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Trade Marks Regulations CRC No amendments since 1994-01-26

Trade Marks Regulations
C.R.C., c.1559 No amendments since1994/01/26
TRADE-MARKS ACT
Trade Marks Regulations (C.R.C., c.1559)
REGULATIONS MADE UNDER THE TRADE-MARKS ACT
SHORT TITLE
1.These Regulations may be cited as theTrade Marks Regulations.
INTERPRETATION
2.In these Regulations,
"Act" means theTrade Marks Act;
"applicant" means the original applicant or the transferee last recognized undersection58;
"Journal" means theTrade Marks Journalpublished in accordance withsection17;
"Office" means the Office of the Registrar of Trade-marks; (Bureau)
"trade mark agent" means a person whose name is on the register of trade mark agents referred to insection21. SOR/94-31, s.1.
CORRESPONDENCE
3. –
(1) All communications intended for the Office shall be addressed to the Registrar.
(2) Correspondence addressed to the Registrar shall be considered to be received by the Office on the day that it is delivered to one of the following establishments, where the delivery is made during the ordinary business hours of that establishment:
(a) the Office; or
(b) an establishment that is designated by the Registrar as an establishment to which correspondence addressed to the Registrar may be delivered. SOR/94-31, s.2.
4.
(1) Applications shall be prosecuted by correspondence and, unless requested by the Registrar, the personal attendance of an applicant at the Office is not necessary.
(2) No regard shall be had to any oral representation or statement not confirmed by letter. SOR/94-31, s.5.
5.Each communication addressed to the Registrar shall deal with only one subject.
6.Every address required to be furnished shall be a complete post office address and shall include a street name and number where possible.
7.
(1) Correspondence relating to an application for the registration of a trade mark shall include the name of the applicant and the number of the application.
(2) Correspondence relating to a registered trade mark shall identify it by the number of its registration.
8.
(1) Correspondence on the subject of an application for the registration of a trade-mark shall be conducted with the applicant, unless a trade-mark agent
(a) signed the original application as the applicant’s agent;
(b) transmitted the original application to the Office as the applicants agent;
(c) is appointed as the applicants agent in the original application or an accompanying document; or
(d) is subsequently appointed as the applicants agent, in which case correspondence shall, subject tosubsection(2) andsection11, be conducted with such trade mark agent as long as the authority continues.
(2) If the trade mark agent described insubsection(1) appoints another trade mark agent as associate or substitute agent, correspondence shall then be conducted with such other trade mark agent. SOR/93-478, s.1; SOR/94-31, s.5.
9.Every trade mark agent not resident in Canada shall, upon becoming the agent of an applicant in respect of an application, appoint a trade mark agent resident in Canada as his associate agent, and if he fails to do so within a time specified by the Registrar in a notice to him, the Registrar shall conduct further correspondence with the applicant.
10.The provisions ofsections8 and9 applymutatis mutandisto oppositions.
11.The appointment of a trade mark agent need not be in writing but the Registrar may require a trade mark agent to file within a specified time a written authorization from the person or firm whom he claims to represent and, upon his failure to file the authorization within the specified time, may give notice accordingly to such person or firm, and shall, subject tosection8, conduct further correspondence with the person or firm so notified until a written authorization is filed.
GENERAL
12.[Revoked, SOR/83-458, s.1]
13.Fees shall be paid to the Registrar in accordance with the tariff contained inScheduleI, and remittances therefor shall be made payable to the Receiver General.
14.Except as otherwise provided herein, all documents filed in the Office shall be typewritten on one side only of strong white paper of a size not exceeding eight inches by 13inches with left hand and upper margins of at least one inch. SOR/94-31, s.5.
15.The forms listed inScheduleII and the instructions for their completion shall be followed in all cases where they are applicable.
16.There shall be a seal of the Office which the Registrar shall impress on certificates issued by him. SOR/94-31, s.5.
JOURNAL
17.The Registrar shall cause to be published weekly aTrade Marks Journalcontaining
(a) every advertisement made pursuant to subsection37(1) of the Act;
(b) particulars of every registration of a trade mark made or extended under the Act;
(c) [Revoked, SOR/93-478, s.2]
(d) particulars of his rulings required to be published under section64 of the Act;
(e) every public notice by him under section9 of the Act; and
(f) such other notices and material as he may deem advisable for the efficient administration of the Act and these Regulations. SOR/90-699, s.1; SOR/93-478, s.2.
18.Every advertisement of an application pursuant to subsection37(1) of the Act shall include
(a) the trade mark claimed by setting out the word or words if not depicted in a special form, or, otherwise, by reproducing the drawing submitted in support of the application, together in either case with a note of any disclaimer;
(b) the name and address of the applicant and of any transferee or transferees of the applicant and the name and address of the representative for service, if any, of the applicant or last transferee;
