Further Amendments to the Trademark Regulations Published in Canada Gazette

On May 15, 2019, the Government of Canada published Regulations Amending the Trademarks Regulations (Trademark Regulations) in the Canada Gazette, Part II.  The amendments remove complex provisions previously added to eliminate potential misuse of the divisional application process that could have allowed applicants to circumvent opposition.

As part of the amendments to the Trademarks Act in 2014 and 2015, divisional applications were introduced.  The divisional application process allows an applicant to divide an original application to remove any goods and services and introduce them in a separate divisional application.  The wording of the amended Trademarks Act allowed goods or services that were deleted from an original application after advertisement to be reintroduced in a divisional application any time prior to registration, thereby circumventing opposition. 

To address this potential misuse, complex provisions were added to the Trademarks Regulations when they were amended in November 2018 (previously reported in the E-TIPS® Newsletter here).  During public consultation, stakeholders expressed concern that these sections were overly complex and costly.

Thus, on December 13, 2018, as part of the Budget Implementation Act, 2018, No. 2 (Bill C-86), amendments were made to the Trademarks Act to eliminate the potential misuse of the divisional application process.  The Trademarks Regulations have now been amended to align with the Bill C-86 Trademark Acts amendments and remove these complex provisions.

The amendments to the Trademarks Act and Regulations will come into force on June 17, 2019.  For more information on the significant changes coming into force in just a few weeks, please see the Trademark Update recently published by DWW’s Trademark group.

Summary By: Michelle Noonan