Updated October 2026. This article was first published on August 29, 2012 and has been revised to reflect the 2019 amendments to the Trademarks Act.
A trademark is a sign, or a combination of signs, that a business uses to distinguish its goods or services from those of others. In Canada it is most often a word, a logo or both, but since June 17, 2019 the federal Trademarks Act also recognizes signs such as colours, sounds, three-dimensional shapes, holograms, moving images, scents, tastes and textures. A registration gives you the exclusive right to use the mark across Canada for the goods and services listed, and it lasts 10 years, renewable indefinitely.
What can be a trademark?
The Trademarks Act defines a trademark as a sign or combination of signs used to distinguish your goods or services from others’ (s. 2). “Sign” is broad: words, personal names, designs, letters, numerals, colours, figurative elements, three-dimensional shapes, holograms, moving images, modes of packaging, sounds, scents, tastes, textures and the positioning of a sign. The test is whether the mark is distinctive: whether customers would see it as pointing to one source. Descriptive words (“Fresh Bakery” for bread), clearly misdescriptive words and most surnames are hard to register without proof that they have acquired distinctiveness.
Do I need to register my trademark?
No, but an unregistered mark is much harder to enforce. Without a registration you rely on a passing-off claim at common law or under s. 7(b) of the Act. To win, you have to prove that you have a reputation in the mark, that the other party’s use is likely to cause confusion, and that you have suffered harm. That protection is also limited to the area where your reputation exists. A registration gives you the exclusive right to use the mark throughout Canada for the registered goods and services (s. 19) and lets you act against confusing marks (ss. 6 and 20) without first proving your reputation.
How long does a registration last?
A registration lasts 10 years and can be renewed for further 10-year terms indefinitely. Registrations issued before June 17, 2019 keep their 15-year term until their first renewal (s. 46).
What changed in 2019?
- No use required to register. You no longer need to show that the mark is in use before it registers. Filing early is now possible, but see the next point.
- Use it or risk losing it. Three years after registration, anyone can ask the Registrar to require you to show use; if you can’t, the registration can be expunged (s. 45). Registrations filed in bad faith can also be invalidated (s. 18(1)(e)).
- Goods and services in Nice classes. Applications must group goods and services under the Nice Classification, and government fees are charged per class.
- International filing. Canada joined the Madrid Protocol, so one application can extend a Canadian mark to other member countries. See our note on the Madrid System.
- New vocabulary. The Act now speaks of “goods” rather than “wares”, and “trademark” rather than “trade-mark”.
Where trademark applications usually go wrong
Most problems we see start before filing. A business picks a name, spends on branding and only then searches the register, sometimes finding a confusingly similar mark already registered for related goods. The other common mistake is describing the goods and services too broadly or too narrowly. Too broad invites objections and opposition; too narrow leaves gaps when the business expands. A clearance search and a carefully drafted list of goods and services do more to protect a brand than anything done after the application is filed. Examination at the Canadian Intellectual Property Office can take well over a year, which is another reason to file before launch rather than after.
Next step
If you are naming a new product or company, search the register before you commit to the name, and file before you launch. Our team can run a clearance search and handle the application; learn more about how we help you register a trademark.
Author: Allan Oziel. Last reviewed: October 2026. This article is general information about Canadian law as of the date above and is not legal advice.