(c) the date of the actual filing of the application and the date of priority, if any, claimed under section34 of the Act;
(d) a summary of the information furnished by the applicant pursuant to paragraphs30(a), (b), (c), (d) and (g) of the Act, and if the application is for a proposed trade mark or a certification mark or a distinguishing guise, a note to that effect;
(e) if the benefit of either subsection12(2) or of section14 of the Act has been claimed, a note to that effect; and
(f) such other information as the Registrar may deem fit. SOR/90-699, s.1.
19.The particulars published in the Journal of every registration of a trade mark made or extended under the Act shall include
(a) the number and date of the registration;
(b) the wares and services;
(c) the name and address of the registrant;
(d) the application number; and
(e) the issue number and date of the issue of the Journal in which the application was advertised.
20.[Revoked, SOR/93-478, s.3]
TRADE MARK AGENTS
21.The Registrar shall, upon written request, enter on a register of trade mark agents the name of
(a) any person resident in Canada who establishes to the satisfaction of the Registrar that he is of good character and was engaged in the filing and prosecution of applications for registration of trade marks in Canada as agent before May6,1954 and who applies to have his name entered on the register before July1,1955;
(b) any person who satisfies the Registrar that he is a barrister, solicitor or advocate entitled to practise as such in any province of Canada, or is a notary entitled to practise his profession under the laws of the Province of Quebec;
(c) any person resident in Canada who
(i) has been employed for two years in the preparation and prosecution of trade mark applications under the personal supervision and direction of a trade mark agent or of a person subsequently registered as such underparagraph(a),
(ii) satisfies the Registrar that he is of good character, and
(iii) passes the prescribed qualifying examination relating to trade mark law and practice including the preparation and prosecution of applications for registration of trade marks;
(d) any person resident in any part of the Commonwealth other than Canada who satisfies the Registrar that he is registered with and in good standing before the trade marks office of his country of residence;
(e) any person resident in the United States who satisfies the Registrar that he is entitled to recognition as an attorney or agent in trade mark matters before the United States Patent Office; and
(f) any firm of which the name of at least one partner is entered on the register. SOR/94-31, s.6.
22.
(1) Any person shall be recognized as a candidate for the qualifying examination when he has served the prescribed period of employment less six months.
(2) Any person who wishes to be a candidate for the qualifying examination shall submit to the Registrar an affidavit or statutory declaration by each trade mark agent under whose direction and supervision he was employed during the required period setting out fully the nature of the work done by him from time to time during such employment.
23.
(1) The qualifying examination referred to insection22 shall be conducted by an examining board composed of the Registrar, a second member nominated from among trade mark agents by the Council of the Patent and Trade Mark Institute of Canada and approved by the Registrar, and a third member chosen by agreement of the said two members or, in the absence of such agreement, named by the Deputy Minister of Consumer and Corporate Affairs, and the affirmative vote of two members of the board shall be necessary to pass a candidate.
(2) The third member of the examining board shall serve for a term of three years and the second member for a term of two years.
(3) If any member of the examining board, other than the Registrar, is unable to act, an alternate member shall be promptly appointed in the same manner as the member was himself appointed, and if the Registrar is unable to act he shall appoint an alternate for himself.
24.
(1) If on or before July1st in any year at least one candidate has notified the Registrar of his desire to take a qualifying examination and has paid the examination fee, such an examination shall be held during the month of October next following.
(2) If a qualifying examination is to be held, the Registrar shall give notice in the first three issues of the Journal after July20 of the date fixed for the holding of such examination, and an examination of which such notice has been given may be taken by any candidate who, not less than one month before the date fixed for the holding thereof, notifies the Registrar of his desire to take the examination and pays the examination fee.
(3) The Registrar shall designate the place or places in Canada where the examination will be held, and shall notify the candidates accordingly by registered letter despatched not less than two weeks before the date fixed for the holding of the examination.
25.
(1) Between January1st and April1st in every year
(a) every person whose name appears on the register as a resident of Canada shall pay the annual registration fee;
(b) every person not resident in Canada whose name is entered on the register by virtue of his being registered before the trade marks office of his country of residence shall file a statement signed by him giving his country of residence and stating whether he is still registered with and in good standing before the trade marks office of such country; and
