On January 3, 2025, the Federal Court of Canada (the Court) issued its decision in 2K4 Inc. (Indican Pictures) v Indiecan Entertainment Inc., 2025 FC 20, dismissing 2K4 Inc. o/a Indican Pictures’ (the Applicant’s) application against IndieCan Entertainment Inc. (the Respondent) for passing off under s. 7(b) of the Trademarks Act.

The Applicant, a California-based film distributor, sought to assert its rights in the unregistered Canadian trademark “Indican Pictures” (Indican Pictures Mark) used in association with television, radio, and film distribution services. It alleged that the Respondent, a Canadian company incorporated in 2011, was passing off its film distribution services for those of the Applicant by using the name and mark “IndieCan” and similar marks (collectively, the IndieCan Marks) in a manner likely to cause confusion in Canada.

The Court began its analysis by stating that an applicant filing a passing off claim must first demonstrate that they possessed a valid and enforceable trademark at the time relevant for assessing the allegation. In this case, the Court determined that the relevant time period was prior to 2011 (i.e., the year the Respondent began using the IndieCan Marks). To demonstrate that it had a valid and enforceable trademark prior to 2011, the Applicant was required to establish that it had used the Indican Pictures Mark in Canada for the purpose of distinguishing its film distribution services from those of others at that time. This involved analyzing the scope of services associated with the Indican Pictures Mark and the nature of the benefits delivered to those physically present in Canada.

The Court rejected the Applicant’s assertion that “the ultimate moviegoer to whom the film is ultimately distributed” was among the relevant consumers who derived a benefit from the Applicant’s services, instead finding that “relevant consumers of such [film distribution] services are ‘B2B’ firms along the supply chain of film production.” The Court found that only these intermediaries interact with the Applicant in its film distribution services and receive the “benefit” from those services. In reviewing the Applicant’s submitted evidence, the Court determined that there was no objective evidence of use among relevant consumers prior to 2011 and, therefore, the Applicant failed to meet the threshold requirement necessary for establishing passing off.

Accordingly, the Court dismissed the application.

Summary By: Claire Bettio

 

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