Canada’s trademark system: a status report on the initiatives to streamline prosecution and oppositions

In summary

Since the landmark amendments to Canada’s trademark regime in 2019, the Canadian Intellectual Property Office (CIPO) has continued to modernise its operations. 2024 and 2025 marked a pivotal period, with structural and legislative reforms aimed at reducing examination delays, streamlining prosecution and opposition proceedings, and enhancing register integrity. This article explores recent key developments and offers practical guidance for applicants navigating the evolving landscape.

Discussion points

• Categories of registrable trademarks and applicable registrability standards
• Establishing entitlement to registration and the limited role of coexistence agreements
• Key procedural updates and practical strategies for navigating examination, including revised service standards, expedited examination, and application streamlining
• Registrable versus unregistrable trademarks
• Post-registration issues: non-use cancellation, expungement, and Registrar-initiated proceedings
• Legislative reform of official marks and expanded procedural powers at the Trademarks Opposition Board (the Board)
• New compliance obligations under Québec’s Charter of the French Language

Referenced in this article

• Tweak-D Inc v Canada (Attorney General)
• Energizer Brands, LLC v Gillette Company
• Cheung’s Bakery Products Ltd v Easywin Ltd
• Sherman Estate v Donovan
• Trademarks Act, RSC 1985, c T-13
• Québec’s Charter of the French Language
• Budget Implementation Act, 2018, No. 2
• CIPO Practice Notices and online resources

Registrable trademarks

Canada is a first-to-use jurisdiction, governed by the Trademarks Act^[1] (the Act) and its associated regulations administered by CIPO. The Act broadly defines a ‘trademark’ as ‘(1) a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, or (2) a certification mark’.^[2]

Canada recognises a wide range of trademarks, including non-traditional marks, as shown in the screenshot from CIPO’s online filing system (Figure 1).

Figure 1. CIPO’s online filing system

This list is not exhaustive. Provided a ‘sign’ meets the statutory definition, it may be registrable. However, registrability also depends on satisfying additional requirements – most notably, distinctiveness.

Distinctiveness remains a foundational criterion. CIPO may object to the registration of a mark on the basis that on a preliminary view^[3] it is not inherently distinctive^[4] (NID). NID objections are commonly raised in conjunction with objections raised under section 12 of the Act, which prohibits registration of marks that are clearly descriptive or deceptively misdescriptive ‘of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin’,^[5] or that consist ‘primarily merely’ of a name or surname.

These prohibitions are not absolute: a mark may still be registrable if the applicant can demonstrate that it had become distinctive of the applicant at the filing date of the application. The threshold is quite high and requires evidence of long-standing use^[6] of the mark in each Canadian province and territory.^[7] If use is limited to certain regions, the resulting registration may be geographically restricted. For non-traditional marks, the evidentiary burden can be even higher than traditional marks. Applicants of non-traditional marks are encouraged to consult CIPO’s online resources for the most current information.

Section 9 of the Act introduces a uniquely Canadian category of ‘prohibited marks’, which includes marks that are scandalous, obscene, immoral, or that falsely suggest a connection to a living individual. A notable subcategory is ‘official marks’, which are adopted by public authorities and enjoy a broader scope of protection than ‘regular’ trademarks.

Official marks are not examined for distinctiveness, registrability, or conflict with existing marks. Once a public authority requests public notice of adoption and use, the mark is advertised and can indefinitely block the registration of any confusingly similar mark unless consent is obtained from the official mark holder. This expansive and indefinite protection has long been criticised for creating legal uncertainty and cluttering the register, particularly where the public authority no longer exists, or the mark is no longer in use.

To address these concerns, amendments to the Act effective 1 April 2025 now empower the Registrar to revoke public notice of an official mark where it is no longer in use, or the entity no longer qualifies as a public authority. This long-awaited reform introduces accountability and brings Canadian practice more in line with international norms.

Complementing this legislative change, CIPO issued a Practice Notice on 1 April 2025 outlining the procedure for requesting revocation of an official mark pursuant to section 9(4) of the Act.^[8] This provides a practical and accessible mechanism for clearing obsolete official marks from the register, offering relief to applicants previously blocked by dormant rights.