(c) every firm the name of which is entered on the register shall file a statement, signed by a partner thereof whose own name is on the register, setting out all the partners of the firm whose names appear on the register.
(2) If any such person or firm fails to comply withsubsection(1), the Registrar shall send such person or firm a first notice by mail requiring that, within two months from its date, the appropriate action required bysubsection(1) be taken and the prescribed fee for such notice be paid.
(3) If any such person or firm fails to comply with the first notice, the Registrar shall send such person or firm a second notice by mail stating that, unless the required action is taken and the notice fee is paid within one month from the date of the second notice, the name of such person or firm will be removed from the register, and the Registrar shall remove the name of such person or firm from the register unless the required action is taken and the notice fee is paid by such person or firm within such time.
(4) The name of any person or firm which has been removed from the register in accordance withsubsection(3) may be reinstated thereon without compliance with the requirements ofsection21 on petition presented to the Registrar within one year after the date on which it was removed and on payment of the prescribed reinstatement fee, if the petitioner satisfies the Registrar that the failure to take the action required bysubsection(1) and to pay the notice fee provided insubsection(2) was not reasonably avoidable. SOR/78-674, s.1; SOR/94-31, s.6.
26.
(1) No person is entitled to have his name remain on the register unless he continues to have the qualifications, including that of residence, by virtue of which his name was entered on the register.
(2) No firm is entitled to have its name remain on the register unless the name of at least one person who is a partner in such firm is on the register.
APPLICATION FOR REGISTRATION
27.A separate application shall be filed for the registration of each trade mark, but a single application is sufficient if the trade mark is used, made known or proposed to be used in association with both wares and services.
28.The date on which the Registrar has received, in respect of a trade mark, at least
(a) an application executed by the applicant or a trade mark agent or another person on the applicants behalf and containing the following information:
(i) the wares or services in association with which the trade mark has been or is proposed to be used,
and, except in the case of a proposed trade mark,
(ii) the date of first use or making known of the trade mark in Canada, or
(iii) the name of a country in which the trade mark has been used and information as to a registration or application for registration in a specified country of the Union on which the right to registration is based,
(b) the application fee, and
(c) if the trade mark is other than a word or words not depicted in a special form, either a drawing or a specimen of the trade mark,
is, subject to section34 of the Act, the date of filing of an application for registration of such trade mark, and the Registrar shall forthwith enter the filing date and shall number and index the application. SOR/90-699, s.1.
29.No request for registration of a trade mark shall be open to public inspection before it has been numbered and indexed.
30.
(1) A complete application for registration of a trade mark consists of
(a) a completed application form executed by the applicant or a trade mark agent or another person on the applicants behalf;
(b) a written authorization from the applicant if the application is signed by a person other than the applicant or a trade mark agent;
(c) the application fee; and
(d) if the trade mark is other than a word or words not depicted in a special form,
(i) a drawing of the trade mark as prescribed bysection32, in quadruplicate, and
(ii) three specimens of the trade mark as prescribed bysection33.
(2) In the case of a proposed trade mark, the specimens required bysubparagraph(1)(d)(ii) shall be filed with the declaration of the commencement of use of the trade mark required by subsection40(2) of the Act. SOR/90-699, s.1.
31.The provisions ofsection28, exceptparagraph(c), and ofsection30, exceptparagraph(d), apply to an application to extend the statement of wares or services in respect of which a trade mark is registered.
32.
(1) The drawing of a trade mark required bysection30 need not be in pen and ink but shall be in black and white on a sheet of a size 23/4inches by 23/4inches.
(2) The Registrar may by notice require an applicant to file a new drawing in any case in which, in the opinion of the Registrar, the drawing on file is not suitable for reproduction in the Journal.
(3) If colour is claimed as a feature of the trade mark, the colour of the mark or of its elements shall be described, and if in any case such description is not clear the Registrar may by notice require the applicant to file a drawing lined for colour in accordance with the following colour chart:
View1
33.
(1) The specimens required bysection30 shall be actual labels, containers or displays, showing the trade mark as used, of paper or other material acceptable to the Registrar and arranged flat to his satisfaction in a size not exceeding eight inches by 13inches.
(2) If actual labels, containers or displays do not comply withsubsection(1), the specimens shall be photographs or other reproductions acceptable to the Registrar of actual wares, labels, containers or displays showing the trade mark as used.
(3) If specimens complying withsubsection(1) or(2) cannot, from the nature of the case, be furnished, appropriate specimens as designated by the Registrar shall be filed.
