Where to Find the Law

Trademark registration is a federal jurisdiction, and is covered by the Trade-marks Act, ( R.S.C., 1985, c. T-13). There is no provincial registration for trademarks. However, the law relating to common-law trademarks is basically tort law, which is provincial. In practice, trademark infringement actions can often be initiated either in federal or provincial court.

Section 8 of the Regulations – CIPO deals only with applicant or registered trademark agent

Section 8: (1) Subject to subsections (2) and (4), correspondence relating to the prosecution of an application for the registration of a trade-mark shall be with the applicant.

(2) Subject to subsection (3) and sections 9 and 11, correspondence referred to in subsection (1) shall be with a trade-mark agent, where the trade-mark agent has been authorized to act on behalf of the applicant in one of the following ways:

(a) the trade-mark agent filed the application with the Registrar as the agent of the applicant;

(b) the trade-mark agent is appointed as the agent of the applicant in the application or an accompanying document; or

(c) the trade-mark agent is appointed as the agent of the applicant after the application is filed.

(3) Where a trade-mark agent referred to in subsection (2) appoints another trade-mark agent as associate or substitute agent, correspondence shall be with the associate or substitute agent.

Section 21 of the Regulations – Becoming a Registered Trademark Agent

Section 21. The Registrar shall, on written request and payment of the fee set out in item 19 of the schedule, enter on a list of trade-mark agents the name of

(a) any resident of Canada who has passed the qualifying examination relating to Canadian trade-mark law and practice, including the preparation and prosecution of applications for registration of trade-marks;

(b) any resident of Canada who is a barrister or solicitor entitled to practise as such in a province, or a notary entitled to practise as such in the Province of Quebec, who has

(i) passed the qualifying examination relating to trade-mark law and practice, or

(ii) worked in the area of trade-mark law, including the preparation and prosecution of applications for registration of trade-marks, for a period of not less than 24 months and who has submitted an affidavit or statutory declaration to that effect to the Registrar;

(c) a resident of any other country who is entitled to practise before the trade-marks office of that country; and

(d) any firm having the name of at least one of its members entered on the list as a trade-mark agent.