While there is no “bad faith” ground of opposition set out in the Canadian Trade-marks Act, the Trade Marks Opposition Board does have the power to refuse what they consider to be “bad faith” applications, using other grounds of opposition. These grounds of opposition include allegations of non-distinctiveness, non-entitlement, non-registrability, and the allegation that the applicant could not have been satisfied that it was entitled to use the trademark.

Bad faith cases often have extreme facts that cry out for action on the part of the Opposition Board in order to prevent the bad faith applications from issuing to registration, and in such cases, the Board is understandably willing to make the facts fit within the allowed grounds of opposition.

In a recent case determined by the Federal Court of Canada, Julia Wine Inc. v. Les marques metro, S.E.N.C., (Les marques métro/metro Brands S.E.N.C.), 2016 FC 738 (CanLII), the Court sided with the Opposition Board in holding that a trademark application which was characterized as exhibiting “bad faith” should not succeed. The indicia of bad faith which were exhibited in the case included the following facts:

1. The applicant filed applications on the same day for the registration of the house brand trademarks of 3 different major supermarket chains; and

2. In a meeting between the applicant and the opponent, the applicant had proposed to the opponent a distribution arrangement for goods to be sold under the applicant’s trademark, and the assignment of the trademark to the opponent.

The TMOB refused the application, and the Court concurred.