Canada: Strategies For Protecting Your Brand From Trademark Trolls In Canada

Last Updated: April 8 2016
Article by Nicole Vidinu

Are trademark trolls a threat to brand owners in Canada? With significant amendments to the Canadian Trademarks Act on the horizon in light of Bill C-31, and in particular the upcoming elimination of the requirement to claim or declare use of a mark before obtaining a registration, these legislative changes may be opening the door to trademark trolls.

Although implementation of Bill C-31 is set for early 2018 (as reported in our October 22, 2015 IP Update), brand owners may wish to take pro-active steps to ensure that their marks are fully protected in Canada before these amendments take effect. What follows are five strategies to assist brand owners in guarding against the threat posed by trademark trolls in light of the upcoming changes to Canada's trademark regime.


A trademark troll (or "trademark squatter") is generally understood as a party who preemptively applies to register a mark used by a brand owner in another country. In doing so, trademark trolls seek to block a brand owner from registering the mark for its goods and services in a particular market. Upon entering that market, the brand owner is then forced to negotiate for the acquisition of its trademark from the troll.

Canada presently has a "use" based trademark system, requiring applicants to formally claim prior use of the mark in Canada or file a declaration confirming that use of the mark has commenced in Canada prior to obtaining a registration (unless the application is based solely on foreign use and registration of the mark, in which case the applicant still needs to have used the trademark in another country). Given that trademark trolls often have no intention of actually using the mark, Canada's present trademark system discourages attempts at trolling by tying registration to use of the mark. However, this will change in light of Bill C-31.

As reported in our June 16, 2014 IP Update, the Canadian government has introduced a number of significant changes to the Trademarks Act through Bill C-31, the Economic Action Plan 2014 Act, No. 1, which received Royal Assent on June 19, 2014. Among other important changes, Bill C-31 removes the current requirement for applicants to either claim or declare use of the mark in Canada before obtaining a trademark registration.  

While removing this requirement will likely simplify the application process, trademark trolls will now have the opportunity to obtain registrations for trademarks in Canada without even the pretense of having used the mark in Canada or elsewhere. With limited recourse available to brand owners to cancel registrations for lack of use in Canada until three years after the date of registration (at which time the registration can be challenged for non-use in a cancellation proceeding under section 45 of the Trademarks Act), brand owners may be forced to negotiate with trolls to acquire the trademark by assignment or may even be forced to rebrand, all of which can be costly and time-consuming. While it is possible for brand owners to oppose the troll's application or seek to expunge the registration based on the brand owner's prior use of the mark, such proceedings similarly can be costly, lengthy and uncertain.

Defensive strategies

There are, however, a number of strategies that brand owners can implement in order to protect against the threat of trademark trolls in Canada prior to these new amendments coming into force:

1. Carefully review your trademark portfolio: Brand owners should carefully review their trademark portfolio on a regular basis. This includes reviewing both the scope of the goods and/or services covered by existing registrations and the existence of any brands or sub-brands that are in use in Canada or elsewhere, but not yet registered in Canada. Applications for any such unregistered marks should be promptly filed without waiting for the amendments to the Trademarks Act to come into force.

  2. File early: Applications for trademarks should be filed promptly if there is either a reasonable prospect of use of the mark in Canada, or commercial harm will be suffered by a troll registering your mark in Canada. This is especially so if the mark is commercially important in another jurisdiction, including commercial markets that are closely related and for which there is significant spillover advertising, such as Canada and the United States. The trademark troll's leverage comes from obtaining an earlier application filing date than the brand owner. As such, brand owners should seek to minimize this risk by filing early and claiming priority where possible, as discussed below.

3. Claim priority: If possible, brand owners should take advantage of claiming priority to foreign trademark applications and registrations. Under the Canadian Trademarks Act, if an application is filed in Canada within six months of the earliest filed international application, and the applicant has a real and effective industrial or commercial establishment in the jurisdiction where the earliest application was filed, the applicant can claim priority to the earlier application, and the Canadian application will be treated as having the earlier foreign filing date. Claiming priority is helpful in situations where a troll has filed an application in Canada for a mark before the brand owner does, but after the brand owner's priority date.

4. Renew existing registrations: As abandoned registrations can be a source of trolling activity, brand owners are encouraged to ensure timely renewal of existing trademark registrations and to give careful consideration before allowing existing registrations to become abandoned. Brand owners should also keep in mind that pursuant to Bill C-31, the Trademarks Act will be amended to reduce the renewal period for trademark registrations from 15 years to 10 years.

5. Monitor the register: Brand owners should be constantly and carefully monitoring the register for trolling activity. The earlier any such trolling applications are discovered, the better. In many cases, it can be particularly advantageous to identify such applications shortly after they are filed and before they are approved for advertisement by the Trademarks Office, as trademark trolls will often rely on the apparent "approval" of applications by the Canadian Trademarks Office in negotiations with brand owners.

In light of the increased threat that trademark trolls may pose with the upcoming changes to the Canadian Trademarks Act, it is strongly recommended that brand owners implement these steps to maximize the protection for their brands in Canada, and to avoid costly commercial disputes in the future.

For further information regarding the upcoming changes to the Trademarks Act or assistance with obtaining a trademark registration in Canada, please contact a member of our firm's Trademarks group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

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.

Nicole Vidinu
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.