Entitlement

Unlike many jurisdictions, Canada places limited weight on consent to registration or coexistence agreements between entities, even if they are related. This principle was reinforced by the Federal Court of Appeal in Tweak-D Inc v Canada (Attorney General),^[9] where the Court confirmed that the confusion analysis is conducted from the perspective of the consumer, regardless of any coexistence agreement between the parties. A trademark owner's consent to a competing trademark is not determinative of registrability.

Since 2019, applicants are no longer required to claim use to obtain registration. However, they must have either used the mark or had a bona fide intention to use it with all listed goods or services as of the filing date. As of 1 April 2025, trademark owners must also demonstrate actual use in Canada before initiating enforcement proceedings within the first three years of registration.^[10] This requirement ensures that early enforcement actions are grounded in actual marketplace use, rather than based solely on the mere existence of a registration.

The prosecution process

In recent years, CIPO has introduced a series of reforms to address longstanding delays in examination and to improve the efficiency and predictability of the prosecution process. Historically, it took four years or more for an application to receive first examination. Today, that timeline has been significantly reduced.

A key development came into effect on 1 January 2024 with the implementation of ‘benchmark’ examination timelines^[11] wherein CIPO committed to first examination within 18 months for applications relying exclusively on the pre-approved goods and services (commonly referred to as the ‘Pick List’), and within 28 months for all other electronic filings. While not legally binding, these benchmarks serve as internal performance indicators and reflect CIPO’s renewed focus on timely service delivery. To reinforce this commitment, CIPO introduced a remission policy that provides partial refunds (25 per cent or 50 per cent of applicable fees) if service standards are not met.^[12] Notably, these refunds are issued automatically, without requiring a formal request, offering a procedural safeguard for applicants affected by delays.

To meet these benchmarks, CIPO significantly expanded its examination capacity, hiring over 160 new examiners since 2023. This investment has already yielded measurable results: as of mid-2025, the average time to first examination has dropped to 10.5 months for Madrid Protocol applications, 9.3 months for Pick List applications, and 11 months for all other national filings, which is an improvement of more than two years compared to 2022 (Figure 2).^[13]

Figure 2. CIPO’s processing timelines

This expanded capacity also enabled CIPO to reach a major milestone in early 2024: the completion of first examination for all ‘pre-CIF’ (Coming-into-Force) applications, or those filed prior to the 17 June 2019 legislative amendments. This marked a critical step toward clearing the longstanding backlog and restoring timely access to trademark protection.

Together, these improvements reflect a concerted effort by CIPO to modernise trademark prosecution. With shorter examination timelines and clearer benchmarks, applicants are now better positioned to secure protection in a more predictable and efficient manner.

Application requirements

All Canadian trademark applications must include certain mandatory information, such as the applicant’s details and a list of goods and services classified under the Nice Classification system and described, either in accordance with the Pick List, or in ‘ordinary commercial terms’.

Additional requirements vary depending on the type of mark. For word marks, the application must include a statement that the mark is to be registered in standard characters. Design marks filed in colour must include a colour claim; otherwise, the design should be submitted in greyscale.

Applications for non-traditional marks are subject to additional requirements.^[14]

Applications for certification marks must include particulars of the defined standard and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services with which the certification mark is used or proposed to be used.

Government filing fees for trademark applications in Canada are based on the number of Nice classes. Canada permits and even encourages multi-class applications (rather than multiple single-class applications) by offering reduced fees for each additional class. As of 1 January 2024, most trademark-related fees increased by 25 per cent, with a further adjustment of 4.4 per cent effective 1 January 2025.^[15] These increases apply broadly, affecting filings, renewals, ownership transfers, and proceedings before the Board.

Pre-examination

In addition to classifying goods and services under the Nice Classification system, Canadian trademark applications must describe them in ‘ordinary commercial terms’ – a uniquely Canadian requirement that often surprises international applicants accustomed to broader or less specific language.

