Canada: Amendments To The Canadian Trademarks Act – 20 Points You Need To Know (The Bill Is Just Too Big For A Top 10 List!)

Last Updated: June 27 2014
Article by Cynthia Rowden

On June 19th, Bill C-31, Canada's Economic Action Plan 2014 Act, No.1, received Royal Assent. The Bill contains major amendments to the current trademark system, one of the most important of which is to eliminate use as a registration requirement.  This will impact searching, clearing, risk analysis and enforcement of trademarks in Canada. The Madrid Protocol will be implemented, and the Nice Classification of goods and services will be adopted. 

Regulations are required, and the government must also consult on new fees, and set up procedures and costs for Madrid Protocol applications. Full implementation of the Bill could take until mid-2015, or longer. For now, the current registration regime will remain in force.

Here are amendments to the Trademarks Act that will likely have the most impact to trademark owners in Canada:


Applicants will no longer be required to identify filing grounds. Any applicant with use or who proposes to use a mark, and is entitled to use in Canada will be able to file. It appears that applicants will not need to indicate, on filing, if the mark has been used, or provide a date of first use.


Use will no longer be required before registration. Unless opposed, registrations will be granted upon the expiry of the opposition period. No declarations of use will be required, and no registration fee will be payable.
NOTE: As we have noted in earlier communications, these two amendments fundamentally change the current system of registration. Strategically, many applicants will consider goods and services beyond their current use, but applicants should be prepared to prove their "proposal" to use the mark. Prospective applicants and businesses will likely have to do more marketplace and other investigations to evaluate the impact of pending applications and registrations, since use information will not be on the Register.


The Nice Classification system will be implemented. Applicants will be required to submit applications that identify the goods and services in ordinary commercial terms and by class (with the class number). This will also apply to any application that has been filed, but not yet registered, by the date the Act is proclaimed into force. The Registrar may also request registrants to supply class details, failing which the registration may be expunged. This latter provision will be used to bring all existing registrations in line with the classification system. At this time, there is no indication of the timing of changes to existing registrations. Any issues regarding classification will ultimately be determined by the Registrar.


Filing fees, per class, will likely be implemented, but the fees have not yet been determined. Companies may wish to consider filing in Canada now, while filing fees remain modest, since there is no guarantee that the new fee system will offer cost savings.


Regulations will be enacted to permit Canada to implement the Madrid Protocol.


The Trademarks Office will be able to refuse applications for lack of distinctiveness. It is not yet certain how distinctiveness will be assessed, or what evidence will be necessary to show distinctiveness. In addition, it is not clear that marks that may now be approved without evidence of distinctiveness, e.g., letters, numbers or graphic symbols, will continue to be accepted upon implementation of the amendments. To avoid objections based on distinctiveness for marks that might now meet the current registrability requirements, and considerable cost of preparing suitable evidence to demonstrate distinctiveness, consideration might be given to filing non-traditional marks now.


Convention priority claims will no longer be restricted to applications filed in the applicant's home country. Any original application can be relied upon, as long as the applicant resides in country of the Union of Paris, 1883. Convention priority claims must still be made within six months of the original filing, but a seven-day grace provision is available upon request.


Applicants will be permitted to "divide" applications, permitting registration for some goods or services, while leaving others pending. This could be helpful during examination and, as well, could assist during an opposition proceeding if the application was opposed only for some goods or services, thereby allowing an applicant to obtain a registration for the others.


Opposition grounds are amended to add lack of use and no proposed use in Canada, as well as no entitlement to use. Since applicants will no longer have to identify a specific filing basis, or indicate a date of first use, if any, decisions to oppose or not, will require investigations to confirm relevant priority between an applicant and a prospective opponent. In addition, it will likely take some time to determine how the new opposition grounds will be applied, so that an effective evaluation of what a valid proposed use claim means or why an applicant is not entitled to use a mark, can be made. The latter may refer to situations where use would be unlawful, possibly due to other federal laws.


Applicants will be able to file a simplified counterstatement, stating merely that the applicant intends to respond to the opposition. This will avoid situations that have occurred in the past where applicants have inadvertently not pleaded against all grounds of opposition, and thus were deemed not to contest certain grounds. What the simplified counterstatement leaves unaddressed, is whether the applicant is relying in the opposition proceeding on use for its mark, and if so, on what date of first use it relies. Other changes are also being made to opposition proceedings that may speed up proceedings.


Transition provisions provide that applications allowed at the implementation date can issue to registration for all filed goods and services upon payment of a registration fee. No declaration of use for those applications will be required. Currently, there are more than 40,000 applications at the "allowed" stage, pending the filing of a declaration of use. Registration of these marks for all filed goods and services is expected to have a major impact on future availability of similar marks.


Renewal terms will change from 15 years to 10 years. NOTE: Registrations can be renewed up to a year before the renewal deadline. If possible, registrants should try to renew now, before implementation of the changes, to take advantage of the longer renewal term.


The Registrar will be given increased power to correct errors in names and addresses, and to correct its own mistakes, including the withdrawal of advertisement and the correction of errors in registrations, but only subject to being advised of such mistakes within six months. In addition, if a registration issues despite a request for an extension of time to oppose, the Registrar will be able to remove the registration.


The Registrar itself may issue notices requesting evidence of use against registrations that are more than 3 years old (section 45 non-use proceedings). Currently, the Registrar can issue such notices upon request even earlier than 3 years from registration, but does so rarely. There is no indication in the Bill of the situations in which the Registrar might issue its own notices, although in consultations since the introduction of the Bill, government representatives have indicated that they might do so if they suspect "abuse" by a registrant, for example, if registrations issue for excessively long lists of goods and services with little likelihood of actual use. Of course, any recipient of a notice requesting use can simply refile under the new provisions of the Bill, and unless otherwise opposed, will obtain a registration since use is no longer a prerequisite for registration.


Recordal of assignments will no longer require evidence, such as a copy of the assignment, unless the request is made by the assignee.


Acts constituting infringement will be changed to include importing and exporting of goods, labels and packages associated with a confusing trademark or trade name. These provisions are not intended to apply to parallel imports. NOTE: Bill C-8, the Combating Counterfeit Products Act, has not yet been passed by Parliament, but will likely be passed in the Fall of 2014.


Registration will not prevent use of any utilitarian feature embodied in the trademark.


The Registrar will be able to destroy file records for abandoned applications and expunged registrations six years from abandonment or expungement. NOTE: This provision was widely criticized by many as impacting available evidence in future oppositions or litigation. Canada does not provide online access to Trademarks Office correspondence but files have always been available for inspection. There is no current indication of when online records will be available, but the government has indicated that the amendments will apply even if online records do not become available.


Registrations may be cancelled if a Court decides that the registration is likely to unreasonably limit the development of any art or industry. Currently, expungement is limited to grounds related to unregistrability, non-entitlement, abandonment or lack of distinctiveness.


There will be public consultation on regulations and fees. Possibly, this will start this summer. It is not yet known if fees will be set by class or if some volume discount will be permitted, such as that used currently for Community trademark applications. There has been no consultation on whether single class or multiclass applications will be allowed. Until regulations are implemented, the Bill will not be proclaimed into force. Possibly, some aspects of the Bill, such as implementation of the Madrid Protocol, will be earlier than other changes.

We will keep you informed of the status of the Bill, including when draft regulations are available for comment and any fee information.

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.

Cynthia Rowden
Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
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
Registration (you must 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