Canada Gazette, Part I, Volume 155, Number 11: Regulations amending the Trademarks Regulations

March 13, 2021

Statutory authority

Trademarks Act

Sponsoring department

Department of Industry

REGULATORY IMPACT ANALYSIS STATEMENT

For the Regulatory Impact Analysis Statement, see the College of Patent Agents and Trademark Agents Regulations.

PROPOSED REGULATORY TEXT

Notice is given that the Administrator in Council, pursuant to section 65 footnote a of the Trademarks Act footnote b, proposes to make the annexed Regulations Amending the Trademarks Regulations.

Interested persons may make representations concerning the proposed Regulations within 30 days after the date of publication of this notice. All such representations must cite the Canada Gazette, Part I, and the date of publication of this notice, and be addressed to Mesmin Pierre, Director General, Trademarks and Industrial Designs Branch, Canadian Intellectual Property Office, Innovation, Science and Economic Development Canada, 50 Victoria Street, Room C236-10, Gatineau, Quebec K1A 0C9 (tel.: 819‑994‑4600; email: ic.cipo-consultations-opic.ic@canada.ca).

Ottawa, February 25, 2021

Julie Adair
Assistant Clerk of the Privy Council

Regulations amending the Trademarks Regulations

Amendments

1 The definitions associate trademark agent and trademark agent in section 1 of the Trademarks Regulations footnote 1 are replaced by the following:

associate trademark agent
means a trademark agent who is appointed by another trademark agent under subsection 22(2). (agent de marques de commerce associé)
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)

2 Section 3 of the Regulations is replaced by the following:

Written communications to Registrar

3 Written communications intended for the Registrar must be addressed to the "Registrar of Trademarks" and include

3 The heading "List of Trademarks Agents" before section 16 and sections 16 to 24 of the Regulations are replaced by the following:

Power to appoint trademark agent

22 (1) An 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 agent

(2) A 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.

Appointment — one trademark agent

23 (1) The appointment of one trademark agent is effective on the day on which the Registrar receives a notice that includes the name and postal address of the trademark agent.

Appointment — all trademark agents

(2) The appointment of all the trademark agents at the same firm is effective on the day on which the Registrar receives a notice that includes the name and postal address of the firm.

Revocation

(3) The 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.

Trademark agent — member of firm

23.1 (1) If all the trademark agents at the same firm have been appointed, the following rules apply:

Trademark agent deemed designated

(2) If no trademark agent has been designated under paragraph (1)(a), the trademark agent who submitted the notice under subsection 23(2), or, if no submitting trademark agent was named, the trademark agent whose name appears first on the notice, is deemed to be designated as responsible for receiving communications.

Written communication considered sent

23.2 (1) Any written communication sent by the Registrar is considered to have been sent to all of the trademark agents at the same firm in the following circumstances:

Written communication considered not sent

(2) A written communication sent by the Registrar to a trademark agent other than a trademark agent who is responsible for receiving communications is considered not to have been sent.

Exceptions

(3) Subsection (2) does not apply in respect of communications in respect of a proceeding under section 11.13, 38 or 45 of the Act.

Acts done by or in relation to trademark agent

24 (1) In 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 agent

(2) In 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.

4 (1) Paragraph 25(2)(b) of the Regulations is replaced by the following:

(2) The portion of subsection 25(3) of the English version of the Regulations before paragraph (a) is replaced by the following:

Exceptions

(3) A person may represent themselves for the purpose of

5 The portion of subsection 46(2) of the Regulations before paragraph (a) is replaced by the following:

Service on trademark agent

(2) If a party to be served appoints a trademark agent in respect of an opposition proceeding,

6 Subsection 71(2) of the Regulations is replaced by the following:

Service on trademark agent

(2) Despite 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.

7 The portion of subsection 81(2) of the Regulations before paragraph (a) is replaced by the following:

Service on trademark agent

(2) If a party to be served appoints a trademark agent in respect of an objection proceeding,

8 Items 2 to 5 of the schedule to the Regulations are repealed.

9 The references that follow the heading "Schedule" in the schedule to the Regulations are replaced by the following:

(Sections 14, 26, 32 and 36, paragraph 40(2)d), sections 42, 60, 62, 64, 67, 75 and 78, subsection 94(1), section 95, subparagraph 149(d)(ii), paragraph 153(a) and section 160)

Transitional Provisions

10 (1) The following definitions apply in this section.

former Regulations
means the Trademark Regulations as they read immediately before the day on which these Regulations come into force. (ancien règlement)
new Regulations
means the Trademark Regulations as they read on the day on which these Regulations come into force. (nouveau règlement)

(2) On the day on which these Regulations come into force,

Coming into Force

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