34.The Registrar may require an applicant for registration of a trade mark to furnish him, for indexing purposes, with a description of the trade mark and a translation into English or French of any words in any other language appearing in the trade mark.
AMENDMENT OF APPLICATIONS FOR REGISTRATION
35.Except as provided insections36 and37, an application may be amended, either before or after advertisement.
36.An application for the registration of a trade mark may not be amended at any time
(a) to change the identity of the applicant, except after recognition of a transfer by the Registrar;
(b) to change the trade mark except in respects that do not alter its distinctive character or affect its identity;
(c) to change a date of first use or making known in Canada of the trade mark to an earlier date, except on evidence satisfactory to the Registrar that the change is justified by the facts;
(d) to change the application from one not alleging use or making known the trade mark in Canada before the filing of the application to one alleging such use or making known; or
(e) to extend the statement of wares or services.
37.An application for the registration of a trade mark may not be amended after advertisement
(a) to change the trade mark; or
(b) to change a date of first use or making known in Canada of the trade mark.
38.The Registrar may, by certificate, correct any error in any instrument of record which he is satisfied is a clerical error.
ADVERTISEMENT OF APPLICATIONS FOR REGISTRATION
39.
(1) Where the Registrar is not satisfied that an application should be refused under subsection37(1) of the Act, he shall advertise the application in the Journal.
(2) Where, pursuant tosubsection(1), the Registrar advertises an application for registration of a trade mark that was filed prior to November1,1978, a fee of $25 shall be paid to the Registrar. SOR/78-674, s.2; SOR/78-803, s.1; SOR/90-699, s.1.
OPPOSITION
40.Every statement of opposition shall be filed with the Registrar in duplicate.
41.Within one month after the date on which the Registrar has forwarded to the applicant a copy of a statement of opposition pursuant to subsection38(5) of the Act, the applicant may file a counter statement with the Registrar and, if he does, shall serve a copy upon the opponent. SOR/90-699, s.1.
42.No amendment to a statement of opposition or counter statement shall be allowed except with leave of the Registrar upon such terms as he may think fit.
43.Within one month after the service of the counter statement, the opponent shall file with the Registrar such evidence by way of affidavit or statutory declaration as he may desire to adduce in support of his opposition or a statement that he desires to adduce no evidence, and shall serve upon the applicant a copy of such evidence or statement, as the case may be. SOR/94-31, s.7(F).
44.If the opponent fails to file and serve the evidence or statement provided for insection43, he shall be deemed to have abandoned his opposition, but if he does file and serve such evidence or statement, then within one month after such service, the applicant shall file with the Registrar such evidence by way of affidavit or statutory declaration as he desires to adduce in support of his application or a statement that he desires to adduce no evidence, and shall serve upon the opponent a copy of such evidence or statement, as the case may be. SOR/94-31, s.7(F).
45.Within one month after the service upon the opponent of the applicants evidence referred to insection44, the opponent may file with the Registrar evidence, by way of affidavit or statutory declaration, strictly confined to matter in reply, and shall serve a copy thereof upon the applicant. SOR/94-31, s.7(F).
46.
(1) No further evidence shall be adduced by any party except with leave of the Registrar upon such terms as he may think fit.
(2) At any time before the Registrar gives a notice in accordance withsubsection48(1), the Registrar may, on the application of any party and on such terms as the Registrar may direct, order the cross-examination under oath of any affiant or declarant on an affidavit or declaration which has been filed with the Registrar.
(3) Any cross-examination ordered undersubsection(2) shall be held before a person agreed upon by the parties or, in the absence of agreement, designated as examiner by the Registrar.
(4) A transcript of the cross-examination shall be filed with the Registrar by the party carrying the order within the time fixed by the order.
(5) If an affiant or declarant fails to attend for cross-examination before the examiner, his affidavit or declaration which is the subject of the order made undersubsection(2) shall be deemed not to be part of the evidence. SOR/94-31, s.3.
47.Every exhibit to an affidavit or declaration filed in an opposition shall be filed with the affidavit or declaration and be open to inspection at the Office, and a copy, photograph or sample of such exhibit shall be sent to the other party at his request and expense unless the Registrar otherwise directs. SOR/94-31, s.5.
48.
(1) Not less than 14days after completion of the evidence, the Registrar shall give the parties written notice that they may, within one month after the date of that notice, file written arguments with the Registrar.
(2) No written argument shall be filed after the expiration of the said period of one month except with leave of the Registrar.
(3) Written arguments, if any, shall be filed in as many copies as there are parties and, at the expiration of the said period of one month, the Registrar shall forward by registered mail a copy of any argument filed to every other party.
