Canada: Peering Over The Neighbours' Fence: Key Differences In Trademark Laws Between Canada And The U.S.

Last Updated: June 1 2018
Article by Daniel Anthony and Jamie-Lynn Kraft

As trade talks between Canada and the United States dominate the headlines, it is hard to ignore the strong economic ties between these neighbouring nations. For example, the total volume of goods exported from the U.S. in to Canada exceeds total combined exports to Germany, France, the UK, Sweden and Italy. In addition, 90% of the Canadian population lives within 200 miles of the U.S./Canada border and is exposed to U.S. media and U.S. brands on a daily basis. Yet, many important U.S. based brands that are known or used in Canada are not registered in Canada.

While Canadian trademark laws and rules bear many similarities to those in the United States, there are also important differences to bear in mind when filing a cross-border application. These neighbouring jurisdictions will become more similar once the amendments to the Canadian Trademarks Act come into effect in 2019. This article outlines some of the most important differences today, and highlights how changes to Canadian IP laws will impact US trademark and brand owners.

I.      Neighbourly differences

Descriptive marks. Both Canada and the U.S. prohibit marks that are descriptive, prohibiting "clearly descriptive" marks in Canada and "merely descriptive" marks in the United States. A descriptiveness objection may be overcome in both countries with evidence that the marks have been so used as to become distinctive. However, the United States also enjoys a Supplemental Register, which has no counterpart in Canada. The Supplemental Register allows for the registration of marks that are considered to be merely descriptive, provided that those marks have been used in the United States and are not considered to be generic. 

Specimens and statements of use. In Canada, there is no requirement to submit a specimen to support a claim of use. In contrast, in the United States, use must be supported by specimens evidencing how the trademark is used in commerce. Once the amendments to the Canadian Trademarks Act come into force in 2019, it will no longer even be necessary to claim or declare use prior to registration. This is a substantial departure from United States practice and will bring Canada more in line with European practice.

Proposed use versus actual use. If an application in Canada is filed on the basis of proposed use when there has already been use of the trademark in Canada at the time of filing, such application is vulnerable to opposition on the ground that the application was improperly filed. However, once the amendments come into force, this will no longer be an issue since applicants will not be required to claim whether or not they have used the trademark in Canada. In the United States, an application may be filed on the basis of intent to use, even if the mark has actually been used in the United States. The application can simply be amended when the time comes to file the Statement of Use.

Disclaimers. Prior to 2007, the Canadian Trademarks Office routinely requested that applicants disclaim portions of their trademarks that were considered to be not independently registrable (due to descriptiveness, for example). This requirement was disposed of in 2007. However, the United States Trademarks Office continues to request such disclaimers.

II.      Moving towards neighbourly harmony

Canada is completing the last steps necessary for implementing its new trademark law. The significant changes are due to come into effect in 2019 (see our February 12, 2018 IP Update). Many of these changes will bring Canada's trademark laws and rules closer to those of American trademark practice. 

The following outlines some of the ways in which the neighbours are moving closer together:

Classification. In the United States, goods and services must be categorized according to the Nice classification system and there are additional filing, maintenance, and renewal fees based on the number of classes contained in an application or registration. In contrast, Canada does not currently adhere to the Nice classification system. Today in Canada, there is a single filing fee, a single registration fee, and a single renewal fee, regardless of the number of classes of goods and services contained in an application or registration.

Once the amendments come into force, Canada will adopt the Nice system, including implementing per-class fees for applications and renewals, which will generally result in an increase in government costs for brand owners. Additionally, in the last year, there has been a dramatic increase in multi-class applications, many by trolls or squatters seeking to obtain registration for marks across all 45 classes of goods and services (see our March 12 IP Update for more on this). The Canadian government has recently announced that it will introduce new legislation as a counter-measure against this activity.

Renewal. In the United States, the term of registration is 10 years, renewable indefinitely in increments of 10 years. The current registration term in Canada is 15 years, renewable indefinitely in increments of 15 years. Once the amendments come into force, the registration period in Canada will also be 10 years. However, unlike in the U.S., no specimens nor statement of use is required to renew a registration.

Divided applications. In the United States, an application may be divided into two or more separate applications for any reason. The applicant preserves the filing date for all the goods and services covered by the application. Currently in Canada, applications may not be divided. However, once the amendments come into force, divisional applications will be permitted in Canada.

Madrid. The Madrid Protocol is an international multilateral agreement for the registration of trademarks. The U.S. has been a signatory to this agreement for many years, which permits applicants to seek trademark registration in over 90 countries worldwide based on a single original application. Canada has now signed the Madrid Protocol and, once the amendments to the Canadian Trademarks Act come into force, Canadian applicants will have the option of using the Madrid Protocol where appropriate.

These differences in Canadian trademark procedures that exist today and the upcoming changes that will introduce similarities with U.S. trademark laws highlight the importance of having a strategy to manage cross-border portfolio matters. Above all, we recommend seeking advice now on Canadian trademark and filing strategies from an experienced Canadian practitioner.

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.

Daniel Anthony
Jamie-Lynn Kraft
In association with
Related Topics
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