Canada: Six Key Trademark Filing And Protection Strategies For Canada In 2018

As 2017 draws to a close and we begin to look forward to the new year, the countdown to the implementation of Canada's new trademark law begins in earnest. Announced in 2014, Canada's Bill C-31 is expected to be implemented in full early in 2019. The Madrid Protocol, the Nice Classification system and a myriad of other changes to Canadian law and practice will then be fully in effect.

As 2017 draws to a close and we begin to look forward to the new year, the countdown to the implementation of Canada's new trademark law begins in earnest. Announced in 2014, Canada's Bill C-31 is expected to be implemented in full early in 2019. The Madrid Protocol, the Nice Classification system and a myriad of other changes to Canadian law and practice will then be fully in effect.

A very significant change is the removal of the requirement to provide information regarding use of a trademark in Canada during the application and registration process. This will have the effect of making the registration process easier, most likely faster and in some cases less expensive than the current system. However, while the changes will come with benefits, there will be some new challenges as well. A few key strategies can be employed during the months that remain before the new law takes effect in order to both obtain maximum benefit from the current legal landscape for trademarks in Canada and to position brand owners for the upcoming new law:

  1. Search now, to determine the availability of marks for use and registration in Canada.

    Canada is not becoming a first-to-file country. The use of a trademark in Canada will remain a key factor for determining the priority of rights to the mark once the new law comes into effect. However, once new applications which lack any use information are on file, it will be harder to determine which party has entitlement to a mark. Thus, searching before the end of 2018 may result in cost savings, as without use information marketplace investigations may be necessary in order to determine which party has first Canadian use of the mark.

  2. File now, to avoid new requirements for proof of distinctiveness.

    The new law will include requirements for submitting proof of distinctiveness for sound marks, which are currently available for registration without this limitation. Moreover, it will be open to an examiner to make a preliminary objection to the registration of a mark on the basis that it is not inherently distinctive. While it is not yet completely clear under what circumstances the latter provision may be invoked or what form will be required for the submission of proof of distinctiveness, the requirement will undoubtedly increase the cost of the application process in cases where it is applied.

  3. File now, to obtain the benefit of a country-of-origin registration.

    The current Canadian Trademarks Act provides trademark applicants who have a registration in their country-of-origin outside of Canada with a benefit when seeking to register marks in Canada that are descriptive, marks that are the name of the goods or services or marks that fall into the category of a name or surname. While evidence showing acquired distinctiveness is required in order to register the mark, the extent of evidence that is required is somewhat less than that required when there is no country-of -origin registration. This benefit will not be included in Canada's new law.

  4. Review your portfolio now, to ensure that your important brands are protected in Canada.

    The requirement that a mark that is the subject of an application for registration in Canada be used or proposed to be used in this country is embedded in the definition of a trademark in Canada's new law. However, there is no requirement to specifically state an intention to use the mark or date of first use of the mark, nor is there requirement for filing Declaration of Use before proposed marks are registered. There is some concern that the new system will be more attractive to those, commonly referred to as pirate or squatters, who wish to register marks for illegitimate purposes. Whether the change will actually lead to many such applications remains to be seen, but the possibility nonetheless provides a good reason to conduct a portfolio review and ensure that important brands are protected at this point in time.

  5. Implement a watch service now, to make sure that you oppose applications when appropriate.

    A watch service for newly filed and published applications will be more important under Canada's new law. Since use information need not be included in an application, filing will be easier and applications will likely proceed quickly. Remaining alert to filings by competitors and possibly illegitimate parties will be advantageous. Making note of and successfully opposing an application before it proceeds to registration will avoid the necessity of expungement proceedings, which require an application to the Federal Court of Canada or non-use cancellation proceedings, which are available only after the mark has been registered for three years.

  6. File now, to save on filing fees for brands that span numerous classes of goods and/or services.

    Canada is currently a bargain for trademark filers, with a flat fee for filings that is unaffected by the number of classes of goods and services included in an application. Along with the Nice system, the new law will bring a fee-per-class structure. Filing now will save costs for brand owners who anticipate the need to file for trademarks for goods/services that span multiple classes.

In summary, Canada's new trademark law will bring with it benefits for brand owners globally, including the ability to file using the Madrid system and providing a Canadian registration process that will be easier, likely faster and in some cases less expensive. However, by giving consideration to these six key strategies and planning now, it will be possible to take advantage of some of the benefits of the current law and maximize positioning for the implementation of the new law in the short time remaining before the new law is fully in force.

For further information, please contact Keltie Sim Luft or 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.

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