions specified in the Regulations.

Alternatives

(a) First series of amendments (e.g. electronic commerce)

Alternative 1: Status quo

This alternative was rejected as it would not have allowed electronic transmissions nor addressed the confusion created by the lack of clarity in specified areas in the present regulations, in particular with respect to the dates, which can be critical in the registration process. The status quo would not have facilitated electronic commerce. Also, changes to administrative procedures were not considered adequate, as they would not have been sufficient and could not replace amendments to regulations, on which they need to be based.

Alternative 2: Fundamental amendments

There was no immediate need identified internally or by stake-holders for a fundamental review of the trade-marks legislation or regulations.

Alternative 3: Modest amendments to the Trade-marks Regulations (1996)

This alternative was adopted as the only effective means of allowing for electronic correspondence, as well as clarifying date requirements within the regulations themselves. Based on legislation adopted by Parliament, which in this case is the Trade-marks Act, the proposed regulations provide modest but effective means to help move forward the electronic commerce agenda.

(b) Housekeeping amendments

The housekeeping amendments respond to day-to-day operational requirements and assist in ensuring compatibility between legislation and regulations, as well as modestly help improve the trade-mark registration system. The status quo would have been counter-productive and fundamental amendments, in their essence, were not relevant at this time.

Benefits and Costs

With respect to the first series of changes, no additional fee is charged for trade-mark applicants wishing to take advantage of electronic transmissions, which will allow for easier access to the trade-mark system by the public.

Trade-mark applicants not wishing to submit documents electronically will continue to be able to file all documents in paper form.

The amendments, including the housekeeping amendments, do not affect the fee structure for trade-mark applicants.

There are a number of benefits resulting from the cumulative effect of both sets of proposed changes to the Trade-marks Regulations (1996). The amendments, including the housekeeping amendments, will assist government in offering more effective services by providing applicants with a wider variety of tools to communicate with government, clarify procedures for trade-mark users and government officials, and contribute to increasing electronic commerce in government and with stakeholders in the area of intellectual property.

Consultation

(a) First series of amendments (e.g. electronic commerce)

Comments received as a result of prepublication on November 1, 1997, suggested that a further amendment was required to avoid confusion with respect to when an electronically delivered document would be considered received, in particular when the Office of the Registrar was closed that day. This second version ensures that electronically delivered documents will only be con-sidered received when the Office of the Registrar is open on the day they are delivered; otherwise, they will be considered received on the following day the Office is open for business.

Consultations took place with: the Patent and Trademark Institute of Canada (PTIC) and its Trade-mark Legislation Committee; the Trade-marks Joint Liaison Committee; the Canadian Group of the International Federation of Industrial Property Attorneys, the Canadian Group of the International Association for the Protection of Industrial Property — known as the IAPIP; and the Canadian Bar Association (CBA). These are the organizations representing the users of the trade-marks system, who are pleased with and support the changes, in that these proposed amendments would make communications with the Registrar easier and more flexible.

(b) Housekeeping amendments

The housekeeping amendments were shared with the stake-holders and did not generate any comments.

A copy of the proposed amendments to the Trade-marks Regulations (1996) will be available on the Internet from the Canadian Intellectual Property Office’s site, as soon as they are pre-published in the Canada Gazette, Part I. The Internet address is: http://cipo.gc.ca.

Compliance and Enforcement

All documents submitted in the context of trade-mark registration, including those filed electronically, will be subject to the changes resulting from the proposed amendments, including the housekeeping amendments. For example, the date assigned by the Office of the Registrar as the date a document is received will be determined in a transparent manner, as prescribed by the proposed Regulations.

Contact

Doug Kuntze, Director, Trade-marks Branch, Canadian Intellectual Property Office, Place du Portage I, Commercial Level II, 50 Victoria Street, Hull, Quebec K1A 0C9, (819) 997-2423
(Telephone), (819) 997-1421 (Facsimile), kuntze.doug@ic.gc.ca (Electronic mail).

PROPOSED REGULATORY TEXT

Notice is hereby given that the Governor in Council, pursuant to section 65^a of the Trade-marks Act, proposes to make the annexed Regulations Amending the Trade-marks Regulations (1996).

Any interested person may make representations concerning the proposed Regulations within 30 days after the date of publication of this notice. All such representations must be addressed to Doug Kuntze, Director, Trade-marks Branch, Canadian Intellectual Property Office, Place du Portage I, 50 Victoria Street, Hull, Quebec K1A 0C9, and cite the Canada Gazette, Part I, and the date of publication of this notice.

