Canada: Canadian Government Proposes Major Changes To "Trade-Marks Act"

Last Updated: June 11 2014
Article by Stuart Freen

The Federal government of Canada recently proposed major new changes to the Trade-marks Act—including changing the name of the Act to the Trademarks Act. The amendments, if passed, will be the biggest changes to the Act since 1953.

The amendments were quietly included in an omnibus budget implementation act dubbed the "Economic Action Plan 2014". This means that the amendments will likely sail through Parliament with little debate or public consultation.

Among the major changes are the elimination of the "use" requirement for trade-mark applications and the adoption of the Nice Classification system. In addition, there are also various changes to terminology, the government registrar will be granted increased powers to correct administrative errors, and the term of trademark registration has been reduced to 10 years (down from 15).

Terminology changes

The amendments will eliminate the distinctly Canadian hyphen in the word "trade-mark". The word will now be spelled "trademark", which will surely please our neighbours to the south. Additionally, the archaic term "wares" has been replaced with the slightly less archaic term "goods".

The current Trade-marks Act allows for a peculiar type of pseudo-trade-mark called a "distinguishing guise". An example of a distinguishing guise would be the shape of a Heinz ketchup bottle. The distinguishing guise has now been rolled into the broader definition of a trademark.

The amendments introduce the concept of a trademark being a "sign or combination of signs". Many different types of signs are potentially trademarkable, including colours, smells, holograms, tastes, and moving pictures.

No need to state date of first use in applications

Under the current Trade-marks Act, every trade-mark application must list the date that the applicant started using the trade-mark. Alternatively, an applicant can file a "proposed use" application on the understanding that they will start using the trade-mark within 3 years of applying (or within 6 months of allowance, whichever is later). Applicants can also rely on use of the trade-mark abroad, assuming they have a registration in that other country.

The amendments do away with this requirement to use a trademark in order to have it registered. The government registrar will no longer record the date of first use nor, in the case of proposed use applications, will it require applicants to file declarations of use.

These amendments will make it slightly easier to obtain a trademark registration since applicants will not have to declare that they are using a trademark in order to get a registration. Accordingly, there will likely be more trademarks getting registered, many of which are not actually being used by their owners.

This amendment may not actually mean very much practically speaking. Under the current system, dates of first use and declarations of use are not verified by the registrar. The declarations are, essentially, a formality.

It should be noted that, as in the current Act, trademarks that have not been used in the past 3 years can be expunged from the registry for non-use. Any third party can request that a trademark be expunged for non-use. This right will remain, meaning that registrants must continuously use their trademarks or risk losing them. Similarly, the person entitled to register a trade-mark will still generally be the first user (not the first person to file).

In terms of rights and remedies, the amendments will effectively remove the right to challenge an applied-for or newly registered trademark on the basis that the applicant claimed a mark was in use when in fact it was not. Instead, parties will need to wait a full 3 years after the date of registration file a section 45 notice to have the mark deleted for non-use.

Nice Classifications

Trademark laws in most countries make use of what is referred to as the Nice Classification system for goods and services, named after the French city of Nice. Every specific type of goods or services fits into a specific pre-defined class, such as "carpets rugs and matting (class 27)" or "telecommunications services (class 38)".

The Nice Classification system can help for determining if two trademarks are confusingly similar. If the two trademarks are similar in appearance, and the goods and services they are registered with belong to the same Nice Classification class, then that is a strong indication that the trademarks are confusingly similar.

The amendments to the Trade-marks Act introduce the Nice Classification system to Canada—sort of. Applicants will now be required to group all of the associated goods and services into Nice Classification classes. However, the amended Act states that the Nice classes should not be used to determine whether two trademarks are confusing. Accordingly, the classes will not have any practical use or meaning within Canada and will add an extra step to the application process.

The Nice Classification system is presumably being introduced so that Canada can join the Madrid system for the international registration of marks. The Madrid system is a system for filing trademark applications in multiple countries at once, while having the applications centrally administered through the World Intellectual Property Office. Having the standardized class system in place makes it easier to compare trademarks from different countries, and is a legal requirement for countries to participate in the Madrid system.

Interestingly, the amendments grant the registrar the power to force existing trademark owners to classify their trademarks according to the Nice system. In other words, trademark owners who registered before the amendments pass may be forced to revise their trademarks or else will have them deleted from the registry.

Other changes

The amendments include a number of other miscellaneous changes. The mostly redundant concept of a "representative for service" has been deleted, and the role of trade-mark agents has been expanded. Government trademark examiners have been given broader powers to correct administrative errors. A new defence to infringement has been added where an infringer may argue that a trademark is "utilitarian" in nature and therefore should not be enforceable. Applicants will have the new ability to split applications in two (called "divisional applications") in situations where their application is opposed in part. Finally, trademarks must be renewed every 10 years under the amendments, a reduction from the current 15 year term.

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.

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.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.