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Significant Amendments to the Canadian Trade-marks Act Came into Force on June 17, 2019

By: Christopher Heer, Annette Latoszewska, Michelle Huong, Toba Cooper, Daryna Kutsyna, Sarah Halkyard | Last updated: January 16, 2023

In 2014, the Canadian government proposed amendments to the Trade-marks Act. Through Bill C-31, The Economic Action Plan Act 2014, No. 1, and 2016's Bill C-30 aiming to implement Comprehensive Economic Trade Agreement (CETA), the Trade-marks Act underwent substantial changes this year.

These changes are having a significant impact on the Canadian trademarks system as we know it. If your business currently owns a registered trademark, or is planning to register one soon, it is vital to learn the effect of these changes.

Changes that align Canada with international trademark law and standards

The revised Trade-marks Act and Trade-marks Regulations align Canadian trademark law with that of Canada's major international trading partners including the United States and the European Union. In particular, under the new legislation, Canada adopted the standard procedures of the Singapore Treaty on the Law of Trademarks (the "Singapore Treaty") and the Nice Agreement (concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks) (the "Nice Agreement") and ratified and implement the Madrid Protocol (concerning the International Registration of Marks) (the "Madrid Protocol").

Adhering to these internationally used conventions make is easier for Canadian businesses to protect their trademarks internationally and expand their businesses beyond Canada's borders. Canadians are now able to file a single application and pay one set of fees to apply for protection in over 100 countries. Adoption of the standardized international procedures also make it easier for international companies to seek trademark protections for their businesses and marks in Canada.

Changes to the use requirements for registration

The revised trademark legislation eliminated the need to include filing grounds in an application. Whether an applicant has used the trademark or intends to use the trademark is irrelevant. Anyone is able to file a trademark application whether they intend to use the trademark or not.

Accordingly, there has been a massive surge in applications over the last year as businesses bolt to secure protection for their marks (and their desired marks) and in early defence against trademark squatters (a consequence of the impending changes that has already proven to be an issue for brand owners).

The changes to the use requirements for registration also mean that any applications that were allowed prior to the implementation of the new legislation do not require a declaration of use. Applicants can simply pay the registration fee to complete the trademark registration process. They no longer need to declare that they are using the trademark in Canada to achieve registration of a mark.

Although the elimination of the use requirement simplifies the trademark registration process for brand owners, it also invites applications from trademark “trolls”. Trademark trolls are individuals who file for marks they have no intention of ever using, commonly with the goal of extracting money from a brand owner desirous of the registration for their legitimate mark. As a best practice, brand owners should monitor the trademark register and the Trademarks Journal to identify applications for marks which may be confusing with their pending applications and/or registrations. While it has always been possible to oppose a mark once advertised, it is now possible to take action against the application even before its advertisement. By submitting a “Notification of Third Party Rights” to CIPO, brand owners can alert the office that the mark applied for is either confusing with their registered mark or earlier filed application.

Despite the elimination of the use requirement, use remains a key component of Canadian trademark law. Use continues to be relevant for a number of reasons. One such reason, is that Canada is not a first-to-file jurisdiction. What this means is that rights to a trademark do not necessarily belong to the individual who was first to file for the registration of that trademark. Prior use is an important factor in determining entitlement to a trademark where that entitlement is disputed between two parties.

Further, a registration can still be cancelled on the basis of non-use under section 45 of the Trademarks Act, and with more applications on the register filed with respect to all goods and services than ever before, we are already seeing a rise in these proceedings.

Changes to priority claims

Under the amended legislation, an applicant may claim priority to any application filed in the preceding 6 months (not solely applications filed in the applicant's "country of origin").

Changes to the trademark registration process

The registration process also changed to adhere to international standards, including the Nice Agreement, the Singapore Treaty and the Madrid Protocol.

As of September 2015, Canada acceded to the Nice Agreement, which groups goods and services into 34 classes of goods and 11 classes of services with explanatory notes regarding the grouping criteria for each class.

In practice, all goods and services listed in trademark applications now need to be classified in accordance with the Nice Classification system.

This applies to any applications not advertised or allowed by June 17, 2019. Applications that were advertised or allowed prior to June 17, 2019, as well as existing registrations, will be subject to the requirement to classify goods and services in accordance with the Nice system upon their renewal.

Changes to government application fees

The implementation of the Nice Classification system has also resulted in changes to the relevant government application and registration fees.

The Trade-marks Regulations' sschedule of fees outlines that under the new regime, the fee for the first class of goods or services included in an application is $ 347.35 CAD (as of 2023) if the application and fee are submitted through the Canadian Intellectual Property Office website. For each additional class of goods or services to which the application relates as of the filing date, CIPO charges $ 105.26 CAD (as of 2023). If a paper copy of the application is filed, the initial fee for one class (as of 2023) is $ 452.60 CAD and $105.26 CAD for each additional class of goods or services to which the application relates as of the filing date.

Changes to the term of trademark protection and renewal fees

Trademarks prior to the change were registered in Canada for a 15-year term from the date of registration. That term is now shortened to 10 years. Trademark renewals, as a result, will need to be filed every 10 years to ensure that protection is ongoing.

Renewal of the registration of a trademark under section 46 of the Act now costs $421.02 CAD (as of 2023) in government fees for the first class of goods or services to which the renewal related. For each additional class a $131.58 CAD (as of 2023) government fee is charged. Trademark owners are now only permitted to pay renewal fees within 6 months in advance of the renewal date (not before).

Moreover, trademark registrations will now only be renewed if they fully adhere to the Nice Classification system.

