Regulations amending the Trademarks Regulations: SOR/2021-130
Canada Gazette, Part II, Volume 155, Number 13
Registration
SOR/2021-130 June 10, 2021
TRADEMARKS ACT
P.C. 2021-527 June 10, 2021
His Excellency the Administrator of the Government of Canada in Council, on the recommendation of the Minister of Industry, pursuant to section 65 footnote a of the Trademarks Act footnote b, makes the annexed Regulations Amending the Trademarks Regulations.
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
- (a) in 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; and
- (b) in any other case, the name of the person submitting the communication.
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 an appointment 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 an appointment 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 If all the trademark agents at the same firm have been appointed, the following rules apply:
- (a) 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;
- (b) 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;
- (c) 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; and
- (d) the 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.
Written communication considered sent
23.2 If 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.
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:
- (b) no one other than the trademark agent, or an associate trademark agent appointed by that trademark agent, is permitted to represent that person.
(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
(3) Subsection 25(4) of the Regulations is replaced by the following:
Exceptions
(4) With 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.
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 Trademarks Regulations as they read immediately before the day on which these Regulations come into force. (ancien règlement)
new Regulationsmeans the Trademarks 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,
- (a) the appointment of any trademark agent who is not resident in Canada is revoked;
- (b) 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;
- (c) 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; and
- (d) all 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.
Coming into Force
11 These Regulations come into force on the day on which paragraph 76(1)(c) of the College of Patent Agents and Trademark Agents Act, section 247 of chapter 27 of the Statutes of Canada, 2018, comes into force, but if they are registered after that day, they come into force on the day on which they are registered.
N.B. The Regulatory Impact Analysis Statement for these Regulations appears following SOR/2021-129, College of Patent Agents and Trademark Agents Regulations.