Canada: Canada’s New Trademarks Act: What It Means For You

As reported in our previous e-lert, the Parliament of Canada passed Bill C-31, the Economic Action Plan 2014 Act, No. 1 on June 19, 2014. This has been a much anticipated omnibus bill, which introduces sweeping changes to Canadian trademark law.

The bill contains a number of definitional changes, such as removing the hyphenated form "trade-mark" from the statute and replacing it with "trademark," replacing the word "mark" with the term "sign" (separately defined as "a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign"), and replacing the word "wares" with "goods" to harmonize Canada's trademark language with most other countries.

The main provisions of this bill are clear: Canada is one step closer to fully implementing the Nice and Singapore treaties and adopting the Madrid Protocol, which will be complete once the government passes the necessary implementing regulations (likely later this year or in early 2015). It also modernizes many structural aspects of the Canadian trademark application process in keeping with international standards. What is less clear, however, is what implications the new law may have for trademark owners and applicants seeking protection in Canada, and the cost of that protection (as we have yet to see draft regulations and a government fee schedule for filing, registration and intermediate steps). A discussion of some of the key effects that several of these amendments will have on Canadian filing strategy is set out below.

Nice Classification

When Canada fully implements the Nice Agreement (1957), the listing of goods and services in Canadian trademark applications will follow the classification codes (set out here). Under the old Trade-marks Act, Canadian applications only needed to be in "ordinary commercial terms" without regard to the classes of the associated wares and services.

This change will have less of an impact for international applicants, most of whom will already have Nice-compliant applications in other countries. Canadian applicants, however, may face a slightly more complicated process at the application drafting stage, because their goods and services will have to be classified according to the applicable Nice codes in addition to being phrased in "ordinary commercial terms."

The Nice classification codes will have an impact soon. Transitional provisions in Bill C-31 give the Registrar the authority to require applicants to amend certain applications to be Nice-compliant even before the new Trademarks Act comes into force. This transitional provision applies only to an "application for registration that has been advertised under subsection 37(1) before the day on which section 342 of the Economic Action Plan 2014 Act, No. 1 comes into force," so arguably, marks that were registered before that date may be exempt. To date, we are unaware of any instances where the Registrar has exercised this transitional authority.

The full impact of this change and whether the new law will lead to a per-class filing fee structure as in other countries will only become clear when the Government of Canada releases implementing regulations. That said, its implications are clear: if an applicant wishes to file an application without having to include Nice classification codes (and any resulting increase in filing fees), he or she should file sooner rather than later.

Removal of the Use Requirement

Under the current Canadian trademark regime, an applicant must either identify when its mark was first used in Canada or file a declaration post-application stating that a mark is in use before it will issue to registration. In what is widely regarded as its most controversial aspect, the new law removes this requirement. While this may simplify the application process - as applicants will no longer have to identify the date of first use of the mark in association with each of the listed goods and services - it will likely require incumbent trademark registrants to be especially vigilant in watching and monitoring their marks and potentially confusing interlopers in Canada because non-practicing entities may have an easier time securing registrations than under the old Act.

The removal of the requirement to identify a date of first use will complicate the opposition process. Under both the old and the new trademark regimes, an application could be opposed on the basis that a third-party had use of a confusingly similar mark in Canada before the applicant. This ground of opposition remains available, but under the new Act, a potential opponent will have no clear way of knowing whether he or she actually is a senior user since there will be no indication of the applicant's date of first use in the application. Seniority of use will have to be determined through investigations and the exchange of evidence in an opposition proceeding, which could lead many mark owners to "oppose now, ask questions later." At the very least, there will likely be an increase in the number of proposed oppositions, or requests for extensions of time to oppose an application in order to give an opponent and owner of a (potentially) senior mark the time to conduct investigations and determine who is, in fact, the most senior user.