Starting in early 2022, CIPO offered an accelerated examination track for applications that relied exclusively on the Pick List. While this procedural advantage was initially compelling, the practical benefit has diminished over time. As of 2025, average examination timelines range from between nine and 11 months across most application types, meaning the marginal time saved by tailoring an application to pre-approved terms may be minimal.

In another attempt to streamline applications since March 2022, CIPO has issued AI-generated pre-assessment letters before formal examination for applications not solely using the Pick List or that may be improperly classified at the time of filing. These letters offered an opportunity to accelerate examination midstream by making corrections prior to examination. However, like the Pick List itself, the practical benefit may be limited given current processing times and practitioners have asked CIPO to do away with them. Moreover, proactively amending goods and services to conform to the Pick List may inadvertently narrow the scope of protection – particularly where the original terms would not have triggered objections during formal examination. In many cases, it may be more prudent to await formal examination and respond to objections if and when they arise, rather than limit the application at the outset. Applicants should carefully assess whether such amendments are strategically beneficial in the context of their broader filing objectives.

In addition to these passive acceleration mechanisms, CIPO offers a formal expedited examination process in specific circumstances. An applicant may request expedited examination,^[16] supported with affidavit evidence, where a registration is required: (1) for enforcement purposes; (2) to combat counterfeit goods at the Canadian border; (3) to prevent the applicant from being disadvantaged in online marketplaces; or (4) to preserve a priority claim following a request from a foreign intellectual property office. Recent experiences with this practice have been positive, with expedited examination occurring within weeks, or even days, of filing the request.

Substantive examination

Substantive examination assesses registrability on both absolute and relative grounds. If an examiner identifies any barriers to registration, the examiner will issue a report inviting the applicant to respond with arguments or amendments within six months.

Extensions of time are granted only in limited circumstances, such as a recent change in counsel, pending assignment, active opposition proceedings, consent negotiations with an official mark owner, compiling evidence to overcome a non-distinctiveness objection, or circumstances outside the applicant’s control.^[17]

If the response does not overcome the examiner’s objections, a further report will issue. A second unsuccessful response may result in refusal, which can be appealed to the Federal Court. Alternatively, if an applicant fails to file a timely response, CIPO will issue a notice of default, triggering a two-month grace period before the application is deemed abandoned.

While Canada does not permit third-party petitions or interferences during examination, trademark owners may file a ‘notification of third-party rights’ to flag potentially confusing earlier filed applications and/or registrations. This tool allows examiners to consider relevant prior rights during examination and may help prevent problematic applications from proceeding to approval.

Approval, advertisement, registration and renewal

Once all objections have been resolved, CIPO approves the application and ‘advertises’ it for opposition in the Trademarks Journal. Third parties have a two-month window to oppose the application. If no opposition is filed, or if the applicant successfully defends against an opposition, the mark proceeds to registration and CIPO issues an electronic certificate of registration.

A registered trademark remains in force for an initial term of 10 years and may be renewed indefinitely for successive 10-year periods, provided the renewal requirements are met.

In anticipation of renewal, CIPO has introduced a pre-renewal classification initiative aimed at aligning Canadian practice more closely with international norms. Approximately one year before the renewal deadline, trademark owners receive letters inviting them to classify their goods and services under the Nice Classification system. Participation is voluntary and does not affect the timing or processing of the renewal itself.

While the initiative may be helpful for owners seeking to proactively update their records, its practical value remains uncertain. Many owners may not have decided to renew so far in advance and may be reluctant to incur the additional cost of classification for a registration they are not yet committed to maintaining. As such, the utility of this initiative will likely depend on the specific circumstances and timing of each renewal decision.

Post-registration matters

Rights conferred by registration v unregistered trademarks

There are numerous benefits to registration. For example, registration confers upon the owner the exclusive right to use the trademark throughout Canada in association with the specified goods and services^[18] and the right to prevent unauthorised third parties from using the same mark or a ‘confusing’ similar one^[19] even if use is limited to one region of the country.

