Distinctiveness Test in Trademark Opposition Not the Same Distinctiveness Test for Passing Off

On January 17, 2018, the Federal Court (FC) dismissed the appeal of Sadhu Singh Hamdard Trust (Trust) from a decision of the Trade-marks Opposition Board (TMOB) refusing the Trust’s application to register the mark AJIT based on its use in association with printed publications and newspapers (Sadhu Singh Hamdard Trust v Navsun Holdings Ltd, 2018 FC 42).

The Trust publishes a daily newspaper “AJIT” in India and operates a corresponding website, both in Punjabi. The opponent (Navsun) publishes a weekly newspaper, also named “AJIT”, in Canada and operates a corresponding website, both in Punjabi. The TMOB found that as of the date of filing the opposition in December 2012, the material date for assessing distinctiveness, Novasun’s mark AJIT had acquired a significant reputation in Canada for the target readers served by its newspaper. The TMOB also found that the Trust’s mark had at best a minimal reputation in Canadian for the same target group as of the material date. Therefore, the TMOB held that Navsun’s mark AJIT was sufficiently known to negate the distinctiveness of the Trust’s applied-for mark.

On appeal, the Trust relied on the decision of the Federal Court of Appeal in the Trust’s passing off action against Navsun (2016 FCA 69), arguing that the distinctiveness of a mark need not be acquired by use in Canada. The FC rejected this argument noting that in assessing a passing off claim, the distinctiveness of a mark relevant to the confusion assessment can be acquired through use of the mark outside of Canada; however in the context of an application to register or maintain a mark, the jurisprudence is consistent that distinctiveness can only be acquired by use in Canada.

Summary By: Junyi Chen