New Bad Faith Challenges – Are They Enough To Discourage Abusive Trademark Filings?

Among the many recent amendments to Canada's Trademarks Act are new provisions that allow for opposition to trademark applications and expungement of registrations on the basis that the application was filed in bad faith. These amendments followed the announcement of the Government's commitment to control abusive filings as part of Canada's National Intellectual Property Strategy. Trademark squatting and crowding of trademark registers have been an international issue for some time. In the years leading up to the implementation of the amendments to the Canadian Act (many of which were originally proposed in 2014), hundreds of applications covering all 45 classes of goods/services were filed in Canada by entities who had no clear business presence in Canada, or anywhere. Such filings highlighted how elimination of use as a pre-requisite to registration could compromise the integrity of the Canadian Register. The new “bad faith” opposition and expungement grounds are designed to provide some recourse against such abuse.

While the Act does not provide a definition of bad faith, the concept has been explored in past Canadian opposition proceedings, specifically in the context of the opposition ground of non-compliance with section 30(i) of the former Trademarks Act, and occasionally in addressing the bona fides of claims to use or proposed use in Canada (ss. 30(b) and (e) of the former Act). Section 30(i) required an applicant to be satisfied that it was entitled to use the mark, and was remarkably versatile. It could be used to address situations as diverse as claiming that the applicant must have been aware of another's prior rights in a confusingly similar mark, that use of the mark might offend other Federal laws, and that adoption and use of the mark involved “bad faith”.

The most frequently citedbad faith opposition decisions involve Robert Marcon, a serial filer who applied for many famous marks, such as CHANEL, NESTLE, EVIAN, TIM HORTON'S, BAYER and HEINEKEN, for the most part covering goods other than those for which the famous marks were registered and known. Several of the applications were approved by the Canadian Intellectual Property Office (CIPO), presumably based on the differences in goods/services and possible channels of trade, and were then opposed by the owners of these famous marks. Without exception, the oppositions succeeded, and Marcon's remaining applications were all eventually abandoned or refused by CIPO during...