Additionally, a registration confers upon the owner the right to sue for depreciation of goodwill. Section 22 of the Act prohibits any person from ‘using’ a registered mark of another ‘in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto’.^[20] This provision has been successfully invoked in parody and comparative advertising cases. Since 2023, the Federal Court’s decision in Duracell v Energizer remains the leading authority. ^[21] The Court held that Duracell’s packaging claims – such as ‘15% Longer Lasting vs. Energizer’ – which directly referenced Energizer’s registered trademarks, contravened section 22. In contrast, indirect references like ‘The Bunny Brand’ did not, as the Court found that too many mental steps were required for the average consumer to associate the phrase with Energizer’s goodwill. The decision underscores the importance of direct trademark use in establishing depreciation and remains the benchmark for interpreting section 22 in comparative advertising contexts.

Registrations also serve as tools to combat counterfeiting. Owners of registered trademarks (and copyrights) can file ‘requests for assistance’ forms with the Canada Border Services Agency, enabling customs officials to inspect and detain counterfeit goods as they enter Canada.

Unregistered trademark owners also have enforceable rights, but they are subject to two important limitations that do not apply to registered marks. First, enforceability is limited to the tort of passing off, which is both recognised by the common law and codified in section 7(b) of the Act. To establish passing off, a trademark owner must prove that the mark possesses goodwill through use- a high threshold that often requires extensive evidence of sales, advertising, promotional activities, brand recognition, and market presence. Second, unregistered trademark rights are geographically limited to the regions where goodwill can be established.

Québec language requirements: a new compliance frontier

Amendments to the Québec Charter of the French Language,^[22] effective 1 June 2025, impose new obligations concerning the display of trademarks that are wholly or partially in a language other than French on products, labelling, packaging, and public signs and posters. As detailed in our 2023 review, the final regulations published on 26 June 2024 require a non-French trademark to be ‘recognised’ under the Act or translation to French is required.

The regulations also introduce requirements for translation for non-French trademarks on products, packaging and labelling. Even if a non-French trademark is ‘recognised’, if it contains ‘generic terms’ (describing the nature of a product) or ‘descriptive terms’ (describing its characteristics) those terms must be translated into French and displayed with the same prominence as the terms appear within the trademark, either on the product or on a medium permanently affixed to the product. There is an exception to this requirement where the generic/descriptive terms appear in a trademark that is the ‘name of the product as sold’. A transitional period allows non-compliant goods manufactured before 1 June 2025 to be sold until 1 June 2027.

While the final regulations provide some clarity, uncertainty remains around how the Office québécois de la langue française (OQLF) will interpret and enforce the requirement to translate embedded elements within trademarks. Businesses operating in Québec should act now to ensure their trademark portfolios, packaging, and signage are fully compliant, or risk disruption in a key Canadian market.

Amendment to the Register

Registered trademark rights are not immutable. They can be revoked or limited through administrative actions, such as voluntary withdrawal or failure to renew, or through inter partes proceeding, including non-use cancellation and expungement.

Non-use cancellation under section 45 of the Act remains a key mechanism for enforcing Canada’s use-based trademark system. Beginning on the third anniversary of a trademark registration, any person may request that the Registrar issue a notice requiring the registrant to demonstrate use of each listed good or service within the preceding three-year period, or to provide the date of last use and exceptional circumstances justifying non-use. If the registrant fails to meet this burden, the registration will be cancelled in whole or in part. These proceedings are generally straightforward. Although the requesting party cannot cross-examine the registrant’s evidence of use, both parties may submit written arguments and make oral submissions before the Board. The Board will then issue a decision maintaining, amending, or striking the registration.

In a notable procedural development, in January 2025, CIPO launched a Registrar-initiatedsection 45 pilot program.^[23] Under this program, the Registrar proactively selects between 50 and 100 trademark registrations per month for review, focusing on marks that are more than three years old and appear to be inactive. While modest in scope, the program signals a more assertive approach to register maintenance and may pave the way for broader implementation in future phases.

