Trademark protection arises through
See below
TerraLex Cross-Border Guide to Cross-Border Trademark Guide
Welcome to the TerraLex cross-border trademark guide
Utilizing the TerraLex Cross-Border Trademark Guide, you can now compare trademark regulation across jurisdictions as well as connect with practitioners.
How to Use: You can use the tools below to create bespoke reports for the jurisdiction(s) and topic(s) covered. Click into single jurisdiction for one location or use the compare tool to compare multiple jurisdictions. Select the jurisdictions and topics of interest to create your unique report. You also have the option to print or download using the ellipsis button in the top right corner.
Canada Cross-Border Trademark Guide Guide
- Authors:
- Leila Rafi, Peter Giddens, Pablo Tseng
- Date posted:
- 12/10/2022
- Last update:
- 21/07/2025
Generalities
1.1. Simple effective use in commerce?
Yes.
1.2. Registration?
Yes.
1.3. Cautionary notice?
No.
1.4. Intensive use (notoriety)?
Yes. Canada does not have special protection for “famous marks”. Intensive use, just as simple effective use, in commerce, provides a trademark owner with rights.
1.5. Public recognition?
No.
1.6. Well-known character?
No.
1.7. Other (if yes, please specify)?
N/A
Registrable types of mark
See below
2.1. Individual mark?
Yes.
2.2. Collective mark?
No.
2.3. Certification mark?
Yes.
2.4. Well-known mark?
No. Canada does not have special protection for “famous marks”. Intensive use, just as simple effective use, in commerce, provides a trademark owner with rights.
2.5. Other (if yes, please specify)?
N/A
Registrable forms of mark
See below
3.1. Word mark?
Yes.
3.2. Figurative mark with word elements?
Yes.
3.3. Figurative mark?
Yes.
3.4. Shape mark?
Yes.
3.5. Shape mark with word elements?
Yes.
3.6. Position mark?
Yes.
3.7. Pattern mark?
Yes.
3.8. Color (single) mark?
Yes.
3.9. Color (combination) mark?
Yes.
3.10. Sound mark?
Yes.
3.11. Motion mark?
Yes.
3.12. Multimedia mark?
Yes.
3.13. Hologram mark?
Yes.
3.14. Other (if yes, please specify)?
Yes: - Three Dimensional
- Taste
- Scent
- Mode of Packaging Goods
Possibility of claiming a foreign priority
Yes.
4.1. If yes, what is the time limit (months from date of…)?
Six months.
Classification of goods and services
See below
5.1. Nice classification adopted (if yes, indicate applicable version)?
Yes (11th Edition)
5.2. Local subclass system?
No.
Possible claims against new application
See below
6.1. Opposition proceedings implemented in trademark law?
Yes.
6.1.1. If yes, is the basis for opposition a prior registered trademark?
Yes.
6.1.2. If yes, is the basis for opposition a prior pending trademark application?
Yes.
6.1.3. If yes, is the basis for opposition a non-registered trademark in use?
Yes.
6.1.4. If yes, is the basis for opposition a non-registered notorious/famous mark?
No, a trademark owner can claim previous use of a notorious/famous mark but there are no special protections for famous marks.
6.1.5. If yes, is the basis for opposition a prior company name/trade name?
Yes.
6.1.6. If yes, is the basis for opposition absolute grounds?
Yes.
6.1.7. Other (if yes, please specify)?
N/A
Observations from third parties? (If yes, indicate the basis for such observations.)
Yes.
7.1. Prior registered mark?
Yes.
7.2. Prior pending trademark application?
Yes.
7.3. Prior non-registered trademark in use?
No.
7.4. Prior non-registered notorious/famous mark?
No.
7.5. Prior company/trade name?
No.
7.6. Absolute grounds?
Yes.
7.7. Other (if yes, please specify)?
Yes, registered trademark(s) are being used in the application to describe the goods or services.
Mandatory formalities preliminary to filing application?
No.
8.1. Similarity search
No.
8.1.1. If yes, what is the time frame (weeks/months) and approximate cost?
N/A
8.2. Others?
N/A
8.2.1. If yes, what is the time frame (weeks/months) and approximate cost?
N/A
Specification of goods and services
Class system
See below
9.1. Single class system?
No.
9.2. Multiclass system?
Yes.
9.2.1. Separate applications for goods and services mandatory?
No.
Possible restrictions on goods/services (e.g. alcoholic beverages, retail services, etc. not allowed, or only class headings eligible, etc.)
No.
