What grounds are available in Canada to oppose trademark applications?

Little weight will normally be given to the fact that a trademark is well known abroad in the context of an opposition. It is not a proper ground of opposition per se. It may be possible however to use this context to lay the foundation for proper grounds of opposition if, for example, goodwill exists in Canada. This can be notably due to Canadian residents consuming the relevant goods or services abroad, Canadian  residents buying the relevant goods and services from Canada or receiving certain goods or services online from the foreign jurisdiction while in Canada. This requires a specific analysis of the factual context.

With one exception, the Registrar is not required by law to notify third parties of potentially confusing trademarks that are applied for or advertised for opposition. That being said, the Registrar’s trademark examiners are required to advise a relevant party of the publication of a potentially confusing mark if they have approved the application on the basis that confusion is doubtful (in other words in a borderline situation). This occurs in a minority of cases. In order to oppose applications in a timely manner, it is best to retain a trademark surveillance service in order to be advised of potentially confusing applications.

Yes, it is possible to oppose a trademark application on the basis of prior use either as a trademark or trade name. There is no need to show that the opponent was well-known or famous. The use invoked by an opponent must predate any use made by the applicant prior to the date of its application. On that point, Canadian law does not require that an applicant disclose in a trademark application whether it has used the trademark and since when. It is best to investigate which party has first use before filing a Statement of Opposition.

Yes, it is possible to invoke the bad faith of an applicant as a ground of opposition. What amounts to bad faith is not detailed in the legislation, it is up to the Registrar and the Courts to determine this. Since this ground of opposition only became available in June 2019, there is still some uncertainty on this front.

Yes, there are a number of grounds of opposition that do not involve asserting confusion with another trademark or a trade name. These include, for example, not having an intention to use the trademark at the time of filing of the opposition, having insufficiently specific goods and/or services, non-compliance with laws or regulations that apply across Canada, etc. Some of these grounds can be rectified during the course of an opposition by making amendments to the application.