By Craig Armstrong

The most significant changes to Canadian trademark law evercome into force on June 17, 2019 (the coming into force, or “CIF” date). This bulletin summarizes those changes, and provides strategy recommendations.

The changes are comprehensive, but includethe following:

  • There will no longer be any requirement that a trademark be used in Canada prior to registration, nor that any use basis for an application be stated, such as “used in Canada since [date]”, or “proposed use in Canada”. Applications will proceed directly to registration after approval, unless opposed, with no requirement for use.
    • For currently pending applications based on proposed use, no Declaration of Use will be required after the CIF date. In some cases (see recommendations below), it will be advantageous to seek an extension of time to beyond the CIF date, to avoid the need for a Declaration of Use
  • Filing fees will increase to $330 for one class of goods and/or services, plus $100 for each extra class, vs. one flat fee of $250 at present (all amounts in Canadian dollars)
  • Renewal fees will increase to $400 for one class, plus $125 for each additional class, vs. the flat fee of $350 at present
  • The term of trademark registration and renewals will be reduced from 15 years to 10 years. Registrations completed prior to the CIF date will be for 15 years, but subsequent renewal terms will be 10 years each.
  • Use of the Nice Classification of Goods and Services will become mandatory as of the CIF date.
  • Canada joins the Madrid Protocol for international trademark applications, allowing Canadian applicants to file a single application designating multiple countries for protection
  • Divisional applications will become possible. This will be useful if an opposition or rejection relates to only some of the goods and services, and the applicant wants to register for the uncontested goods and services and fight for the others via a divisional application.
  • Recognition of non-traditional trademarks such as three-dimensional shapes, moving images, scents, texture, positioning of a sign, etc., as long as distinctive


Although every case is unique, certain new strategies should be considered:

  • File any new trademark applications before the CIF date
    • Avoids increased fees, especially for multi-class applications
    • Guards against pirates and squatters, who anecdotally appear to be filing hundreds of new applications in the hope of ransoming legitimate trademark owners who have not yet registered in Canada
  • For existing registrations, consider filing new applications before the CIF date, to expand on current goods and/or services. Applications can be filed based on proposed use, with no need for use and a Declaration of Use later.
  • For any current applications which have been allowed based on use in Canada, pay the final fee now, so that it is processed before the CIF date
    • 15 year initial term, instead of 10 years
  • For current applications which have been allowed based solely or partially on proposed use in Canada, file a Declaration of Use if possible now for all goods and services in the application, and pay the final fee
    • 15 year initial term, instead of 10 years
    • However, if the trademark is not presently in use with all goods and/or services, consider an extension of time for the Declaration of Use to beyond the CIF date
      • Avoids the need for a Declaration of Use, so that the registration can be granted for all goods and/or services
      • However, 10 year initial term would then apply, not 15

Have any questions… we’d be happy to help!