Federal Court Finds Passing Off Of ASIALICIOUS Trademark

On April 14, 2026, the Federal Court of Canada (the Court) released its decision in Federation of Asian Canadians Toronto v. Asialicious Holdings Inc., 2026 FC 495, finding that the Federation of Asian Canadians Toronto (FACT) established passing off of its trademark ASIALICIOUS (the Mark) by the Federation of Chinese Canadians in Markham (FCCM), Asialicious Holdings Inc., and the Chinese Cuisine & Hospitality Association of Canada (CCHAC) (collectively, the Defendants).

FACT is a not-for-profit organization dedicated to celebrating Asian heritage, which began using the Mark in August 2019 in association with its Scarborough carnival event. In February 2020, CCHAC and FCCM began using the Mark in association with their festival in Markham. Asialicious Holdings, a corporation associated with FCCM, also began using the Mark as a trade name in 2020.

FACT brought an action against the Defendants for passing off under paragraphs 7(b) and 7(c) of the Trademarks Act. The Court found that FACT fulfilled all three required elements of the test for passing off under paragraph 7(b), notably: (1) FACT’s use of the Mark had acquired reputation and goodwill in the relevant market prior to the Defendants’ use of the Mark; (2) Asialicious Holdings Inc.’s use of ASIALICIOUS as a trade name, and CCHAC and FCCM’s public use of the Mark in connection with their festival drew public attention to their services in a manner likely to cause confusion with the Mark; and (3) the Defendants’ conduct caused at least potential damage through loss of control over FACT’s goodwill in the Mark.

Though the Court found passing off to be made out under paragraph 7(b), it found that the requirements under paragraph 7(c) were not satisfied, as there was no evidence of substitution in the marketplace (e.g., the Court mentioned that “Consumers were not shown to have ordered a FACT service and received a Defendant’s service instead”). As a result, FACT’s action succeeded in part, with the Court awarding nominal damages and permanently enjoining the Defendants from using ASIALICIOUS in a manner likely to cause confusion with FACT’s services.

Summary By: Claire Bettio