Written By: Gabriella Fortugno (IP Lawyer) & Charlotte Tyhurst (Articling Student)
Significant changes to Canadian trademark law take effect on April 1, 2025, with amendments to the Trademarks Act and the Trademarks Regulations. These changes will have important implications for trademark owners. Here is an overview of some of the new changes:
Overcoming Official Marks
The Trademarks Registrar now has the authority to remove official marks from the Canadian Trademarks Register.
“Official Marks” are a separate category of trademarks in Canada owned by government entities, public authorities, or universities. These marks differ from trademarks in many ways, including that they are not subject to the same requirements for registration, they protect all goods and services, they are not subject to examination or opposition, and they do not need to be renewed (and can exist indefinitely).
Prior to April 1, 2025, if an Official Mark was cited against a trademark application, consent from the owner of the Official Mark was required to register the mark. In some cases, receiving consent is nearly impossible if the owner of the Official Mark no longer exists.
With the new changes, the Registrar may now remove Official Marks from the Register where the owner is either no longer a public authority or no longer exists. This will give applicants additional tools to respond to objections and will offer a more straightforward path to registration for applicants whose previous registration attempts may have been restricted by the consent requirement.
New “Use” Requirement for Infringement Proceedings
If a registered trademark owner is bringing an infringement proceeding within the first 3 years of the trademark’s registration, the owner must now provide evidence that the mark has been in “use” in Canada during the 3-year period. Under Canadian trademark law, “use” requires the commercial sale of goods or services under the trademark.
As a best practice, trademark owners should collect and archive evidence of commercial sales, for example receipts and invoices showing the trademark, on a regular basis.
For more information on how these changes might affect your brand’s trademark application or the enforcement of your trademark rights in Canada, contact one of our experts today!
