Canada: Key Changes To Canada's Trademark Law

Last Updated: December 12 2018
Article by Anna Loparco, Anna Clark and Jaclin Cassios

June 17, 2019: Key changes to trademark laws come into force

Nearly five years after the Government of Canada tabled a number of intellectual property law treaties to harmonize Canada's patent, trademark and industrial design laws with international laws, the long-awaited coming into force date has finally been announced for the Trade-marks Act (Act)– June 17, 2019 (CIF Date). The amendments to the Act will bring Canada in line with three major intellectual property treaties—the Madrid Protocol, the Nice Agreement and the Singapore Agreement (Treaties).  Canada's accession to the Treaties will foster international competitiveness for intellectual property owners, and reduce cost and complexity of entering foreign markets.

In addition, the federal government has committed CA$85 million in funding over five years to develop an IP strategy, which includes IP awareness, education and strategic tools for owners.

Trade-marks Act

There are significant changes to the Act, and implications for trademark owners, which include:

  • Non-traditional marks: Trademarks, currently referred to as "marks", will be referred to as "signs". Applicants will also be able to file applications for an expanded list of non-traditional signs, such as shape, sound, smell, taste, texture, hologram, single colour or colour combinations without delineated contours, three-dimensional and moving images. However, the Canadian Intellectual Property Office (CIPO) will examine these non-traditional signs for distinctiveness, and will be able to request proof of distinctiveness in Canada, thus making it more difficult to register many non-traditional signs, including ones now permitted without examination for distinctiveness, such as sound marks;
  • No filing basis: The previous requirement to include a basis for filing a trademark application (proposed use, use, registration abroad or making known) will no longer be in effect. However registrations will still be subject to cancellation for non-use. While this simplifies the application process, it creates greater risk of trolls and squatters, and makes the process of clearance searches more complicated and costly. Under this new trademark regime, being the first to file an application will be extremely important;
  • Declarations of use will no longer be required after the CIF date: Allowed applications will progress directly to registration after the CIF Date upon payment of the government fee, without the requirement to file the declaration of use for proposed use applications. Applications filed after the CIF will no longer be subject to the CA$200 registration fee. If owners of allowed applications wish to proceed to registration prior to the CIF Date, applicants must still file a declaration of use (for proposed use applications) and pay the registration fee. Applicants who based their applications on proposed use and have not used their trademarks in association with all goods and services, may be able to extend their deadlines until the CIF Date to avoid limiting coverage to only goods and services in use in Canada;
  • NICE classification: For all new applications and any pending applications that have not been allowed by the CIF Date, goods and services will need to be classified into the 45 International Classes, harmonizing the system with most of the world;
  • Fee-per-Class: The current government filing fee of CA$250 for all goods and services covered under an application, and registration fee of CA$200 will be repealed after the CIF Date. The government filing fees will be based on classification, namely, CA$330 for the first class, and CA$100 for each additional class of goods/services for applications filed online. There are cost savings to filing multi-class applications in Canada prior to the CIF Date. Trademark owners should consider filing applications in Canada before the CIF Date, to obtain the broadest scope of protection possible and avoid the anticipated increased fees for filing on a per-class basis;
  • Priority claims: Applicants may rely on any prior application filed in any country of the Union and not just one filed by the applicant in its country of origin;
  • Distinguishing guise: The new Act has removed the ability to file an application for a distinguishing guise. This type of intellectual property is mostly subsumed within the new definition of a sign;
  • Standard character claims: applicants not wishing to limit coverage to any particular font, size or colour will be able to enter a standard character claim;
  • Objections on the basis of lack of inherent distinctiveness: Examiners will be able to object to a sign that is not inherently distinctive. Previously, the scope of the examiner's search was limited to: 1) the Canadian Trademarks Register for confusingly similar marks; 2) a general search for the purpose of assessing descriptiveness; and, 3) an assessment for other issues of registrability (e.g., whether the mark is "primarily merely" a name or surname of an individual, whether registration is prohibited or blocked by the existence of an official mark). It is likely this change will lead to more substantive objections raised during examination than in the past;
  • Overcoming objections to registrability: The current Act provides that where an application has received objections to registrability, the mark may register if, among other things, it is the subject of a registration in the applicant's home country and is 'not without distinctive character'. This exemption is entirely eliminated in the new Act and affects pending applications not advertised prior to the CIF Date, making the evidentiary burden more onerous, particularly for non-Canadian brand owners;
  • Divisional applications: Applications may be divided after the CIF Date. This is advantageous if the application faces objections or oppositions in the prosecution of the trademark, or they wish to assign a portion of the goods and services to another owner. Once the application is divided, it may be merged with the original registration after all issues are resolved and the divided application is registered;
  • Associated marks:  all associations will be removed from existing registrations and no further associations will be permitted;
  • Term: For applications filed prior to the CIF Date, the term of registration—10 or 15 years—will depend on the date on which the Registrar has processed the registration fee;
  • Renewals: After the CIF Date, the term of renewal of a registration will be reduced from 15 years to 10 years, unless the expiry of the trademark occurred prior to the CIF Date; Renewal fees after the CIF date will be calculated based on the number of classes, namely CA$400 for the first class, and CA$125 for each additional class. In addition, for a renewal to be processed after the CIF Date, the goods and services must be properly classified in accordance with the Nice Agreement. Registrants can avoid the fee-per-class increase if they renew their registrations prior to the CIF Date, including those due for renewal after the CIF Date (however, CIPO may still issue a notice requiring classification);
  • Record of assignments: Proof of the assignment will only required if initiated by the assignee;
  • Certification marks: Applicants will be able to file certification marks that are not in use;
  • Madrid Protocol: Canada will join the Madrid Protocol, thus allowing Canadian applicants to file applications with the International Bureau of the World Intellectual Property Association (WIPO) and accessing 118 jurisdictions worldwide. Filing a WIPO application for an international registration offers a streamlined process and cost savings for foreign filings for Canadian brand owners (owners must have a Canadian application or registration first);

