Introduction to the Reform of Canadian Trademark Registration Examination

In recent years, the Canadian Intellectual Property Office (CIPO) has introduced a series of reforms to address the long-standing problem of delays in trademark examinations and to improve the efficiency and predictability of the litigation process. In the past, it could take four years or even longer for a trademark application to receive its first examination opinion. Now, this time has been significantly shortened due to the reforms.

Beginning January 1, 2024, CIPO implemented a benchmark examination timeline, committing to a first examination of select-list trademark applications (i.e., applications relying solely on pre-approved goods and services) within 18 months, and a first examination of all other electronic applications within 28 months. While these examination standards established by CIPO are not legally binding, they serve as internal performance indicators and reflect CIPO's renewed focus on timely service delivery. To reinforce this commitment, CIPO has introduced a compensation policy that automatically refunds a portion of the applicable fees, such as 25% or 50%, if service standards are not met. Applicants do not need to formally apply, providing procedural protection for applicants affected by delays.

To achieve these benchmarks, CIPO has significantly expanded its examination capacity, hiring more than 160 new examiners since 2023. By mid-2025, the average time for the first examination of trademark applications has been significantly reduced to approximately 10.5 months for Madrid Protocol applications, approximately 9.3 months for Selective List applications, and approximately 11 months for all other countries, representing an improvement of more than two years compared to 2022.

Canadian trademark registration is based on the principle of "prior use". Under Canadian trademark law, a trademark is broadly defined as:

• A sign or combination of signs used or intended to be used by a person to distinguish his goods or services from those of others
• Certification mark

Canada recognizes various forms of trademarks, including non-traditional trademarks such as colors, sounds, and smells, which can be protected in Canada by meeting certain conditions. This provides businesses with greater creative space in brand creation and protection.

Distinctiveness Standard

• Distinctiveness remains the primary principle and core standard for trademark registration in Canada. CIPO may oppose a trademark's registration based on a finding that it is not inherently distinctive (NID). NID oppositions are often filed under Section 12 of the Canadian Trademarks Act, which prohibits the registration of marks that are clearly descriptive or misleading as to the nature or quality of the goods or services, the conditions of production, the workers involved, or the source of the goods or services, or that consist primarily of a given name or surname.
• If the applicant can prove that the mark was already distinctive to the applicant on the date of application, registration is still possible. However, evidence of sustained use of the mark in all Canadian provinces and territories is required. If use is limited to certain areas, registration may also be affected. The burden of proof for non-traditional trademarks may be even higher than for traditional trademarks.

Unique prohibited sign categories

Section 9 of the Canadian Trademarks Act introduces a unique category of prohibited marks in Canada, which includes marks that are scandalous, obscene, immoral, or falsely suggest an association with a person. Among these subcategories are official marks that are publicly adopted and enjoy broader protection than conventional trademarks.

• Official marks are not subject to distinctiveness, registrability, or conflict with existing trademarks. Once the government requests public notice of adoption and use, the mark is advertised and can indefinitely prevent the registration of any confusingly similar trademarks unless the official mark holder agrees.
• The amendments to the Trademark Law, effective April 1, 2025, allow for the revocation of public notice of an official mark when it is no longer in use or when an entity ceases to qualify as a public authority. In conjunction with this change, CIPO published on April 1, 2025, the procedure for requesting the revocation of an official mark under Section 9(4) of the Law. This provides a practical and accessible mechanism for clearing obsolete official marks from the registration, bringing practical relief to applicants who were previously hampered by dormant rights.

Consent and coexistence agreements have limited impact

Unlike many other jurisdictions, Canada assigns less weight to registration consent or coexistence agreements between entities during the trademark registration process, even if they are agreements between related entities. The court confirmed that confusion analysis always proceeds from the perspective of the consumer, rather than relying on coexistence agreements between the parties. A trademark owner's consent to a competing mark does not determine its registrability.

Since 2019, applicants no longer need to claim use to obtain registration. However, they must have used the mark or have a genuine intent to use the goods or services listed on the date of application. Beginning April 1, 2025, trademark owners must also demonstrate actual use in Canada before initiating enforcement action within the first three years after registration. This requirement ensures that early enforcement actions are based on actual market use, rather than solely on trademark registration.

Basic requirements for trademark applications

All Canadian trademark applications must contain some basic information, such as the applicant's details and a list of goods and services according to the Nice Classification system. These goods and services may be described either by a "selection list" or in "ordinary commercial terms."

Additional requirements apply to different types of trademarks. For word marks, the application must include a statement indicating that the mark will be registered in standard characters. Design marks submitted in color must include a color statement; otherwise, they should be submitted in grayscale.

For non-traditional trademarks, applications must meet additional requirements. For example, an application for a certification mark must state the criteria by which it is defined and state that the applicant is not engaged in the manufacture, sale, lease, or provision of services in connection with the use or proposed use of the certification mark.

Changes in fee structure

Trademark application fees in Canada are based on the number of Nice Classification classes. Canada allows and encourages multi-class applications, optimizing the fee structure by offering fee discounts for each additional class. Effective January 1, 2024, most trademark-related fees increased by 25%, with a further 4.4% increase expected on January 1, 2025.