Canada's Significantly Amended Trademark and Anti-Counterfeiting Laws: What U.S. Counsel Need to Do Right Now

Navigating Key Changes in Registration, Nice Classification System, Application and Opposition Procedure, and More

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Tuesday, November 25, 2014

Recorded event now available

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Course Materials

This CLE course will discuss Canada’s new trademark rules and amendments, examining key changes in registration, classification, applications, oppositions and more. The panel will discuss the implications for U.S. IP owners and will provide guidance for operating under the new system and utilizing the new law to better protect IP rights.


Canada’s trademark and anti-counterfeiting laws are being overhauled. The amendments should result in faster, simpler and cheaper protection for brand owners. But the changes will also increase the opportunities for trademark pirates to exploit unwary owners.

Examples of the many important amendments include:

  • Canada’s Trademarks Act has been amended. Canadian registrations will soon be permitted without use of the mark having commenced anywhere in the world, in connection with any goods or services. How will this impact brand protection, and what strategies should be considered?
  • Canada’s Combating Counterfeit Products Act is poised to come into force in the near future. This will provide new trademark and copyright civil and customs prohibitions and offenses. Learn about the tools that will be available.
  • Canada’s Federal Courts Rules have been amended to allow for summary trials. Discover how this can lead to quicker and less expensive litigation against infringers.
  • Notice and notice requirements on ISPs, hosts and operators of search engines will soon be implemented.  As debate over privacy rights on the Internet continues in Canada, gain insight into the likely effect of the new provisions.

Listen as our panel of IP attorneys prepares U.S. brand and copyright owners and their counsel for dealing with recent and upcoming changes and what should be done now to fully protect valuable rights north of the border. The panel will thoroughly review all of Canada’s trademark and anti-counterfeiting amendments.



  1. Canada’s new Trademark Law
    1. Registration without use
    2. Nice classification system
    3. Broadened scope
    4. Evidence of distinctiveness
    5. Utilitarian function
    6. Applications—new rules
    7. Divisional applications
    8. Oppositions—new rules and grounds
  2. Implications for U.S. IP owners
  3. Best practices


The panel will review these and other key issues:

  • The adoption of the Nice Classification system and the Madrid Protocol
  • Enhanced protection for non-traditional marks
  • Potentially more rigorous examination for certain types of marks
  • Enhanced customs, civil and criminal prohibitions against counterfeit products
  • The new notice and notice system for dealing with online infringement of copyright


Mark Evans
Mark Evans

Smart & Biggar

Mr. Evans focusses on providing sophisticated trademark protection, management and counselling services. He represents...  |  Read More

Brian Isaac
Brian Isaac

Smart & Biggar

Mr. Isaac handles all aspects of intellectual property counseling, prosecution and litigation. Mr. Isaac has...  |  Read More

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