Further amendments to come

Additional proposed amendments to the Act were introduced on October 29, 2018, under Bill C-86, aiming at correcting deficiencies in Bill C-31. These amendments, if passed, include:

  • Reintroducing the concept of bad faith as a ground of Opposition, and as a basis of a Federal Court validity challenge to a trademark registration;
  • Allowing official marks to be challenged on the basis that the owner is not a public authority or that it no longer exists;
  • Granting additional powers in certain proceedings, including allowing the Registrar to grant confidentiality orders, awarded costs, and provide case management deadlines in Opposition proceedings;
  • Preventing the owner of a registered trademark from obtaining relief in a proceeding alleging infringement or depreciation of goodwill during the first three years after registration, unless the trademark was in use in Canada during that period, or special circumstances exist to excuse the absence of use.

Key recommendations for brand owners

  • Conduct an IP audit of your business worldwide, and consider whether to expand your goods and services coverage in Canada;
  • File trademark applications prior to the CIF Date to take advantage of the flat government filing fee;
  • Renew your trademark registrations that expire soon after the CIF Date to avoid the pre-class fee, and the need to re-classify the goods and services at the time of the renewal (this depends on a number of factors – we recommend consulting with a Trademark Agent); and
  • Engage a watch service to monitor your primary brands.

About Dentons

Dentons is the world's first polycentric global law firm. A top 20 firm on the Acritas 2015 Global Elite Brand Index, the Firm is committed to challenging the status quo in delivering consistent and uncompromising quality and value in new and inventive ways. Driven to provide clients a competitive edge, and connected to the communities where its clients want to do business, Dentons knows that understanding local cultures is crucial to successfully completing a deal, resolving a dispute or solving a business challenge. Now the world's largest law firm, Dentons' global team builds agile, tailored solutions to meet the local, national and global needs of private and public clients of any size in more than 125 locations serving 50-plus countries.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances. Specific Questions relating to this article should be addressed directly to the author.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Fross Zelnick Lehrman & Zissu, PC
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Fross Zelnick Lehrman & Zissu, PC
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions