Trade and Service Marks

– Trademarks Act, RSC 1985, c T-13, as last amended in 2021.
– Trademarks Regulations, SOR/96-195, as last amended in 2022.

Note: various significant amendments to the Trademarks Act received royal assent on June 19, 2014. These amendments allowed Canada to accede to three trademark treaties: the Madrid Protocol, the Singapore Treaty and the Nice Agreement. The Trademarks Regulations have also now been revised, and all of these amendments are in force as of June 17, 2019. These amendments resulted in the introduction of the Nice Classification system for goods and services, as well as significant changes to opposition proceedings, grounds for filing, priority claims, and the term of registration, bringing Canada's trademarks regime in closer alignment with other jurisdictions.

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), since June 26, 1970.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since May 26, 1996.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since June 17, 2019.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, since June 17, 2019.
– Singapore Treaty on the Law of Trademarks, since June 17, 2019.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), as of January 11, 2024.


Applicant: the owner of the trademark, who may be an individual, firm, corporation, partnership or association.

Foreigners and nationals not living in the country: must appoint a trademark agent residing in Canada.

Trademarks of foreigners: an application may be based on: (1) application or registration in a Convention or WTO country of origin of the applicant and use of the trademark in some named foreign country; (2) actual use in Canada; (3) use in a Convention or WTO country and well-known in Canada; (4) proposed use in Canada. As for the general requirements for an application see particularities below.

Kinds of protection: only trademarks may be registered, as opposed to trade names or other trade designations.

Marks for services: these may be protected in the same manner as marks for goods.  

Non-traditional marks: the definition of a trademark includes anything that functions as a source indicator, including color per se, holograms, moving images, sounds, scents, tastes, and textures.

Trademark agent privilege: limited privilege covers communications between trademark agent and client that are (a) made for the purpose of seeking or giving advice with respect to any matter relating to the protection of a trademark or other marks; and (b) intended to be confidential.

Novelty: the trademark applied for must not be confusing with a trademark already registered or already applied for, or to a trademark or trade name already in use or made known in Canada. There is no prohibition to re-file identical trademarks.

Not registrable: (a) names or surnames of individuals still living or who have died within the past thirty years; (b) words clearly descriptive or deceptively misdescriptive in the English or French language of the goods or services or of their place of origin, etc.; (c) any mark that is not inherently distinctive; (d) the name in any language of the goods or services; (e) any mark, the adoption of which is prohibited (for example, royal arms, etc.; any matter falsely suggesting a connection with any living individual; scandalous, obscene or immoral words or devices; the portrait or signature of an individual still living or who has died within the past thirty years; denominations of plant varieties under the Plant Breeders' Rights Act; and protected geographical indications of wines, spirits, and agricultural products or foods). Note: a trademark that is not normally registrable under (a), (b), or (c) above may be registrable on submission of evidence of distinctiveness to the Registrar.

National flags: it is prohibited to register a mark containing the Canadian flag or flag of any Canadian province, as well as certain other national, territorial or civic flags without consent.

Names or portraits: names or surnames of individuals deceased for over thirty years may be registered.

Association marks: a certification mark is a mark that is used for the purpose of distinguishing goods or services of a defined standard with respect to character or quality, the working conditions under which the goods have been produced or services performed, the class of persons who have produced the goods or performed the services or the area within which the goods have been produced or services performed from goods or services that are not of such a standard.

Priorities: the applicant with the earlier filing date in Canada or Convention date has priority unless the other applicant claims an earlier date of use or making known in Canada, subject to opposition proceedings involving an assertion of an earlier date of use or making known in Canada by a third party.

Classification: Nice Classification (11th Edition).

Multi-class applications: possible.

Territory covered: Canada.

Filing requirements for an application:
1. The full name and address of the applicant. If an individual trading under a name other than his own, this trading name also;
2. Identification of the trademark; if the trademark is not a standard character word mark, then an appropriate representation of the trademark is required;
3. A list of the goods or services in association with which the trademark is used or proposed to be used, described in ordinary commercial terms and with Nice Classification; and
4. The prescribed fee.

Priority: priority must be claimed within six months of the earliest application filed in applicant's Convention or WTO country. A copy of prior application relied upon is not normally required, and is to be furnished only if requested by the Registrar of Trademarks.

Electronic filing: available.

For a change of name or address: no documents are required for recordal.


Amendment of application: may be permitted, however, an application may not be amended: (a) to change the identity of the applicant, except in the case of a transfer (assignment); (b) to substantially change the representation or description of a trademark; or (c) to extend the list of goods or services. There are further restrictions to amendment after application advertised for opposition.

Examination: formal examination as to registrability and inherent distinctiveness of the mark is conducted. For the Trademarks Office to approve an application for opposition, the applicant must be the first party to file an application for the trademark in Canada. While a consent letter may be filed, it does not have to be - and is often not - accepted by the Registrar for overcoming a confusion objection. There are no formal requirements; a letter can be simply signed by the party giving consent.