(4) Any party who desires to be heard by the Registrar shall give him written notice accordingly within 14days after the expiration of the said period of one month, and upon receipt of such notice, the Registrar shall give the parties a written notice of hearing for a date specified therein. SOR/94-31, s.4.
49.Where in opposition proceedings, any extension of time is granted to any party, the Registrar may thereafter, if he thinks fit, grant any reasonable extension of time to any other party in which to take any subsequent step.
50.
(1) Any statement or other material required or permitted to be served upon or forwarded to a party to opposition proceedings pursuant to section38 of the Act or these Regulations may be served upon or forwarded to such party or his trade mark agent or representative for service either personally or by prepaid registered mail addressed to the appropriate address in Canada appearing in the statement of opposition or application, as the case may be.
(2) When service or forwarding is effected by prepaid registered mail, it is deemed to be effected on the date when it is mailed. SOR/90-699, s.1.
51.to57.[Revoked, SOR/93-478, s.4]
TRANSFER
58.
(1) The Registrar shall recognize a transfer of a trade mark, which is the subject of an application for registration or is registered, upon receipt of a written request for such recognition and of
(a) the original instrument of transfer or a copy thereof certified by a notary public or a public officer authorized to issue such a copy, or
(b) if the Registrar is satisfied that the original instrument or a copy so certified is not available, other evidence of the transfer satisfactory to him,
and, in either case,
(c) the information that would be required by paragraph30(g) of the Act in an application by the transferee to register the trade mark.
(2) Upon such recognition, the Registrar shall make appropriate entries with respect to the application or register the transfer, as the case may be. SOR/90-699, s.1.
59.
(1) Where in consequence of a transfer of a trade mark that is the subject of an application for registration, such trade mark becomes owned by one person for use in association with some of the wares or services specified in the application and by another person for use in association with others of such wares or services, then, upon the Registrars recognition of the transfer, each such person shall file an amendment of the application restricted to the wares or services for use in association with which he owns the trade mark.
(2) Each amendment referred to insubsection(1) shall be a continuation of the application so as to preserve the benefit of the date of filing of such application but otherwise shall be treated in all subsequent proceedings as a separate application.
60.Where, in consequence of a transfer, a registered trade mark becomes owned by one person for use in association with some of the wares or services specified in the registration and by another person for use in association with others of such wares or services, then, upon the registration of such transfer, each such person for all purposes of the Act shall be deemed to be a separate registered owner of the trade mark for use in association with the wares and services with respect to which he has acquired or retained ownership, and, for the purposes of section46 of the Act, shall be deemed to have a separate registration of the trade mark. SOR/90-699, s.1.
REGISTER
61.Pursuant to the provisions of paragraph26(2)(b) of the Act, the register shall show, with reference to each registered trade mark, a summary of the application for registration as allowed which shall include as much of the following information as is applicable:
(a) the trade mark and any disclaimer with respect thereto;
(b) the wares and services in respect of which registration has been requested and, in the case of a proposed trade mark, in respect of which the declaration of use in Canada required by subsection40(2) of the Act has been filed;
(c) the number of the application for registration;
(d) the date of filing of the application and, if priority is claimed, the date of the actual filing of the application;
(e) the date or dates of first use of the trade mark in Canada;
(f) the date or dates of first making known of the trade mark in Canada; and
(g) the country of origin of the applicant or his predecessor in title and the name of a country other than Canada in which the trade mark has been used. SOR/90-699, s.1.
62.Pursuant to the provisions of paragraph26(2)(f) of the Act, the register shall show with reference to each registered trade mark such other particulars as the Registrar may deem proper including as much of the following information as is applicable:
(a) the territorial area to which the registration extends;
(b) the number of the registration;
(c) the number of each associated registration;
(d) the name and address of the original registered owner;
(e) the name and address of the agent for service of the original registered owner;
(f) a notation disclosing whether registrability has been recognized under subsection12(2) or under section13 or 14 of the Act; and
(g) the number, date and country of any registration abroad on which the registration is based.
63.[Revoked, SOR/93-478, s.5]
SCHEDULEI
(s.13)
TARIFF OF FEES PAYABLE TO THE REGISTRAR
PARTI
On the Filing of:
1.
An application for registration of a trade mark
$150.00
2. to 5.
[Revoked, SOR/93-478, s.6]
6.
A statement of opposition
250.00
7.
An application to amend the registration of a trade mark by extending the statement of wares or services in respect of which the trade mark is registered