March 25, 1999

MARC O’SULLIVAN
Assistant Clerk of the Privy Council

REGULATIONS AMENDING THE TRADE-MARKS REGULATIONS (1996)

AMENDMENTS

1. Section 3 of the Trade-marks Regulations (1996)¹ is replaced by the following:

3. (1) Correspondence intended for the Registrar or the Office of the Registrar of Trade-marks shall be addressed to the “Registrar of Trade-marks”.

(2) Correspondence addressed to the Registrar may be physically delivered to the Office of the Registrar of Trade-marks during ordinary business hours of the Office and shall be considered
to be received by the Registrar on the day of the delivery.

(3) For the purposes of subsection (2), where correspondence addressed to the Registrar is physically delivered to the Office of the Registrar of Trade-marks outside of its ordinary business hours, it shall be considered to have been delivered to the Office during ordinary business hours on the day when the Office is next open for business.

(4) Correspondence addressed to the Registrar may be physically delivered to an establishment that is designated by the Registrar in the Journal as an establishment to which correspondence
to the Registrar may be delivered, during ordinary business hours of that establishment, and

1. where the delivery is made to the establishment on a day that the Office of the Registrar of Trade-marks is open for business, the correspondence shall be considered to be received by the Registrar on that day; and

2. where the delivery is made to the establishment on a day that the Office of the Registrar of Trade-marks is closed for business, the correspondence shall be considered to be received by the Registrar on the day when the Office is next open for business.

(5) For the purposes of subsection (4), where correspondence addressed to the Registrar is physically delivered to an establishment outside of ordinary business hours of the establishment, it shall be considered to have been delivered to that establishment during ordinary business hours on the day when the establishment is next open for business.

(6) Correspondence addressed to the Registrar may be sent at any time by electronic or other means of transmission specified in the Journal.

(7) For the purposes of subsection (6), where, according to the local time of the place where the Office of the Registrar of Trade-marks is located, the correspondence is delivered on a day when the Office is open for business, it shall be considered to be received by the Registrar on that day.

(8) For the purposes of subsection (6), where, according to the local time of the place where the Office of the Registrar of Trade-marks is located, the correspondence is delivered on a day when the Office is closed for business, it shall be considered to be received by the Registrar on the day when the Office is next open for business.

(9) Subsection (6) does not apply to the following:

1. evidence submitted pursuant to subsection 11.13(5) of the Act;

2. evidence submitted pursuant to subsection 38(7) of the Act; and

3. an affidavit or a statutory declaration furnished pursuant to subsection 45(1) of the Act.

2. Clause 25(a)(iii)(B) of the Regulations is replaced by the following:

(B) the name of a country in which the trade-mark has been used and information respecting the registration or application for registration in or for a country of the Union on which the right to registration is based;

3. Section 31 of the Regulations is amended by striking out the word “or” at the end of paragraph (d), by adding the word “or” at the end of paragraph (e) and by adding the following after paragraph (e):

(f) to an earlier date, the date of filing of an application for the registration of a trade-mark that has been set out in a declaration filed in accordance with paragraph 34(1)(a) of the Act.

4. (1) Paragraph 32(c) of the French version of the Regulations is replaced by the following:

c) à modifier la demande qui allègue que la marque de commerce a été employée ou révélée en une demande alléguant qu’il s’agit d’une marque de commerce projetée;

(2) Paragraph 32(d) of the Regulations is replaced by the following:

(d) the application from one that does not allege that the trade-mark has been used and registered in or for a country of the Union to one that does so allege;

(3) Section 32 of the Regulations is amended by adding the following after paragraph (e):

(f) the date of filing of an application for the registration of a trade-mark that has been set out in a declaration filed in accordance with paragraph 34(1)(a) of the Act or that has been amended in accordance with section 30 of these Regulations; or

(g) the name of a country of the Union in or for which an application for the registration of a trade-mark was filed, and that has been set out in a declaration filed in accordance with paragraph 34(1)(a) of the Act or amended in accordance with section 30 of these Regulations.
(3) l’article 32 du même règlement est modifié par adjonction,

5. (1) The portion of subsection 33(1) of the Regulations before paragraph (a) is replaced by the following:

33. (1) Subject to subsection (1.1), the Registrar may correct a clerical error in any instrument of record where

(2) Section 33 of the Regulations is amended by adding the following after subsection (1):

(1.1) The Registrar shall not correct a clerical error that was not committed by the Registrar if doing so would result in an amendment contrary to section 31 or 32.

6. Paragraph 52(g) of the Regulations is replaced by the following:

(g) the number and date of any registration abroad on which the registration is based and the country in or for which the registration was made; and

COMING INTO FORCE

7. These Regulations come into force on the day on which they are registered.

[14-1-o]

^a  S.C., 1994, c.47, s. 201

¹  SOR/96-195