Canada’s long-anticipated trademark reforms took effect on 17 June 2019 — simplifying domestic registration, opening access to the Madrid system, and removing the use requirement that had defined Canadian practice. Written before commencement, this note records what changed and how the predictions held up.
The major amendments
1. An expanded definition of a trademark. Non-traditional marks — including scent, taste and texture — became proper subject matter. The Trademarks Office gained a new power to request evidence of distinctiveness in support of any application, which non-traditional marks were always likely to encounter.
2. Nice Classification. Goods and services to be grouped according to the Nice Classification.
3. Madrid Protocol. The WIPO-administered system implemented, opening Canada to international registrations.
4. No use requirement at filing. No information on use in Canada or elsewhere required when filing, and Declarations of Use no longer required. This was the most fundamental change — Canadian practice had been built around use.
5. No certified copies of foreign registrations required.
6. Divisional applications became available.
7. Letters of protest may be filed against another party’s mark during examination.
8 and 9. Shortened terms. Registration and renewal terms reduced from 15 years to 10, with transitional rules turning on whether a registration issued or expired before or after 17 June 2019 — pending applications registered before that date receiving a one-time 15-year term, and everything afterwards running on 10-year cycles.
Applications pending at commencement could register after advertisement with no attestation as to use.
The advice at the time
The recommendations were all timing-driven, and are now of historical interest only: filing multi-class applications before 17 June 2019 to take advantage of the lower flat fee before per-class fees arrived; classifying existing applications voluntarily to avoid later delays; registering before commencement to secure a 15-year term; and renewing multi-class registrations early at the flat renewal fee.
Those windows closed on 17 June 2019. What remains useful is the underlying point: fee structures shifting from flat to per-class substantially changes the cost of a broad multi-class filing, and that is worth watching for in any jurisdiction announcing Nice adoption.
The squatting problem — and the answer
The most prescient part concerned what removing the use requirement would invite. Further amendments were announced specifically to address the anticipated growth of trolls and squatters under the new regime:
- requiring owners of recent registrations to show evidence of Canadian use within the first three years post-registration to sustain an infringement action or a claim for depreciation of goodwill;
- expanding grounds of opposition to include bad faith;
- allowing the Opposition Board to grant confidentiality orders and apply case management;
- cost consequences against the losing party; and
- limits on filing new evidence on appeal to the Federal Court.
These were enacted alongside the main reforms and took effect with them. The bad faith ground of opposition and the three-year use requirement for enforcement are now features of Canadian practice.
The pairing is instructive for any jurisdiction considering the same move. Removing the use requirement at filing lowers the barrier for squatters, so the safeguards belong at enforcement instead — a registrant who has not used the mark within three years cannot sue on it. India’s structure achieves a comparable result differently, through Section 34 prior user rights and non-use cancellation after five years and three months.
The takeaways
- In force 17 June 2019 — Madrid, Nice, and no use requirement at filing.
- Scent, taste and texture became registrable, subject to distinctiveness evidence.
- Terms shortened to ten years, with transitional 15-year entitlements.
- Bad faith opposition and a three-year use requirement were added to counter squatting.
Frequently asked questions
Does Canada require use to register a trademark? Not at filing — the use requirement and Declarations of Use were removed with effect from 17 June 2019.
How long does a Canadian trademark registration last now? Ten years, with ten-year renewal terms, replacing the earlier fifteen-year periods.
Can non-traditional marks be registered in Canada? Yes — scent, taste and texture became registrable subject matter, though the Office may require evidence of distinctiveness.
How does Canada address trademark squatting? Through a bad faith ground of opposition, and a requirement that owners of recent registrations show Canadian use within three years to sustain an infringement action.