300.00
7.1
An application to amend the registration of one or more trade marks by changing the address of the registered owner or of his representative for service in Canada


25.00
8.
Any other application to amend the register: for each trade mark to which the application relates

25.00
9.
A request to recognize the transfer of one or more trade marks: for each trade mark

50.00
10.
A request to renew the registration of one or more trade marks: for each trade mark

300.00
11.
A request for dispatch of one or more notices under section44 or 45 of the Act: for each notice

150.00
12.
An application for an extension of time under subsection47(1) or (2) of the Act for the doing of any one or more acts: for each act

50.00
13.
Each certified copy of a registration referred to in subsection31(1) of the Act

50.00
14.
Each certified copy of an application referred to in paragraph34(c) of the Act

50.00
15.
Any written authorization, drawing or specimen referred to insubsection30(1) (other than a specimen to whichsubsection30(2) applies) the filing of which completes an application for registration of a trade mark that was not complete, as described insection30, on the date of filing thereof




50.00
16
A request under paragraph9(1)(n) of the Act with respect to one or more badges, crests, emblems or marks: for each badge, crest, emblem or mark


300.00
17
A request for transmission of one or more original files to the Federal Court of Canada: for each file

80.00


PARTII
For the registration of:
18
A trade mark, including, without further fee, the issuance ofa certificate of registration of the trade mark

$200.00


PARTIII
On the issuance of:
19
A certificate of authenticity
$35.00
Plus for each copy certified
1.00
20
Any other certificate
35.00
Plus for each copy certified
1.00
21
Copies of or extracts from the register, or copies of certificates or of other documents: for each file or entry, the greater of
2.00
or 50cents per sheet


PARTIV
Trade mark agents:
22
On request to enter a name on the register of trade mark agents
$300.00
23
Examination fee undersection24
100.00
24
Annual registration fee underparagraph25(1)(a)
300.00
25
Notice fee undersubsection25(3)
100.00
26
Reinstatement fee undersubsection25(4)
100.00


SOR/78-674,s.3;SOR/82-392, ss.1,2(F);SOR/85-385, s.1;
SOR/85-1041, s.1;SOR/88-386, s.1;SOR/90-699, s.1;SOR/93-
478, s.6.
SCHEDULEII
(s.15)
1
Application of Registration of a Trade Mark in use in Canada
2
Application for Registration of a Trade Mark made known in Canada
3
Application for Registration of a Trade Mark Registered and used Abroad
4
Application for Registration of a Proposed Trade Mark
5
Application for Registration of a Certification Mark used in Canada
6
Application for Amendment of a Registration otherwise than to extend the Statement of Wares or Services
7
Application for Amendment of a Registration extend the Statement of Wares or Services
8
Statement of Opposition to an Application for Registration of a Trade Mark
9
Counter statement to Opposition
10. to 13.
[Revoked, SOR/93-478, s.7]
14
Certificate of Registration of a Trade Mark
15
Certificate of Authenticity
16
Certificate of Renewal of the Registration of a Trade Mark


Copies of these forms may be obtained on application to
Registrar of Trade Marks, Ottawa.
SOR/90-699, s.1; SOR/93-478, s.7.

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