Canada: Amendments To The Canadian Trade-Marks Act Are Coming: What Trademark Owners Should Do

Significant amendments to the Canadian Trade-marks Act are expected to come into force at the end of 2015 or in early 2016 according to the Canadian Intellectual Property Office (CIPO). Detailed amendments appear in Bill C 31 entitled Economic Action Plan 2014 Act, No. 1, which may be found here.

Most of these amendments were adopted in order to allow Canada to adhere to three international treaties: the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol), the Singapore Treaty on the Law of Trademarks and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the Nice Agreement). The aim of these amendments is to assist Canadian businesses in their expansion in foreign markets and to attract foreign investment to Canada by providing a cost-effective and efficient way to ensure protection of their trademarks in multiple countries in accordance with international practices.

We discuss below the changes to the Canadian Trade-marks Act that will have the most significant impact on trademark owners and their branding strategy.  In summary, we recommend the following:

  • That trademark owners review their trademark portfolios and identify the key trademarks of their organization;
  • If they have an effective establishment in Canada, that they consider filing an early trademark application in Canada for any key trademarks that are not yet registered in order to be able to rely on a valid Canadian application/registration to support an international application;
  • Whenever they decide to invest in a new trademark, they should file a trademark application as early as possible so as to secure prior rights in the mark before any third party decides to register a confusingly similar mark; and
  • Should they have any trademarks to register, we would recommend not to delay the filing of the applications in order to benefit from potential savings on filing fees prior to the coming into force of Bill C-31 (where additional fees may be charged when the applied for goods or services fall under more than one class of the Nice Agreement, as described below).

Possibility to obtain an international registration based on a Canadian application/registration

The most exciting change for Canadian businesses is that it will be possible to obtain an international registration extending to any of the 92 member countries that are part of the Madrid Protocol.

What are the main advantages of an international registration?

  • The filing of one trademark application in one language (English, French or Spanish) in a single office with one set of fees;
  • Protection extending to any of the designated 92 member countries;
  • One registration to renew with one set of fees; and
  • One application to record change in ownership and address in multiple countries.

All of the above could result in important cost savings when filing or managing international trademark portfolios (fees will be applicable per designated country; however, said fees will be less than if the applicant were to file in each of these countries individually).

What are the main disadvantages of an international registration?

  • The international registration is completely dependent on the Canadian basic application or registration during the first five years of the Canadian basic registration. This means that the international registration could be automatically cancelled if the Canadian basic application or registration is refused, withdrawn or cancelled during the said period, with the necessity to convert the international registration into national registrations;
  • If the goods and/or services included in the Canadian basic application or registration are limited during the first five years of the Canadian basic registration, the international application or registration must also be limited; and
  • An international registration cannot be assigned to an entity that does not have a real and effective industrial or commercial establishment in any of the 92 member countries.

What should trademark owners do to prepare for these changes?

  • Review their trademark portfolios and identify the key trademarks to their organization; and
  • If they have an effective establishment in Canada, they should consider filing a trademark application in Canada at an early date for any key trademarks which are not yet registered in order to be able to rely on a valid Canadian application/registration to support an international application.

It will no longer be necessary to state a basis for registration nor will it be necessary to file a declaration of use for a mark to be registered in Canada.

What does this mean for trademark owners?

  • It will become more difficult to ascertain whether a person has any prior rights in a mark since the application will no longer provide any information as to the use of the mark in Canada. In order to determine if a third party's trademark is in use, it will be necessary to conduct use investigations;
  • This will create more uncertainty for trademark owners when adopting a new mark or when considering to oppose an application filed by a third party or to enforce trademark rights against a third party;
  • It will become easier for any persons to register marks in Canada since they will no longer need to use their marks prior to obtaining the registration; such registrations may block trademark owners from registering their own marks; and
  • The registrations obtained by a third party will only become vulnerable to cancellation for non-use three years after registration with the result that trademark owners will not know before the expiry of this three-year period whether these registered marks will constitute serious obstacles to the use of their own marks.

