Canadian trade mark registration and use: how the two interact after 2019

When Canada's amended Trademarks Act came into force on 17 June 2019, it changed the relationship between using a mark and registering one. Under the old regime an applicant generally had to file a declaration that the mark was in use before the registration could issue. That requirement was abolished. You can now secure a Canadian registration without having to prove use first, which is a significant departure from how Canadian trade mark practice worked for decades. This page explains what changed, what stayed the same, and why use still matters even though registration no longer depends on it. For the wider picture, see the Canada trade marks overview.

This is general information rather than advice on your specific marks, and the points below are particular to Canada.

What the 2019 reforms changed

The headline change is the removal of the declaration of use. Before the reforms, an application based on proposed use could not mature into a registration until the applicant confirmed the mark was actually being used in Canada. The Canadian Intellectual Property Office (CIPO) no longer asks for that confirmation at registration, so a mark can be registered while still unused.

Alongside that, Canada aligned itself with several international frameworks. It adopted the Nice classification, the international system for grouping goods and services into classes, so applicants now classify their goods and services as filers do in most other countries. Canada also acceded to the Madrid Protocol, the centralised international filing system, meaning you can designate Canada through an international application or use a Canadian application or registration as the basis for an international application designating other members; our Madrid Protocol guide explains how that route works. Canada further acceded to the Singapore Treaty, which harmonises procedural and administrative aspects of trade mark filing. Together these reforms brought Canadian practice much closer to international norms.

Why use still matters

The abolition of the declaration of use did not turn Canada into a system where use is irrelevant. Prior use still carries real weight. Using a mark in commerce can create common-law rights, which can support an action for passing off and can be asserted against a later applicant or registrant. Earlier use is also relevant to opposition proceedings, where a third party challenges an application, and to distinctiveness, since a mark must actually distinguish your goods or services to be valid and enforceable.

Use also matters after registration. A Canadian registration can be challenged and potentially expunged for non-use once it has been on the register for a defined period, on the basis that the owner cannot show the mark has been used in the relevant timeframe. Such challenges can be brought by a third party, and the Registrar may also be able to initiate non-use proceedings of its own, so a registration is not insulated simply because no competitor has objected. Treat the exact period, who may bring a challenge and the procedure as something to confirm with CIPO or local counsel, because the statutory details and current practice change and turn on the facts. The practical point is that a registration obtained without use is not bulletproof: if you never use the mark, you risk losing it to a non-use challenge, and you may struggle to enforce it.

First to file, but not purely

It is tempting to describe post-2019 Canada as a first-to-file system, and filing early is genuinely more important now that registration no longer waits on use. But the description is only partly accurate. Unlike a pure use-based system, where rights flow primarily from using the mark in commerce, and unlike a strict first-to-file system, where the register is close to decisive, Canada sits between the two. The register rewards early filing, yet common-law rights from prior use, distinctiveness requirements and non-use vulnerability all keep genuine use central to whether a mark can be obtained, defended and enforced.

The practical takeaway is a two-part discipline. File early, because waiting exposes you to someone else registering the mark first, and Canada no longer makes them prove use to do so. Then use the mark, genuinely and in a way you can evidence, because use is what keeps the registration alive against a non-use challenge and what underpins enforcement. For the mechanics of preparing and filing, see how to register a trade mark in Canada. Bear in mind that filing in Canada is bilingual (English and French), and that selling in Quebec brings additional French-language requirements that foreign brands often overlook. Note that Canada is not part of the European Union, so a comparison some readers reach for is the United States rather than the EU; our US trade marks overview sets out how a more use-anchored system differs.

A related point worth knowing is that Canada offers a voluntary copyright registration system through CIPO, separate from trade marks, which some brand owners use alongside trade mark protection for logos and creative assets.

A note on scope

IPEnvoy is not a law firm and does not provide legal advice. This page is general information about Canadian trade mark practice; the position turns on the specific facts of each mark and filing. Statutory periods, who may initiate a challenge, procedures and official fees change over time, so confirm the current position with CIPO's official website and a qualified local IP professional before acting.