Trademarks agent appointment and service rules

Summary#

These are the final rules titled SOR/2021-130 that change the Trademarks Regulations. Published in the Canada Gazette on June 23, 2021, they change who can be appointed to act for trademark applicants and owners, how the Office of the Registrar of Trademarks must be contacted, and how service of documents is handled. The changes take effect when a provision of the new licensing law for patent and trademark professionals comes into force (see below).

What it does#

• Rewrites who counts as a trademark agent and an associate trademark agent, and sets clearer rules for appointing them.
• Requires written communications to be addressed to the Registrar of Trademarks and to include the name of the agent (and the firm name if the whole firm is appointed) or the name of the person sending the communication.
• Changes appointment rules:
  • An applicant, registered owner or other person may appoint one trademark agent or all the trademark agents at the same firm to act for them.
  • A trademark agent (but not an associate agent) can appoint one or all agents at the same firm as an associate trademark agent.
  • Appointments and revocations take effect when the Registrar receives a notice that includes the name and postal address.
• If an entire firm is appointed:
  • New members who are agents are treated as appointed automatically when they join.
  • Agents who leave the firm, or whose licence is suspended/revoked/surrendered, are treated as having their appointment revoked on that day.
  • Written communications sent to the firm are considered sent to all appointed agents at that firm.
• Clarifies that acts by a trademark agent (or by an associate agent appointed by that agent) have the same effect as if done by the client.
• Updates who may represent a person and keeps explicit exceptions that allow self-representation and representation by someone the person authorizes (even if that person is not a registered trademark agent).
• Changes service rules so that, in opposition, objection and certain other proceedings, service must be made on the appointed trademark agent unless parties agree otherwise.
• Repeals some items in the Regulations’ schedule and updates cross-references.
• Transitional rules:
  • On the day these amendments come into force, the appointment of any trademark agent who is not resident in Canada is revoked.
  • A number of existing firm and associate appointments are converted or re‑classified so they fit the new rules.
• Coming into force: the amendments come into force on the same day that paragraph 76(1)(c) of the College of Patent Agents and Trademark Agents Act comes into force, or if these amendments are registered after that day, on the day they are registered.

Who's affected#

• Trademark agents and their firms, including those who act as associates.
• Applicants and registered owners who use agents to handle trademark files.
• People involved in trademark opposition and objection proceedings (because of the service rules).
• Clients who currently use agents who live outside Canada — those appointments are revoked when the rules begin to apply.
• The Registrar of Trademarks, which will receive and rely on the updated appointment and service notices.

If it is unclear who is affected in a specific situation (for example, mixed international teams), the Regulations and the Registrar’s office would be the source for exact details.

Why it matters#

• The rules change who can formally represent you in trademark matters. If your representative lives outside Canada, their appointment will be revoked when these rules come into force. You may need to appoint a Canadian-resident agent or a firm.
• Firms can now be appointed “as a whole,” so official letters sent to the firm count as received by every appointed agent in that firm. That can simplify communication — or create questions about who is responsible in a firm.
• Service rules mean legal notices in disputes are likely to go to the appointed agent, not the client directly. That affects how quickly and through whom you learn about oppositions or objections.
• Overall, the changes align the trademark practice rules with the new licensing body for patent and trademark professionals, and update how the Office of the Registrar handles appointments and communications.