10.1. If yes, please specify.
N/A
Special claims/regulations
See below
11.1. Claim of previous use possible?
Use is no longer a requirement of obtaining a trademark registration at CIPO. Use is a requirement of maintaining the registration on the register. If a trademark application is found to lack inherent distinctiveness, an applicant can provide evidence of use of the trademark (through an affidavit) which will assist to prove to an examiner that the mark has acquired distinctiveness across Canada. This situation only occurs if an Examiner requests evidence of use of the mark.
11.1.1. If yes, is proof required (affidavit, use specimens, etc.)?
Yes.
11.1.2. If yes, through which kinds of proceedings can the proof of use be requested (opposition, cancelation, renewal proceedings, etc.)?
Yes, for prosecution see above. For opposition and cancelation, evidence of use requested by affidavit.
11.2. Disclaimer
Yes.
11.3. Previous registration in country of origin required
No.
11.4. Changes in the mark appearance during the application proceedings possible
Yes. An applicant may change the representation or description of the trademark prior to advertisement/publication of the application.
11.5. Restrictions regarding trademark owner (e.g. trademark protection not eligible for owner from particular countries).
No.
11.5.1. If yes, please specify.
N/A
11.6. Is there any legal term from which the trademark must be used in order to avoid a possible cancellation?
Yes.
11.6.1. If yes, please specify.
A trademark is eligible to a section 45 (cancellation) proceeding after three years on the register.
11.7. Other (if yes, please specify)
N/A
Filing documents required (please indicate whether notarization, apostille, legalization, and/or scanned copies are permitted)
See below
12.1. Power of attorney
No.
12.2. Evidence of pre-registration in country of origin
No.
12.3. Priority documents (if priority claimed)
No.
12.4. Other (if yes, please specify)
N/A
Late filing of documents
See below
13.1. Is late filing of documents permitted?
No.
13.1.1. If yes, please indicate the time limit (days/months from....).
N/A
13.2. Official late filing fee due?
No.
Means for representation of the mark (for instance JPEG with XY pixels)
See below
14.1. Figurative mark with word elements
PNG/.TIF/.JPG/.GIF – no maximum number of images - max 10 MB
14.2. Figurative mark
.PNG/.TIF/.JPG/.GIF – no maximum number of images - max 10 MB
14.3. Shape mark
.PNG/.TIF/.JPG/.GIF – no maximum number of images - max 10 MB
14.4. Shape mark with word elements
.PNG/.TIF/.JPG/.GIF – no maximum number of images - max 10 MB
14.5. Position mark
PNG/.TIF/.JPG/.GIF – no maximum number of images - max 10 MB
14.6. Pattern mark
PNG/.TIF/.JPG/.GIF – no maximum number of images - max 10 MB
14.7. Color (single) mark
.PNG/.TIF/.JPG/.GIF – no maximum number of images - max 10 MB
14.8. Color (combination) mark
.PNG/.TIF/.JPG/.GIF – no maximum number of images - max 10 MB
14.9. Sound mark
.MP3 – max 1 representation – max 10 MB
14.10. Motion mark
.MP4 – max 1 representation – max 10 MB
14.11. Multimedia mark
- Still image: .PNG/.TIF/.JPG/.GIF – max 10 MB - Sound recording: .MP4 – max 10 MB
- Moving image: .MP3 – max 10 MB
14.12. Hologram mark
.PNG/.TIF/.JPG/.GIF – no maximum number of images - max 10 MB
Local legal representatives for foreign applicants
See below
15.1. Are local legal representatives mandatory for foreign applicants?
No, but highly recommended.
15.2. Possibility of having representatives domiciled in another country?
No.
15.2.1. If yes, please specify the countries.
N/A
Examination
See below
16.1. Is there formal examination?
Yes.
16.1.1. If yes, does the formal examination take place prior to the publication of the application?
Prior to advertisement/publication.
16.2. Is there examination on absolute grounds?
Yes.
16.3. Is there examination on relative grounds?
Yes.
16.4. Can relative grounds be objected by the Trademark Office or only by the prior rights' owners?
Yes, the Trademarks Office can cite a trademark registration or previously filed trademark application against an applicant for confusion.
16.5. Are letters of consent admissible to overcome ex-officio citations of prior marks?
Yes, letters of consent can be filed and will be reviewed, but are not be binding on the Trademarks Office.
16.5.1. If yes, is notarization or legalization required?
No.
16.6. Is there an examination timeframe if no official objections are raised?
Yes.
Publication
See below
17.1. Publication before registration?
Yes.
17.2. Publication after registration?
No.
17.3. Publication in trademark Gazette?
Yes (in Canada, it's called the Trademarks Gazette).
17.4. Publication in local newspapers?
No.
17.5. Official publication fee due?
No.
Registration
See below
18.1. Certificate of Registration in paper form?
No.
18.2. Certificate of Registration in electronic form?
Yes.