Expungement proceedings are a more robust mechanism for challenging registration and involve full litigation proceedings before the Federal Court.^[24] A registration may be expunged on several grounds, including that the mark was not registrable at the time of registration, the applicant was not entitled to register it, the mark has been abandoned or is no longer distinctive, or the application was filed in bad faith.^[25]

The Federal Court’s decision in Cheung’s Bakery Products Ltd v Easywin Ltd^[26] remains the leading authority on bad faith expungement. The Court emphasised that bad faith must be assessed contextually and flexibly, and that knowledge of a third party’s prior use or rights may be sufficient to invalidate a registration. Mere knowledge of those rights prior to filing does not, however, necessarily translate into a finding of bad faith – in this decision, the Court found that the respondent also knew that ‘they targeted the same consumers and sold the same types of bakery-related goods and services’ as well as the existing of a prior dispute between the parties. As a result, the respondent ‘simply ignored the very facts that should have given it pause before filing the trademark applications.’ ^[27] In other words, bad faith is a highly contextual and fact-specific analysis. This decision continues to guide current practice, though the jurisprudence on bad faith remains nascent, and its precise contours are still being shaped by the courts.

TMOB 2.0: new procedural powers reshape contested proceedings

While much of the recent focus has been on streamlining prosecution, the Board has quietly undergone a transformation of its own. As of 1 April 2025, significant amendments to the Act and Regulations have equipped the Registrar with new procedural powers, marking a shift toward a more modern, efficient, and disciplined opposition regime.^[28]

For the first time, the Registrar has authority to:

• award costs in opposition and non-use proceedings;
• issue confidentiality orders to protect sensitive evidence; and
• actively manage proceedings through binding schedules, file consolidation, and other case management tools.

These powers are intended to improve procedural efficiency, discourage abusive conduct, and bring greater structure to contested proceedings. The Board has issued three detailed Practice Notices outlining how these tools will be applied in practice:^[29]

1. Case management

The Registrar may now designate a proceeding as ‘case-managed’ under sections 11.13, 38, or 45 of the Act. This allows for tailored scheduling, consolidated hearings, and procedural directions, particularly in complex or multi-file disputes. While case management does not extend to substantive rulings, it gives the Registrar new flexibility to address inefficiencies and uncooperative conduct. Parties may also request case management where appropriate.

2. Confidentiality orders

Parties may request that evidence be kept confidential under section 45.1 of the Act. The Registrar applies the three-part test from Sierra Club and Sherman Estate,^[30] balancing the open court principle with the need to protect sensitive commercial or personal information. Confidentiality orders are exceptional and must be narrowly tailored. If granted, parties must file both redacted and unredacted versions of documents and comply with strict procedural safeguards. Breaches may result in cost consequences or further sanctions.

3. Costs awards

For the first time, the Registrar may award costs in limited circumstances, including:

• where an application was filed in bad faith;
• where a divisional application was filed after advertisement of the original application;
• where a hearing is cancelled less than 14 days before the scheduled date; or
• where a party engages in unreasonable conduct causing undue delay or expense.

Costs are awarded at fixed amounts prescribed by regulation. The regime applies only to conduct occurring on or after 1 April 2025.

Together, these reforms mark a significant evolution in the Board’s role and signal a new era of procedural discipline in Canadian trademark enforcement. For brand owners and counsel, the implications are clear: contested proceedings now demand strategic planning, cooperation, and timely conduct.

A turning point in Canadian trademark practice

2024 and 2025 brought dramatic reductions in examination timelines showing that Canada has taken bold steps to realign the trademark regime with international best practices and stakeholder expectations.

For brand owners and practitioners, the message is clear: Canada’s trademark landscape is evolving – and fast. Filing strategies, enforcement approaches, and procedural expectations must all adapt to a system that is becoming more structured, responsive, and aligned with global norms.

Taken together, these reforms mark a pivotal shift in Canadian trademark practice. With improved service standards, expanded examination capacity, and a more disciplined approach to contested proceedings, CIPO is positioning itself to better serve applicants and support innovation in Canada’s dynamic IP environment.

Steven Kennedy, Jennifer McKenzie and Rounaq (Ron) Khoja Cassels Brock & Blackwell LLP