Canada: Bill C-86 – Canadian Government Proposes More Changes To Trademark Rights In Canada

On October 29th, Canada's federal government tabled an omnibus budget implementation bill that includes many provisions relating to intellectual property, including several that will impact trademark rights in Canada. Bill C-86, entitled The Budget Implementation Act 2018, No.2, is more than 800 pages long. It amends dozens of existing Federal laws, creates new government departments, and includes new statutes in their entirety. For example, a new Act creating a "College" for the licensing and regulation of patent and trademark agents is embedded within the Bill.

The Bill contains many provisions that address long-standing complaints about trademark practice in Canada, including the protection of official marks, and adds clarification and certainty regarding changes proposed by earlier legislation amending the Trademarks Act. It is the second omnibus budget bill to have a substantial impact on the Trademarks Act and the trademarks landscape in Canada. The first, Bill C-31, entitled Economic Action Plan 2014 Act, No.1, was introduced in 2014 and contains countless amendments to the Trademarks Act, including the removal of use" as a registration requirement. While passed, the amendments are not yet in force, although the government has promised the implementation as soon as late spring/early summer 2019.

The length and details of the new Bill require careful study, but highlights of the proposed changes include:

  1. New "bad faith" opposition and expungement grounds will be added, responding to the concern that removing "use" as a registration requirement may encourage squatters to crowd the Register.
  2. Until the third anniversary of any registration, actions for infringement and depreciation of goodwill will require proof of use of the registered mark in Canada, or exceptional reasons to excuse non-use. This addresses potential abuse and, possible constitutional challenges that may arise following the amendments the eliminate use as a registration requirement. Before registration, trademark owners must rely upon common law rights in any challenge, which are normally dependent on use in Canada or elsewhere. After three years, any registration can be cancelled for non-use, thus deterring plaintiffs from relying on registrations for marks that are not in use. What remains unclear is what use will satisfy this requirement and whether use with one or more, but not all, goods or services will be sufficient.
  3. The protection of official marks published by public authorities, under s. 9 of the Trademarks Act, will finally have some limits. The Bill provides that prohibitions against use and registration of marks that are the same as, or resemble, published official marks will not apply if the entity who requested publication of the official mark is not a public authority, or no longer exists. Also, the Registrar may itself, or on request, publish that official mark rights no longer apply. Many brand owners want to see limits on s. 9, for example through the addition of opposition and/or renewal provisions for such marks. The proposal in Bill C-86 is more limited and raises the issue of how a determination will be made on elimination of rights. Another issue is that the amendments do not address the situation of non-use or abandonment of the published mark. In addition, the proposed amendment only applies to a subset of s. 9 marks—those advertised on behalf of public authorities in Canada—it does not address s. 9 rights for other entities, including universities. Nevertheless, the changes are a welcome statutory limitation on s. 9 rights.
  4. The Registrar will be permitted to made orders for costs, case management, and confidentiality of documents filed in contested proceedings relating to geographic indications, oppositions, and non-use proceedings (s. 45).
  5. On appeal of any decision of the Registrar, new evidence may only be filed "with leave" of the Federal Court. Currently, new evidence may be filed without leave, and many parties elect to file no, or minimal, evidence before the Registrar, saving it for a possible appeal. In addition, the amendment makes clear that the Court will be given its own discretion to consider this new evidence on appeal.
  6. Bankruptcy laws will be amended to protect licensees who are in compliance with existing agreements from the impact of sale or other disposition of assets of bankrupt or insolvent persons and companies.

Bill C-86 contains other amendments to renewal procedures, relevant dates for assessing distinctiveness, and, as noted above, an entire new Act dealing with regulation of patent and trademark agents.

The transition and coming into force provisions are complicated, since many sections of this Bill amend provisions in earlier amendments to the Trademarks Act that are not yet in force. Given that more than four years have passed since the last major amendments were passed, and are still not implemented, it is difficult to predict how quickly the Bill C-86 changes will become effective.

The intellectual property provisions in Bill C-86 fall under the heading of "Intellectual Property Strategy", and are designed to improve the IP landscape for Canadians and other owners of IP in Canada. Many of the Bill's trademark provisions address long-standing problematic issues, such as official marks of public authorities. Others are designed to limit abuse of rights issues that are already apparent from the Trademarks Act amendments passed in 2014, but not yet implemented. The recent USMCA negotiations suggest that even further amendments may be required, for example, to deal with seizure of counterfeit goods "in transit" through Canada, raising the possibility of additional amendments to Bill C-86 before it is final. What is certain is that there are many changes ahead for brand owners.

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.

Cynthia Rowden
R. Scott MacKendrick
Tamara Céline Winegust
Similar Articles
Relevancy Powered by MondaqAI
Goldman Sloan Nash & Haber LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Goldman Sloan Nash & Haber LLP
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