Disclaimers: available and always voluntary - the Trademarks Office does not currently request entries of disclaimers.

Divisionals: divisional applications are permissible.

Opposition – reasons and procedure: after approval, an application is advertised in the Trademarks Journal for opposition purposes. Any opposition must be filed within two months of the date of advertisement unless an extension is obtained. Opposition may be based on numerous grounds including that the application does not comply with formal requirements, that the application was filed in bad faith, that the trademark is not registrable, that the applicant is not entitled to registration, or that the trademark is not distinctive. Lack of entitlement can be shown by proof that the opponent had an earlier date of use or making known in Canada.

Application kept secret: applications are open to public inspection.

Appeal: an appeal against a decision of the Registrar may be made to the Federal Court of Canada within two months of the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow.

Urgent registration: there is no provision for urgent registration or expedited examination.

Provisional registration: not possible.

Publication: in the Trademarks Journal after examination.

Correction of registration: obvious errors may be corrected within six months from the day on which the trademark is registered or when the entry is made on the Register by writing to the Registrar; alternatively, the Federal Court has jurisdiction to correct errors on the Register.


Delivery of document: a certificate of registration (in electronic format only) is usually issued between thirty and thirty-six months after filing.

Beginning of protection: as from the date of registration.

Kind of property: goods and/or services.

Duration – extension: registration and renewal terms are ten years.

Compulsory character of registration: not compulsory.

User rights: rights arise from use. Registration merely creates a presumption of ownership.

Obligation to use: there is no explicit requirement regarding use. However, beginning three years after the registration date, any person may apply to have a trademark expunged if the subject trademark has not been used in Canada for the last three years. It may also be possible for a registration to be expunged in the Federal Court for lack of distinctiveness, at any time, if a trademark is not used in Canada. See “Nullification” below.

Marking of registered goods: not required, but is recommended particularly in respect of use by a licensee because existence of appropriate license is then presumed.

Text of marking: no specific text; licensee should identify use as being under license and identify trademark owner.

Renewal: every ten years.

Latest term for renewal: a request for renewal and the renewal fee must be filed in the Trademarks Office within six months after expiry of the term.

Term of grace for renewal: six months.

Modification of the mark: not provided for.

Changes in the list of goods/services: only permissible upon filing of a new or extension application.

Licenses: may be granted provided the owner has, under the license, direct or indirect control of the character or quality of the goods or services with which the mark is used by the licensee.

Assignment (possibility-form): a trademark, whether registered or unregistered, is transferable. There is no prescribed form.

Modification of Protection after Registration

Right of prior user: a prior user has the right to demand that a registration be expunged but he must show that he had not abandoned his trademark or trade name at the time of advertisement of the applicant’s application and must, in proceedings commenced after the expiry of five years from the date of registration, establish that the person who adopted the registered trademark in Canada did so with knowledge of the prior use.

Opposition to registered marks: not possible.

Compulsory licenses: not provided for.

Expropriation: not applicable.

Nullification: the Federal Court may invalidate a registration if (a) the trademark was not registrable at the date of registration; (b) the trademark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced; (c) the trademark has been abandoned; (d) (subject to qualifications) if the applicant for registration was not the person entitled to secure registration; (e) if the application for registration was filed in bad faith. 

Summary expungement: the Registrar may expunge a trademark, on the application of any person at least three years after the registration date, if the trademark has not been used in Canada for the immediately preceding three years, unless special circumstances excuse the absence of use.

Use” in association with goods includes (a) transferring the property in or possession of the associated goods in the normal course of trade, if the trademark was marked on the goods or their packaging, or if the trademark is in any other manner so associated with the goods that notice of the association is given to the transferee; and (b) exporting the associated goods from Canada if the trademark is marked on the goods or their packaging.

"Use" in association with services includes using or displaying the mark in the performance or advertising of the associated services. Use by a licensee is deemed to have the same effect as use by the trademark owner if the license gives the owner direct or indirect control of the character or quality of the goods or services. To constitute "use", the trademark must not deviate from its registered form so as to detract from the main features of the trademark. "Special circumstances" which excuse non-use must be peculiar or abnormal and must result from external forces rather than voluntary acts.

Validation of invalidated marks: not provided for but new rights may be acquired by use.

Provision for restoration: there is no provision for restoration.

Registration of invalidated marks: not provided for but new rights may be acquired by use.

Infringement and penalties: a trademark registration is regarded as infringed if a person, who is not entitled to its use under the Trademarks Act, sells, distributes or advertises goods or services in association with a trademark or trade name confusing with the registered mark. If successful in infringement proceedings, a trademark owner may obtain an injunction and be awarded damages or an accounting of the infringer's profits. Court orders for inspection, detention and prohibition of imported goods are also available. Additionally, a trademark owner may also file a Request for Assistance with the Canada Border Services Agency to assist in the identifying and detaining commercial shipments suspected of containing counterfeit trademark goods.