What is a trademark renewal?

A trademark renewal is a filing with the Canadian Intellectual Property Office that extends the registration of a trademark for a further ten-year term. A Canadian trademark registration lasts for ten years from the date of registration and can be renewed indefinitely through successive trademark renewal filings, so long as the applicable fees are paid and the registration is maintained. A trademark renewal does not re-examine the mark on substantive grounds, but it is a critical step in preserving the rights that come with registration. A missed trademark renewal can result in the registration being expunged from the register, and re-filing the mark as a new trademark application means losing the original filing date, priority, and registration history.

Why you should consider a trademark renewal

Preserving nationwide trademark rights. A trademark renewal maintains the exclusive right to use the registered mark across Canada in association with the registered goods and services. Allowing a registration to lapse means losing those statutory rights and falling back on common law rights, which are generally limited to the geographic area of actual use.

Protecting the filing date and priority. A trademark renewal preserves the original filing date of the trademark application, which establishes priority as against later-filed applications. Re-filing a lapsed mark as a new trademark application creates a new filing date, potentially behind competitors that filed in the intervening period.

Maintaining the registration as a commercial asset. A registered trademark is a defined, licensable, assignable commercial asset. A trademark renewal keeps the registration in force for licensing, franchising, merger and acquisition due diligence, and security interests. A lapsed registration can disrupt existing licenses, franchise disclosures, and brand enforcement programs.

Supporting ongoing enforcement. A trademark renewal preserves the registration-based remedies under the Trademarks Act, including infringement actions, customs enforcement, and the presumption of validity that comes with a registered mark. Enforcement based on a registered mark is generally faster and more predictable than enforcement based on unregistered common law rights.

Relevant laws and regulations

Trademarks Act, RSC 1985, c T-13. Canada’s federal trademarks legislation, which governs the duration of a trademark registration, the trademark renewal process, and the consequences of non-renewal or non-use of a registered mark.

Trademarks Regulations, SOR/2018-227. The federal regulations under the Trademarks Act, which set out trademark renewal fees, deadlines, grace periods, and the Nice classification requirements that apply to a trademark renewal.

Common legal issues

Missed trademark renewal deadlines. The most consequential issue is a missed trademark renewal deadline. A registration that is not renewed by the end of its ten-year term, or within the grace period set out in the Trademarks Regulations, can be expunged from the register. Once expunged, the registration cannot simply be reinstated — the owner must file a new trademark application, losing the original filing date and priority.

Nice classification and renewal fees. A trademark renewal filed since the 2019 reforms is subject to per-class renewal fees based on the Nice classification of the registered goods and services. Registrations that pre-date the reforms may need to be classified at renewal, and the per-class fee structure can make a trademark renewal significantly more expensive for multi-class registrations than it was historically.

Non-use cancellation under section 45. A registered trademark can be subject to summary non-use cancellation under section 45 of the Trademarks Act, which requires the owner to show use of the mark in Canada during the relevant period. A trademark renewal alone does not protect against a section 45 cancellation proceeding, and a registration that is renewed but not actually used across the registered goods and services is vulnerable to partial or full expungement.

Assignments, ownership, and corporate changes. A trademark renewal should be filed by the current registered owner. Where the mark has been assigned, where the owner has changed its corporate name, or where the owner has been involved in a merger or dissolution, the register may need to be updated before or alongside the trademark renewal to avoid a disconnect between the registered owner and the entity actually using the mark.

Frequently asked questions

How long does a Canadian trademark registration last? A Canadian trademark registration lasts for ten years from the date of registration and can be renewed indefinitely through a trademark renewal for further ten-year terms, subject to payment of the renewal fees and ongoing use of the mark.

When should a trademark renewal be filed? A trademark renewal can be filed within the window set out in the Trademarks Regulations, which generally opens six months before the end of the term. A grace period may be available after expiry, subject to a late fee, but relying on the grace period is not a substitute for timely filing.

What happens if a trademark renewal is missed? A missed trademark renewal can result in the registration being expunged. The owner would then generally need to file a new trademark application, which creates a new filing date and exposes the mark to intervening applications and objections that did not exist under the original registration.

Does a trademark renewal require evidence of use? A trademark renewal in Canada does not require evidence of use, unlike some foreign jurisdictions. However, the registered mark remains subject to section 45 non-use cancellation proceedings, which can be brought separately from the trademark renewal process.