Last week, further amendments to the Trademarks Regulations were published in Canada Gazette Part 2. These amendments will ensure consistency between the Trademarks Act as amended by the government’s 2018 Budget Implementation Act and the Trademarks Regulations. The amendments remove the complex provisions that were originally introduced to the Regulations to prevent potential misuse of the divisional application process during opposition proceedings.
Instead, the Act was amended last year to clarify the requirements relating to the filing of divisional applications, so that if an original application has been advertised, an applicant may only include goods and services in a divisional application that are within the scope of the original application on the day on which the divisional application is filed. This prevents applicants from effectively avoiding the effect of opposition proceedings by filing divisional applications to pursue goods or services that have been previously dropped from an application after advertisement in an effort to settle an opposition proceeding. Because the Act has been amended, the Regulations will now be simplified to remove the previously proposed regulations aimed at preventing such behavior, which are unnecessary in view of the amendments to the Act.