Divisional Applications

The new Trademarks Act will permit applicants to file divisional applications to separate or "carve out" certain goods and services. Previously, applications that encountered registrability issues with respect to only some of the listed wares or services during examination would be completely stalled until those issues were resolved, either through argument or amendment. The new regime will permit the non-contentious portions of the application to proceed to registration while the remainder of the application undergoes further examination. Strategically, this may permit applicants to file more broadly than before, since an applicant can obtain even a partial registration without having to hold up the application in view of only a few problematic goods or services.

Term Reduction

The term of a trademark registration in Canada has been shortened from 15 to 10 years, which is similar to the terms in the United States and Australia. This will undoubtedly result in increased costs, as applicants will be required to more frequently renew their registrations to maintain validity. As a result, if mark owners are in a position to renew their registrations now, they should do so immediately to claim benefit of one more 15 year renewal period before the new Act comes into force.

Madrid Applications

Arguably the most anticipated aspect of the new law is Canada's adoption of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, or the "Madrid Protocol." In a scheme similar to that provided by the Patent Cooperation Treaty, the Madrid Protocol allows applicants to file a single, "international" application with a centrally administered system and then select the member states in which they wish to obtain national protection. It should be noted that an applicant must already own a domestic registration or pending application for an identical trademark in order to file an international application.

The obvious advantage to the Madrid Protocol is cost savings, since applicants can manage their international trademark portfolios through a centralized system. These costs savings will be less apparent to applicants who only file in one or two jurisdictions, since these applicants will already have to obtain a domestic application or registration before proceeding with the Madrid application.

Ultimately, the adoption of the Madrid Protocol is unlikely to have a significant impact on substantive Canadian practice – it simply provides applicants another avenue through which to obtain registered trademark rights in Canada. When Canada will begin accepting Madrid applications is not yet known, as the new Act simply provides the government with the power to make regulations in respect of it.

Distinguishing Guises - No Longer a Separate Category of Mark or Sign

As noted above, the definitional term for a "mark" is transitioned to the wider encompassing term "sign" which comprises a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign. Thus the former classification of "distinguishing guise" no longer exists as a standalone trade-mark category. Distinguishing guises were trademarks that comprised the shaping of wares or their containers, or the mode of wrapping or packaging wares, the appearance of which distinguished the source or origin of those wares. However, the new Trademarks Act provides that a trademark registration will not prevent a third party from using any utilitarian features embodied in a trademark, thus applying to all trademarks a former requirement of distinguishing guises and expanding the grounds upon which the Court may expunge a trademark registration by including as a ground for cancellation that the trademark registration is likely to unreasonably limit the development of an art or an industry.

Only time will tell to what extent this utilitarian feature infringement exemption and new cancellation ground will impact upon applicants and registrants and their respective brands, especially in emerging industries in which product design may not have historic alternatives and instead be dictated by intended utility.

Examination for Distinctiveness

The new Act also empowers Canadian trademark examiners with the ability to object to an application on the basis that the applied-for mark is non-distinctive. Previously, the scope of the examiners' search was limited to the Canadian Trade-marks Register for confusingly similar marks and a general search for assessing descriptiveness. Now, however, an application can be rejected if the examiner's "preliminary view is that the trademark is not inherently distinctive." How this change will impact the examination of trademark applications will only become clear over time, but it is almost certain that this change will lead to more substantive objections raised during examination than in the past, especially in cases in which an applicant chooses to file an application for registration of a mark that draws similarities to a famous or well-known mark in the same or different classes of goods and services.


The overall impact of the Bill C-31 on Canadian trademark practice will not be entirely clear until the government releases revisions to the Trade-marks Regulations, SOR /96-195, a process which could be completed before the end of 2014. Once the regulations are complete, the majority of the provisions of C-31 will likely come into force and the new Act will be fully implemented. One thing is certain, however - the provisions of the new Trademarks Act have serious implications for any trademark applicants and owners in Canada, and regardless of the size, scope, and nature of the business, mark owners will likely have to be increasingly vigilant in monitoring their marks and securing protection in Canada.

The full text of Bill C-31 as passed is available here.

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.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
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