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For professionals responsible for trademark applications, registration, and enforcement in...
For practitioners handling trademark applications, registration, and enforcement in Canada, this guide focuses on the Trademarks Act, R.S.C. 1985, c. T-13) as the core, a patent attorney will systematically explain information essential for Japanese companies to protect their brands in the North American and Commonwealth markets. This includes CIPO (Canadian Intellectual Property Office) practices, government fees, major system reforms following Canada’s accession to the Madrid Protocol (2019), considerations specific to the bilingual English-French market, and the impact of Quebec’s Bill 96 (amendment to the French Language Charter).
Key Points of This Article
- Canada comprehensively revised its trademark law upon joining the Madrid Protocol in June 2019—achieving international harmonization
- Three major reforms in the 2019 amendment: Abolition of the “use requirement,” reduction of term from 15 to 10 years, and adoption of the Nice Classification
- Accession to the Madrid Protocol (June 2019). Japanese companies can now designate Canada via the Madrid Protocol
- Foreign applicants must appoint a representative resident in Canada (a lawyer or trademark agent)
- Examination Process: Formal examination → Substantive examination → Publication (2-month opposition period) → Registration
- Bilingual (English/French) Support: French trademark regulations strengthened under Quebec’s Bill 96 (2022)
- Enforcement of rights falls under the exclusive jurisdiction of either the Federal Court or the provincial Superior Courts
CANADA TRADEMARK
A comprehensive guide to the trademark system and practices in Canada, a key hub in the North American market, written by a patent attorney. This book systematically explains everything from CIPO applications to the 2019 amendments, compliance with Bill 96, and enforcement of rights in the Federal Court across 12 sections.
Table of Contents
- Executive Summary
- Basic Structure of the System and Legal Sources
- Three Key Points of the 2019 Major Amendments
- Applicant Eligibility and Required Documents
- Standard Process and Timeline Management
- Estimated Government Fees
- Trademark Requirements and Unique Provisions
- Opposition and Cancellation Proceedings
- Enforcement and Response to Infringement
- Quebec Bill 96 and French Language Regulations
- Differences Between the Japanese and Canadian Systems
- Practical Checklist for Japanese Companies
1. Executive Summary
Canadian trademark practice is a hybrid system of British common law and statutory law, centered on the Trademarks Act (R.S.C. 1985, c. T-13), with the Trademarks Regulations, the CIPO Examination Manual (TMOM), and case law (Federal Court and Supreme Court) governing applications, examination, and disputes.The Trademarks Act was comprehensively amended on June 17, 2019, concurrent with Canada’s accession to the Madrid Protocol, thereby achieving international harmonization.
Four Key Points to Keep in Mind for Canadian Trademark Practice
- "Use" Removed as a Registration Requirement in the 2019 Amendment—A Modern System on Par with Global Standards
- Government fees are denominated in CAD (Canadian dollars). The application fee for one class is CAD 458 (approximately 49,000 yen), which is relatively high
- Examination is a hybrid of the U.S.-style “distinctiveness” and the U.K.-style “prior conflicting trademarks”
- Enforcement proceedings may be brought before the Federal Court (covering all of Canada) or a provincial superior court. Compliance with Quebec’s Bill 96 is mandatory
2. Basic Structure and Legal Basis of the System
The “primary law” of the Canadian trademark system is the Trademarks Act (R.S.C. 1985, c. T-13), which underwent multiple amendments leading up to a major overhaul in 2019.Core provisions include the definition of a trademark (§2), registration requirements (§§12-14), application procedures (§§30-32), oppositions (§38), cancellations (§§57-59), and criminal penalties (Criminal Code §§406-411).
Role of CIPO (Canadian Intellectual Property Office)
CIPO (Canadian Intellectual Property Office)—an agency of the Department of Innovation, Science and Economic Development (ISED)—is responsible for trademark examination, registration, and information provision. Its headquarters are located in Gatineau (near Ottawa). Electronic filing via the e-Filing System is the standard procedure, and applications can be filed in both English and French.
Judicial Forums
| Agency | Jurisdiction and Characteristics |
|---|---|
| Trademarks Opposition Board (TMOB) | Quasi-judicial opposition and cancellation proceedings within CIPO |
| Federal Court of Canada | Has jurisdiction over all of Canada. Handles trademark infringement and cancellation lawsuits, as well as appeals of TMOB decisions |
| Provincial Superior Courts | Civil trademark infringement litigation (within the province) |
| Federal Court of Appeal | Appeals from Federal Court decisions |
| Supreme Court of Canada | Final Appeal (Supreme Court) |
3. Three Key Points of the 2019 Major Reform
Major Reforms Effective June 17, 2019
- Elimination of the “Use” Requirement—Previously, “trademark use” was a registration requirement, but now a declaration of use is no longer required
- Term of Protection: Shortened from 15 years to 10 years (to align with the Madrid Protocol)
- Adoption of the Nice Classification—Changed from Canada’s previously unique list of goods and services to the 45 classes of the Nice Classification
Significance of the Abolition of the “Use” Requirement
Prior to the 2019 amendments, actual use of a trademark in Canada was a prerequisite for registration. The amendments now allow registration based solely on an “intention to use.” However, non-use for three consecutive years remains a ground for cancellation, serving to prevent bad-faith applications.