18.3. Term of protection of the mark? Please include term details
Yes, ten years.
18.3.1. As from priority date?
No.
18.3.2. As from filing date?
No.
18.3.3. As from registration date?
Yes.
18.3.4. As from actual registration date?
Yes. (In Canada, actual registration date and registration date are the same day.)
18.3.5. As from date of issuance of Certificate of Registration?
No.
18.3.6. Other (if yes, please specify)
N/A
18.4. End of grace period of use? Please include term details
No, three years.
18.4.1. As from official registration date?
Yes.
18.4.2. As from actual registration date?
Yes.
18.4.3. As from end of opposition deadline?
No.
18.4.4. As from conclusion of opposition proceedings (if any)?
No.
18.4.5. Other (if yes, please specify)
N/A
18.5. How long can we expect a decision on the application by BPTO?
Three years from filing to registration without significant issues in examination or opposition.
Official fees due at the time
See below
19.1. Filing
Yes.
19.2. Publication
No. Trademark applications filed before the coming into force date of the new Trademarks Act (June 17, 2019) must pay a fee prior to registration. Otherwise, the initial application fee includes all government fees required from application to registration.
19.3. Registration
No.
19.4. Other (if yes, please specify)
Yes, official fees due at renewal.
19.5. Link to the official website of the Trademark Office where the fees are accessible and updated.
Renewal
Documents required (please indicate whether notarization, apostille, legalization, and/or scanned copies are permitted)
See below
20.1. Power of attorney
No.
20.2. Original registration certificate
No.
20.3. Affidavit of use
No.
20.4. Evidence of use
No.
20.5. Others (if yes, please specify)
N/A
Is the late filing of documents admissible? If yes, please indicate the time limit.
No.
21.1. Official late filing fee due?
No.
Is there a renewal grace period provided for by law? If yes, please indicate the timing.
Yes, six months from the date of the notice of renewal.
Special maintenance requirements
See below
23.1. First declaration of use?
No.
23.2. Time to file?
No.
23.3. Extensions permitted?
No.
23.3.1. If yes, please indicate the number allowed (as the maximum accepted)
N/A
23.4. Documents required (affidavit/declaration, notarized/legalized, evidence of use, subject to official fees)?
No.
23.5. Second declaration of use? If other, please specify.
No.
23.6. Time to file?
No.
23.7. Extensions permitted?
No.
23.7.1. If yes, please indicate the number allowed (as the maximum accepted).
N/A
23.8. Documents required (affidavit/declaration, notarized/legalized, evidence of use, subject to official fees)?
No.
Recording of changes/limitation
See below
24.1 Limitations of lists of goods/services?
Yes.
24.1.1. Possible at any stage or only after registration?
Yes, possible at any stage, including after registration.
24.1.2. Official fees due?
No.
24.2. Change in name or address of owner?
No official fee to change the name or address of the owner, provided the identity of the owner does not change.
24.2.1. Possible at any stage or only after registration?
Yes, possible at any stage, including after registration.
24.2.2. Documents required (original or scanned)?
Yes. Document required is a letter requesting the change. As a general rule, there is no requirement to provide the Office with evidence of a change of name. If the name change is a result of a merger/amalgamation or a change in corporate status, the Office will require some evidence that shows the circumstances in which the name changed (e.g. certificate of merger/amalgamation).
24.2.3. Official fees due?
No.
24.3. Change in ownership?
Yes.
24.3.1. Possible at any stage or only after registration?
Yes, possible at any stage, including after registration.
24.3.2. Documents required (original or scanned)?
Yes. If a transfer of an application for the registration of a trademark or a registered trademark is requested by the applicant or registered owner, the transfer will be recorded or registered upon the receipt of:
- the prescribed fee to record the transfer of an application for registration or to register the transfer of a registered trademark; and
- the transferee' name and postal address. If a transfer of an application for the registration of a trademark or a registered trademark is requested by the transferee, the transfer will be recorded or registered upon the receipt of:
- the prescribed fee to record the transfer of an application for registration or to register the transfer of a registered trademark
- the transferee' name and postal address; and
24.3.3. Official fees due?
Yes.
24.4. Change of representative?
Yes.
24.4.1. Possible at any stage or only after registration?
Yes, possible at any stage, including after registration.
24.4.2. Documents required (original or scanned)?
Yes, the appointment of an agent takes effect as soon as the Registrar receives notice of the appointment, which must include the postal address of the trademark agent. Request can be made by fax, e-filing, or mail.
24.4.3. Official fees due?
No.
Link to the official website of the Trademark Office where the official fees are accessible and updated.
Disclaimer: This guide contains summaries of general principles of law. It is not a substitute for specific legal advice and should not be relied upon in relation to the application of the law or subject matter covered.