Canada: Addressing The Challenge Of The New Trademarks Act

As has been reported for several years, major amendments to Canada's Trademarks Act were passed in 2014 which, upon implementation, will broaden the definition of a 'trademark' and make it possible to register a broader range of trade dress indicia. These amendments will also add new grounds of examination and require evidence of acquired distinctiveness which could pose obstacles to the registration of certain types of mark. The entry into force of these amendments keeps getting postponed, but the Trademarks Office is now predicting that it will take place in early 2019.

In view of this, brand owners should consider reviewing their portfolios of unregistered trade dress marks with a view to identifying marks for which registration should be sought – either before or after the entry into force of the amendments, depending on the nature of the marks and the extent of their use in Canada.

The term 'trade dress' has traditionally been understood to refer to characteristics of the visual appearance of a product or its packaging which signify its source to consumers. The design of a building or layout of a store can signify the source of services and has been held to be a form of trade dress. Other indicia can also signify source and it is arguable that non-traditional marks can be included in the definition of 'trade dress'. Think, for example, of the effect on consumers of retailers using signature scents or music in stores.

Current Trademarks Act

Currently, some forms of trade dress are protectable under the Trademarks Act, such as colour applied to particular shapes and three-dimensional (3D) marks, in certain circumstances (discussed below). The act provides for the registration of regular trademarks (ie, words, letters, numerals and designs), and in certain circumstances 3D marks. While not specifically covered by the act, sound marks and moving image marks are also now registrable in Canada.

Three-dimensional marks are registrable as either regular marks or 'distinguishing guises', and will fall into the latter category if they consist of the "shaping of goods or their containers" or "a mode of wrapping or packaging goods". A distinguishing guise trademark is registrable only if it has been used in Canada and was distinctive as of the date of filing. Evidence of acquired distinctiveness must be filed with the Trademarks Office, which may restrict the registration to the defined territorial area in Canada in which distinctiveness is shown. Distinguishing guises which have yet to be used and become distinctive may initially be protected as industrial designs. Protection under the Industrial Design Act will be available for up to 10 years, provided that the application is filed within one year following publication or public disclosure of the design. Securing an industrial design registration will provide a monopoly during which trademark distinctiveness can be acquired to support a trademark application for the design.

While colour alone cannot currently be registered, colour as applied to a particular shape is registrable. While special rules apply to the drawings and descriptions that must be included in applications for such marks, these applications are prosecuted as regular design marks. If protection is sought for both the colour and the shape, the application will be considered to be for a 3D mark.

In 2012 the Trademarks Office announced that applications to register trademarks consisting of sounds would be accepted, following an order from the Federal Court dealing with the registration of MGM's roaring lion sound mark. Among other requirements, an application for a sound mark must include a drawing which graphically represents the sound, a description of the sound and an electronic recording of the sound. A sound mark which is considered to be functional, clearly descriptive or deceptively misdescriptive may be objected to under Section 12(1)(b) of the Trademarks Act, although such objections may be overcome by filing evidence showing that the sound mark has acquired distinctiveness. To date, only a few dozen sound marks have been registered in Canada. However, with the ever-increasing importance of online use of trademarks, interest in protecting sound marks is expected to grow.

In addition, according to recent statements by Trademarks Office officials, applications for moving images or animations will now be accepted. In addition to the usual information, the office will require pictures of the motions taking place in the animation, a detailed, written description of these and an electronic video recording of the animation.

Current common law protection

It is possible to establish common law trademark rights in Canada through the use or advertising of a trademark. Accordingly, it may be possible to establish trademark rights in trade dress without a trademark registration. Common law rights are enforced through an action for passing off or, in Quebec, an action for unfair competition. These actions require the plaintiff to establish the existence of goodwill or reputation in the mark, wilful, negligent or careless misrepresentation by the defendant and actual or potential damage to the plaintiff. Proving all three elements is generally difficult, given how challenging it can be to prove the existence of goodwill in trade dress and other nontraditional marks. Functionality can also be a hurdle: unregistered distinguishing guises cannot be protected if the guise is primarily functional.

Amendments to Trademarks Act

The amendments to the Trademarks Act – which passed into law in 2014 and are expected to come into force in 2019 – include:

  • eliminating use of a trademark as a registration requirement;
  • removing the need to identify filing grounds and to file declarations of use;
  • expanding the definition of a 'trademark';
  • permitting the division of trademark applications;
  • adopting the Nice Classification system and Madrid Protocol;
  • shortening the registration term from 15 years to 10; and
  • introducing new examination and opposition grounds.

Expanded definition

The expanded definition of 'trademark' is particularly relevant to owners of unregistered trade dress. The definition will be broadened from referencing marks used to distinguish goods and services to signs or combinations of signs used to or proposed to be used to distinguish goods and services. Currently, a 'trademark' is defined in the act as a mark that is used by a person for the purpose of distinguishing goods and services, a certification mark, a distinguishing guise or a proposed trademark. The amended act will define a 'trademark' as a sign or combination of signs, or a certification mark. The term 'sign' will further be defined as a word, personal name, design, letter, numeral, colour, figurative element, 3D shape, hologram, moving image, mode of packaging goods, sound, scent, taste, texture or positioning of a sign.

With the expanded definition of 'trademark', a proliferation of applications for trade dress indicia and non-traditional marks is likely. That said, other changes to the act may present obstacles to those wishing to take advantage of this broader definition.

New examination grounds

Under the amended act, a mark will not be registrable if its features are primarily utilitarian in relation to the goods or services in association with which it is used or proposed to be used. This prohibition against functionality will apply to all marks under the amended act, not just to distinguishing guises, as is currently the case. A famous example of this doctrine's application in the context of distinguishing guises related to the studs on the top surface of Lego building blocks, which were held to be primarily functional. Distinctiveness will also be added as an examination ground. Applicants will be required to furnish the Trademarks Office with any evidence that it may require to establish that a trademark is distinctive as of the filing date of the application. This evidence will be required where:

  • the office's preliminary view is that the trademark is not inherently distinctive;
  • the trademark consists exclusively of a single colour or combination of colours without delineated contours; or
  • the trademark consists exclusively or primarily of one or more of the following signs:
  • the 3D shape of any of the goods specified in the application or of an integral part or the packaging of any of those goods;
    • a mode of packaging goods;
    • a sound;
    • a scent;
    • a taste;
    • a texture; or
    • any other prescribed sign.

Marks of possibly low inherent distinctiveness which are now registrable – including marks consisting of numbers, letters not forming words, punctuation marks, colour and shape combinations, sound marks and moving images – may not be registrable under the amended act unless evidence of distinctiveness in Canada is filed. It appears that it will not be possible to overcome functionality objections with evidence of acquired distinctiveness. Brand owners should consider seeking protection in Canada for these types of mark as soon as possible, with a view to having applications allowed before the amended act comes into force.

While the effects of the amendments to the Trademarks Act will be wide ranging and varied, the expanded definition of 'trademark' should prove a boon. The difficulties posed by the more restrictive examination practice are likely to be outweighed by the provision of a regime for protecting hitherto unregistrable aspects of trade dress and other nontraditional marks. Attention to timing and the strategies discussed above should allow brand owners to maximise the scope of protection for these marks.

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.

François Larose
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
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 you may opt out by clicking here

    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.

    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.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    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.

    By clicking Register you state you have read and agree to our Terms and Conditions