4. Applicant Eligibility and Required Documents
In Canada, both individuals and corporations may file trademark applications. Foreign applicants must appoint a Canadian-based representative (a lawyer or trademark agent).
Simplified POA: A Power of Attorney (POA) no longer requires notarization or embassy authentication (a simplified POA is acceptable). The appointment of an agent must be explicitly stated at the time of filing.
Required Documents
- Application Form: English or French; CIPO e-Filing
- Trademark Specimen: JPEG/PNG; 3D and sound trademarks are also accepted
- Designated Goods and Services: 45 classes under the Nice Classification (multi-class applications permitted)
- Appointment of Representative: A lawyer or trademark agent based in Canada
- Priority Documents: If claiming priority under the Paris Convention, submit within three months of the filing date
5. Standard Process and Timeline
① Filing (CIPO e-Filing)
→
② Formal Examination
→
③ Substantive Examination (18–24 months)
↓
④ Publication of Trademark → ⑤ Opposition Period (2 months from publication) → ⑥ Registration → Renewal every 10 years
↓
④ Publication of Trademark → ⑤ Opposition Period (2 months from publication) → ⑥ Registration → Renewal every 10 years
Lengthening Examination Periods: Following the 2019 amendments, the time until substantive examination begins has tended to lengthen to 18–30 months due to an increase in applications and a shortage of examination resources. It is necessary to anticipate a total of 2–3 years until registration.
6. Estimated Government Fees
| Item | Fee (CAD) | Conversion to Japanese Yen |
|---|---|---|
| Application Fee (Electronic, 1 Class) | CAD 458.00 | Approx. 49,000 yen |
| Additional Class (per class) | CAD 139.00 | Approx. 14,800 yen |
| Fee for filing an objection | CAD 825.00 | Approx. 88,000 yen |
| Renewal fee (electronic, 1 class) | CAD 555.00 | Approx. 59,000 yen |
| Renewal Additional Category (per category) | CAD 173.00 | Approx. 18,400 yen |
7. Trademark Requirements and Specific Regulations
Registerable Trademarks
- Word Marks, Figurative Marks, Combined Marks
- Three-dimensional trademarks (3D Marks)
- Sound marks, color marks, scent marks, and tactile marks
- Position Marks, Motion Marks, Hologram Marks
- Collective Marks and Certification Marks
Absolute Grounds for Refusal (§12)
- Consisting solely of a name (if not distinctive)
- Descriptive or misleading descriptions of goods or services
- Geographical Indications and Indications of Origin
- Violation of Public Order and Morals
- Three-dimensional trademarks consisting solely of functional shapes
Relative grounds for refusal
- Likelihood of confusion with prior applications or registered trademarks (§16)
- Likelihood of confusion with a well-known trademark
- Application in bad faith (§38(2)(a.1), introduced by the 2019 amendment)
8. Opposition and Cancellation Proceedings
Opposition During the Publication Period (§38)
Oppositions may be filed with the TMOB (Trademarks Opposition Board) within two months of the trademark publication. Applications for an extension of this period are also permitted.
Cancellation for Non-Use (§45 / Section 45 Notice)
After three years from registration, a third party may file a “Section 45 Notice.” The trademark owner is obligated to submit evidence of use in Canada within three months. The requirements are “minimal,” and providing evidence of use is relatively straightforward.
9. Enforcement and Response to Infringement
Choice of Forum
Two Options
- Federal Court of Canada—Jurisdiction over all of Canada; specializes in intellectual property
- Provincial Superior Court—Jurisdiction limited to the province; claims for unfair competition (passing off) may also be brought
Remedies
- Injunctions (interim and permanent)
- Damages or disgorgement of profits
- Punitive Damages—Intentional or Willful Infringement
- Order for the surrender or destruction of infringing goods
CBSA (Canada Border Services Agency) Border Interventions
Trademark owners can stop the importation of counterfeit goods by submitting a Request for Assistance (RFA) to CBSA. There is no registration fee, and it is valid for two years.
10. Quebec’s Bill 96 and French Language Regulations
Quebec’s Most Important Regulation: Bill 96 (2022)
An amendment to the Charter of the French Language, to be implemented in phases starting June 1, 2025. It mandates the priority display of French text on product packaging, signs, advertisements, and websites. If a trademark is in English only, it is generally necessary for the trademark to be registered in Canada in order to utilize the “Recognized Trademark” (registered or well-known trademark) exception.