What should trademark owners do to prepare for these changes?

  • Whenever trademark owners decide to invest in a new trademark, it will become even more important to file a trademark application as early as possible so as to secure prior rights in the mark before any third party decides to register an identical or confusing mark.
  • It will be important for trademark owners to monitor the trade-marks register for purposes of opposing third party conflicting trademark applications.

Use of Nice classification

All wares and services will have to be listed according to the Nice classification system, which is composed of 34 classes of goods and 11 classes of services. It is expected that the introduction of this classification will increase the filing and renewal fees for multi-class applications or registrations. CIPO will likely start to charge additional fees depending on the number of classes included in the application, as is done in other countries.

What should trademark owners do to prepare?

  • Should they have any trademarks to register, we would recommend not to delay filing applications in order to benefit from potential savings on filing fees prior to the coming into force of Bill C-31 (given that in future, fees may be charged on a per-class basis). While CIPO has not yet given any indication as to whether the imposition of any additional filing fees will apply to pending applications, we would think that additional filing fees would not be charged retroactively in respect of applications that would have been advertised for opposition purpose at the time of the coming into force of Bill C-31.

Renewal of registrations

With the new amendments, a registration will be valid for 10 years instead of 15 years and can be renewed for additional 10-year periods.

According to CIPO, there is no advantage to proceed with the renewal of your registrations well in advance of their expiry dates. CIPO has indicated that the applicable renewal term of 15 years will only apply to registrations whose renewal date falls prior to the coming into force of Bill C-31. Even if a registration is renewed well in advance of its expiry term, the renewal term will be reduced to 10 years if the renewal date falls after the coming into force of Bill C 31.  

Some other changes

Divisional applications

The amendments will allow for the possibility of dividing applications. This can be useful in cases where objections have been raised regarding certain goods and/or services but not others.  In the result, the registration process will not be delayed for the goods and/or services against which no objections have been raised.

Distinctiveness now subject to examination

CIPO examiners will be able to refuse registration of a trademark on the basis that it is not distinctive.  Furthermore, examiners will be able to request evidence of distinctiveness in cases where the applied for marks are not inherently distinctive. This will apply to all types of trademarks including "traditional marks" (i.e., word marks and two dimensional design marks).

The amendments will also permit registration of non-traditional marks, such as scent, taste, texture, sound, hologram and moving image and with respect to these marks, CIPO will require that distinctiveness be demonstrated at the time of filing of the application.

Clarification as to the application and implementation of the amendments will be provided in regulations (including additional governmental fees). CIPO is now conducting consultations (until November 30, 2014) concerning possible amendments to the Trade-marks Regulations. The consultation document can be found here.  

Norton Rose Fulbright Canada LLP

Norton Rose Fulbright is a global legal practice. We provide the world's pre-eminent corporations and financial institutions with a full business law service. We have more than 3800 lawyers based in over 50 cities across Europe, the United States, Canada, Latin America, Asia, Australia, Africa, the Middle East and Central Asia.

Recognized for our industry focus, we are strong across all the key industry sectors: financial institutions; energy; infrastructure, mining and commodities; transport; technology and innovation; and life sciences and healthcare.

Wherever we are, we operate in accordance with our global business principles of quality, unity and integrity. We aim to provide the highest possible standard of legal service in each of our offices and to maintain that level of quality at every point of contact.

Norton Rose Fulbright LLP, Norton Rose Fulbright Australia, Norton Rose Fulbright Canada LLP, Norton Rose Fulbright South Africa (incorporated as Deneys Reitz Inc) and Fulbright & Jaworski LLP, each of which is a separate legal entity, are members ('the Norton Rose Fulbright members') of Norton Rose Fulbright Verein, a Swiss Verein. Norton Rose Fulbright Verein helps coordinate the activities of the Norton Rose Fulbright members but does not itself provide legal services to clients.

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.