Changes to trademark eligibility

The new amendments broaden the scope of what is considered eligible for trademark registration purposes. In recognition of the changing marketing landscape, non-traditional signs such as colours, holograms, animated images, and scents are now eligible for protection in the Canadian market. To qualify for registration, non-traditional trademarks are examined for their distinctiveness at the time of use (which differs from evidence of prior use). Assessment of distinctiveness is determined based on the unique characteristics of the proposed trademark rather than consumer recognition and goodwill. This change in the law aids business owners who use non-traditional marketing methods to engage consumers and simultaneously protect their interest in their unusual trademarks.

Changes to examination procedure – CIPO to examine for distinctiveness

Under the amended legislation, new and pending applications (applications that have not yet been approved), are now examined for distinctiveness. The Registrar of Trademarks has the power to require evidence of distinctiveness as of the filing date for any application containing a mark that the Registrar does not view as inherently distinctive.

Since the amended legislation came into force, the Canadian Intellectual Property Office (CIPO) has published examples of marks that would be subject to an objection on the basis that the marks are not inherently distinctive. Among these examples are marks that:

  • are primarily geographic locations (e.g., “LONDON”);
  • consist of designs common to the trade (e.g., an ordinary drawing of grapes and vine leaves for wine);
  • are the word for a colour where the goods are typically of that colour (e.g., “WHITE” with paper);
  • are one or two letters or numbers; or
  • are laudatory words and phrases (e.g., “ULTIMATE”, “VALUE”, “WORLD’S BEST”, etc.).

As this objection is still very new, trademark examiners and practitioners are constantly learning and CIPO is fielding comments from practitioners dealing with these objections. While evidence was initially required to overcome the not-inherently-distinctive objection, the office has since changed its language to accept either comments or evidence or both in response to the examiner’s report.

One surprising consequence of this change to trademark prosecution is a number of objections being received to marks that would otherwise be registrable on the ground that their component parts are not-inherently-distinctive. These objections would appear to be at odds with a guiding principle of trademark prosecution: that a mark should be considered as a whole.

In light of the particular challenge a not-inherently-distinctive objection may present, and to avoid the expensive prosecution of an application, applicants for trademarks should seek legal advice before filing on the status of their marks and the likelihood of them meeting such an objection.

Changes to procedure for amending and editing applications and registrations

The new legislation provides greater flexibility for correcting errors made in applications (like permitting an amendment to the trademark itself if the desired mark is substantially the same as the applied-for mark) and the ability to divide applications and amend and merge registrations.

The ability to divide an application is also a valuable option to advance the registration of a trademark where an objection is raised in connection with only a subset of the goods and services in the application. By dividing their applications, applicants can obtain registration of their mark for a subset of the goods and services in the original application while continuing to correspond with the examiner to overcome the remaining objection.

This strategy may also be applied in the case of an opposition proceeding that relates only to a subset of the goods and services.

If and when the objection or opposition is overcome, the first and subsequently granted applications may be merged.

Changes to recordal requirements

Businesses with portfolios of associated marks are no longer be required to provide evidence of mergers or assignments. Under the amended Trade-marks Act provisions relating to associated marks have been repealed. Moreover, the requirement that a registered owner evidence and record a merger or assignment has been eliminated. The result – there is no need to alert CIPO to the merger or acquisition of individual marks or groups of associated marks (and no need to pay the associated fees to do so).

Changes to divisional applications

Applicants may choose to divide their applications for a number of reasons. For example, if an opposition was filed against an application based on a subset of the goods/services , the applicant can choose to divide the application in order for the unopposed part of the application to proceed to registration. Applicants may choose to divide their application at any stage of the application process, and subsequently, the divided parts once registered, may be merged. There is no fee to request a merger of domestic registrations.

Other recent changes to the Trademarks Act

It is also worth mentioning that on December 14, 2018, the Federal Government gave royal assent to a massive omnibus budget bill that includes further changes to Canadian trademark law (Bill C-86, The Budget Implementation Act 2018, No. 2, "Bill C-86"). Many of the changes seek to address age-old grievances about trademark practice in Canada and to fill gaps created by the amendments which came into force in June.

Among many changes implemented by the Bill, Bill C-86 addresses the issue of trademark squatters by introducing a "bad faith" opposition and expungement ground. Moreover, to combat some discrepancies in the law created by eliminating the "use" requirement, the Bill requires that until a mark has been registered for 3 years registered owners are required to prove use in an action for infringement or depreciation of goodwill. The Bill also changes the longstanding broad protection afforded to official marks. The Bill also provides two new ways to invalidate official marks. Currently, the only way to invalidate an official mark is to apply to the Federal Court for judicial review of the Registrar of Trademarks’ decision to grant official mark status. Following the coming into force of the Bill, there will be two new ways to invalidate an official mark: a person may submit a request to the Registrar to give public notice that the mark is no longer protected as an official mark due to the entity owner no longer being public authority or the Registrar on their own initiative may make such a public notice.

See our resource on Official Marks in Canada and Beating Official Mark Citations for more information.

There were further amendments to the Trademarks Act which came into force on June 28, 2021. The amendments removed the list of trademark agents kept by the Registrar. The changes also added that infringement is presumed when a person uses an identical or confusingly similar trademark without permission when importing goods. The definition of trademark agent has also been added to match the definition used in section 2 of College of Patent Agents and Trade-mark Agents Act, SC 2018, c 27, s 24.


Changes to the Trade-marks Act which took effect in June of 2019 affect trademark registration and the application process both in Canada and abroad.

If you would like to discuss options for registering your trademark following these changes, please contact us for a complimentary and confidential telephone appointment.