CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
4.7 Revocation, Change, Amendment or Correction of an Application Certain basic amendments to a trade mark application will usually be accepted. However, an amendment to substantially change the mark or broaden the scope of the goods and services listed in the application will not be accepted. 4.8 Dividing a Trade Mark Application A trade mark application can be divided if it is still active. An applicant may consider dividing their application if an objection or opposition is raised against the original application with respect to only some of the listed goods and services. The process for filing a divisional application is similar to the process for filing an original appli - cation. The divisional application should clearly state that it is a divisional application and ref - erence the application number of the original application. 4.9 Incorrect Information in an Application Incorrect information in a trade mark application can result in the refusal of an application before registration or the cancellation or expungement of a registration. It may be possible to correct incorrect infor - mation in a trade mark application by filing an amendment to the application. However, there are certain limitations on what information can be amended in an application. See 4.7 Revoca- tion, Change, Amendment or Correction of an Application . 4.10 Refusal of Registration A trade mark application can be refused if it includes any of the prohibitions to registration
or does not contain the required information, or if the mark is not inherently distinctive. Before an application is refused, the applicant will be notified that the examiner has raised an objection and will be given the opportunity to either correct the deficiencies in the application or argue why the objection should be withdrawn. The standard for overcoming an objection will depend on the nature of the objection. 4.11 The Madrid System Canada participates in the Madrid system. The applicant or registrant of a trade mark in Cana - da may apply for international registration if the applicant or registrant is a national of Canada, domiciled in Canada, or has a real and effective industrial or commercial establishment in Can - ada. Part 2 of the Trademarks Regulations sets out the full procedural requirements for applying for an international registration under the Madrid system. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Trade Mark A party may file an opposition to a trade mark application after the application has been adver - tised in the Trademarks Journal. A statement of opposition must be filed within two months of the advertisement date. However, within this two-month period, a party can request a two- month extension of time. A party can also request a seven-month “cooling- off” period to facilitate settlement discussions or mediation as long as both parties consent. That can occur at any stage of the opposition, up to
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