On January 17, 2019, the Federal Court of Appeal (FCA) published its decision in Sadhu Singh Hamdard Trust v Navsun Holdings Ltd (2019 FCA 10), dismissing the appeal of Sadhu Singh Hamdard Trust (Trust) from a decision of the Federal Court (FC) that held that Trust’s proposed word mark, AJIT, was unregistrable on the basis of distinctiveness.

Trust publishes a daily publication, “AJIT”, in India.  The respondent, Navsun Holdings Inc (Navsun), publishes a weekly newspaper, also named “AJIT”, in Canada.

The Trade-marks Opposition Board (TMOB) allowed Navsun’s opposition of Trust’s proposed word mark “AJIT” in association with printed publications and newspapers finding that Navsun’s mark AJIT was sufficiently known to negate the distinctiveness of Trust’s applied-for mark.

On appeal, the FC upheld the decision of the TMOB, concluding that Trust’s evidence of readership in India among members of the Punjabi community that have since immigrated to Canada could not qualify as use in Canada for the purposes of distinctiveness (previously reported in the E-TIPS® Newsletter here).

The FCA upheld the decision of the FC, holding that in the context of an application to register or maintain a mark, distinctiveness can only be acquired by use in Canada, not foreign use.  The FCA noted that infringing prior use may cause a mark to lose its distinctiveness and that “[i]t is incumbent upon a trader to protect the distinctiveness of its mark, even in the face of infringing use.”

Summary By: Michelle Noonan

E-TIPS® ISSUE

19 02 06