Response Strategies for Japanese Companies
- Utilizing the “Recognized Trademark” Exception Through Canadian Trademark Registration
- Consider using French versions of logos and brand names
- Prioritizing French text on packaging, labels, and signage
- Seek prior confirmation from the OQLF (Office québécois de la langue française)
11. Differences Between Japanese and Canadian Systems
| Item | Japan | Canada |
|---|---|---|
| Application Language | Japanese | English or French |
| Representative | Patent Attorney | In-house attorney or trademark agent |
| Requirements for use | Not required at the time of registration | Abolished by the 2019 amendment |
| Term of validity | 10 years | 10 years (15 years prior to the 2019 amendment) |
| Cancellation for non-use | 3 years | 3 years (Section 45 Notice) |
| Judicial Structure | Patent Office → Intellectual Property High Court | CIPO/TMOB → Federal Court |
| French Language Support | Not required | Compliance with Quebec Bill 96 is mandatory |
12. Practical Checklist for Japanese Companies
Before Filing
- Appointment of a Canadian-based agent (required)
- Conduct prior art search in the CIPO Trademarks Database
- Consider a French-language trademark version to comply with Quebec Bill 96
- Decide between filing via the Madrid System or direct filing
After Filing
- Commence use in Canada within 3 years of registration (to prevent cancellation for non-use)
- Continuous retention of evidence of use (to comply with Section 45 notices)
- CBSA RFA Registration for Counterfeit Goods Customs Measures (Free, Valid for 2 Years)
- Option to file in Federal Court or Provincial Court upon discovery of infringement
Summary
The Canadian trademark system is characterized by two major features: alignment with the Madrid System following the major 2019 amendments, and the French language requirements under Quebec’s Bill 96. For Japanese companies to successfully establish their brands in the Canadian market, it is crucial to combine the strategic use of the Madrid System with direct applications, along with the deployment of French-language trademarks to comply with Bill 96, and to establish an effective system for enforcing rights in the Federal Court. Please also see our services for Madrid System international trademark applications and trademark registration.
Consultation on Canadian Trademark Applications
EVORIX Intellectual Property Law Firm provides comprehensive support for trademark applications and enforcement in major North American countries, including Canada. Our patent attorneys, with extensive practical experience and working in collaboration with local agents, will assist you with everything from strategizing between Madrid Protocol and direct filings to addressing Quebec’s Bill 96 and handling infringement cases in the Federal Court.
Sources & References
▼ Primary Legislation
- Trademarks Act, R.S.C. 1985, c. T-13 (Trademarks Act) + Multiple Amendments (Most Recent Major Amendment: June 17, 2019)
- Trademarks Regulations
- Combatting Counterfeit Products Act (2014; Border Measures)
- Bill 96 / Charter of the French Language (Quebec, 2022)
- Criminal Code §§406-411 (Criminal Penalties for Trademark Counterfeiting)
▼ Official Sources
- CIPO (Canadian Intellectual Property Office) Official Site: ic.gc.ca/cipo
- CIPO Trademarks Database (Trademark Search): ic.gc.ca/trademarks-database
- WIPO IP Portal (Canada): wipo.int
- WIPO Lex (Canadian IP Laws Database): wipo.int/wipolex
- Federal Court of Canada: fct-cf.gc.ca
- Accession to the Madrid Protocol (June 17, 2019): WIPO Madrid System
- OQLF (Office québécois de la langue française): oqlf.gouv.qc.ca
▼ Explanatory Materials from Japanese Organizations
- JETRO (Japan External Trade Organization) Report: "Intellectual Property System in Canada"
- Japan Patent Office: "Information on Foreign Industrial Property Rights Systems (Canada)"
- INPIT Intellectual Property Information on Emerging Countries
▼ International Agreements
- Paris Convention (Canada acceded in 1925)
- Madrid Protocol (Canada acceded on June 17, 2019)
- TRIPS Agreement (WTO accession: 1995)
- USMCA (United States-Mexico-Canada Agreement) (Entered into force in 2020)
- CPTPP (Entered into force in 2018)
- CETA (Comprehensive Economic and Trade Agreement, Canada-EU) (Entered into force in 2017)
*This article is based on the above primary sources and official information as of April 2026 and is intended to provide general information. As laws and regulations are subject to change, we recommend consulting primary sources and experts for the most up-to-date information. For specific decisions regarding individual cases, we recommend consulting experts, including local representatives.
AUTHOR / Author
Takefumi Sugiura
Representative Patent Attorney, EVORIX Intellectual Property Firm
Assists clients across a wide range of industries—including IT, manufacturing, startups, fashion, and healthcare—from patent, trademark, design, and copyright applications through to trials and infringement litigation. Also well-versed in intellectual property strategies for cutting-edge fields such as AI, IoT, Web3, and FinTech. Member of multiple organizations, including the Japan Patent Attorneys Association, the Asian Patent Attorneys Association (APAA), and the Japan Trademark Association (JTA).