Canada: Are You Ready? Countdown To Implementation Of Canada's Amended Trademarks Act

Last Updated: May 22 2019
Article by Cynthia Rowden, Terry Edwards and Meghan Dillon

Long-awaited and much discussed amendments to Canada’s Trademarks Act will come into effect on June 17, 2019 (the “coming into force date”, or “CIF”). In order to avoid surprises, here’s what you need to know about existing applications, new applications filed as of the CIF, renewals, oppositions and registrations. In addition, as discussed below, the Canadian Intellectual Property Office (“CIPO”) will be temporarily deactivating all online services for several days prior to June 17 – making it important to plan in advance for processing of any steps that should be completed before the CIF.

Applications filed before June 17:

  • Any application that had not been approved as of April 18 will be reassessed after the CIF. At that time, Examiners in the Trademarks Branch of CIPO may reexamine applications for compliance under the amended Act, including with classification of goods and services and new distinctiveness examination criteria.
  • Classification will not be required for any application already advertised by June 17. However, CIPO may require classification at a later date. Class fees are not applicable to applications filed before the CIF.
  • Outstanding requirements to complete filing grounds, namely the filing of certified copies of foreign registrations and declarations of use, will not apply after the CIF.
  • Any application advertised before the CIF can be opposed based on current opposition grounds. That would include any application advertised before June 17 with an extension to oppose that expires after the CIF.
  • Applications advertised after the CIF will be subject to opposition on amended grounds, which include “bad faith filing” in addition to existing registrability, entitlement and distinctiveness grounds.
  • As of the CIF, advertisements will not display filing grounds, and errors in filing grounds will generally not form a ground of opposition.
  • Allowed applications may issue solely upon payment of the registration fee, regardless of the original filing basis (declarations of use will not be required).
  • Any registration that issues up to June 16 will have a 15-year term. If an application has been allowed, it is recommended to process registration requirements before the CIF to take advantage of a longer term. That may mean dropping a proposed use claim, if other filing grounds included use in Canada, or use and registration abroad. Alternatively, if the mark is not in use on all of the goods/services of interest, the applicant can wait until after CIF so that the filing of a declaration of use is not required. In that case the registration will have a 10-year term.

NOTE – if an applicant wishes to file a declaration of use now, it is recommended to do so as soon as possible, to ensure processing by CIPO before the CIF.

Applications filed on or after June 17:

  • Filing grounds will no longer be required. Applicants may file if they are using, or propose to use, and are entitled to use their marks in Canada.
  • Classification and class fees will apply to all applications filed on or after the CIF. Government filing fees will be $330 CA for the first class, and $100 CA for each additional class.

NOTE - class fees will be payable for all classes included in the application at the time of filing. Unlike other jurisdictions, such as the United States, an applicant cannot include many classes in the original application, pay a single fee, and reassess inclusion of multiple classes after examination. While an applicant will receive a filing date upon payment of a single fee, total fees for all included classes will be required, and failure to pay all fees will result in abandonment of the application. That means applicants must be sure which classes to include when filing.

  • Filings for a broader range of non-traditional marks will be possible, including taste, scent and texture. Generally speaking, non-traditional marks will require evidence of distinctiveness at the filing date in Canada.
  • Examiners may also require evidence of distinctiveness should they view a mark as not inherently distinctive.
  • New opposition grounds will apply – and will include bad faith filing.
  • Registration fees will no longer apply. All fees are payable on filing.

Renewals processed before June 17:

  • The current renewal term is 15 years. That term will apply to any registration due for renewal up to the CIF. Also, any registration due for renewal before the CIF, but renewed in the grace period after June 17, will issue for a 15-year term.
  • A single government renewal fee of $350 CA is payable until the CIF, regardless of the number of classes of goods/services. It is recommended, if possible, that multi-class registrations due for renewal after the CIF be processed before June 17 to take advantage of lower fees. While that will not impact the renewal term (all renewals due as of the CIF will have a 10-year term), it may result in cost savings for multi-class registrations.
  • Classification of registrations is not required for renewal before the CIF. However, CIPO may require classification of goods/services at a later date.

Renewals processed after June 17:

  • The renewal term will be 10 years.
  • On renewal, goods and services must be grouped and classified, and class fees must be paid. Government renewal fees will be $400 CA for the first class, and $125 CA for each additional class.

NOTE - renewal fees will be calculated based on the number of classes of goods/services in the registration at the time of renewal. Registrants may not pay class fees based only on the number of classes they wish to maintain. Instead, prior to renewal, registrations should be reviewed, not only to ensure that goods and services are grouped and classified, but that any unwanted classes are specifically removed before the renewal is processed.

Changes to oppositions and non-use cancellation (s. 45) proceedings:

There are many changes to opposition and s. 45 procedures, ranging from service rules to extensions of time, impacted by the amended Act and Regulations, as well as many new Practice Notices. As a general rule, apart from the transitional provisions impacting opposition grounds (noted above), new regulations and procedures will apply to all opposition and s. 45 proceedings as of the CIF date.

Madrid Protocol:

As of June 17, Canadians may take advantage of the Madrid Protocol to broaden their international trademark protection. Similarly, trademark owners from other countries will be able to designate Canada in an application for an international registration, or in any subsequent designation using the Madrid Protocol.

CIPO’s online services will be temporarily unavailable before June 17:

  • CIPO has advised that all online services, including filing, confirmation of use and payment of registration fees, filing of a statement of opposition, and access to the Trademarks Database, will be unavailable from June 13 to 6:00 AM on June 17.
  • On June 13 and 14, it will be possible to conduct business with CIPO by using approved local government offices for the filing of documents. However, if certain steps, such as payment of registration fees, are not processed (vs. filed) by June 17, the “new” law will apply.

NOTE – in order to avoid delays or the loss of any rights, CIPO has encouraged that communications with the Trademarks Branch be filed in advance of June 13.

As of June 17, there will be new online forms and procedures, new fees and a different trademark search interface.

Bereskin & Parr’s trademark team is here to help with all questions relating to the amended Trademarks Act, including all transition issues.

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.

Similar Articles
Relevancy Powered by MondaqAI
Fross Zelnick Lehrman & Zissu, PC
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Fross Zelnick Lehrman & Zissu, PC
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please 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