Plaintiff’s distinctiveness of mark displaced by defendant’s shift to modified logo: court

Case involved use of similar logo in two Punjabi-language newspapers, in India and Canada

Plaintiff’s distinctiveness of mark displaced by defendant’s shift to modified logo: court

The Federal Court has resolved a trademark case in the plaintiff’s favour regarding a claim of passing off under s. 7(b) of the Trademarks Act but in the defendant’s favour as to other infringement and depreciation of goodwill claims.

In Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd., 2021 FC 602, the plaintiff -- across numerous cases in different jurisdictions including the present proceeding initiated in Canada in July 2015 -- made claims of passing off, infringement and depreciation of goodwill relating to the term “Ajit,” a Punjabi term meaning “unconquerable” or “invincible,” and the rights to such term in connection with newspapers.

The plaintiff publishes Daily Ajit, a Punjabi-language newspaper widely read among the Punjabi population in India. Its masthead shows its logo, featuring the word “AJIT” in Punjabi and a unique stylized form in red lettering, with a hook above the word that extends to the left. The plaintiff registered its trademark in Canada in September 2015, based on its use in Canada since at least as early as August 1984.

The defendant’s newspaper, Ajit Weekly, is a free weekly Punjabi-language newspaper with some English-language content published since 1993 for the Punjabi community in Canada, and later in the U.S. The defendant has released electronic versions on its website (www.ajitweekly.com) since 1998.

The defendant’s original logo -- registered in Canada in March 2005 based on use of the mark in Canada since at least as early as October 1993 – comprised the plaintiff’s logo with “AJIT WEEKLY” written underneath. The defendant cancelled this logo’s registration in 2010 in response to the plaintiff’s expungement proceedings. The defendant has used a modified logo since September 2009, which features “AJIT” in green lettering.

The Federal Court granted the plaintiff’s claim for passing off under s. 7(b) of the Trademarks Act, RSC 1985, c T-13, but only as regards the defendant’s original logo, for which the plaintiff was entitled to compensatory damages of $10,000 for the period of July 2004 to September 2009. The court however dismissed the plaintiff’s claims for infringement under s. 19 and 20 and for depreciation of goodwill under s. 22 with respect to the defendant’s modified logo.

As regards the defendant’s original logo, the court found that the plaintiff had a protectable right and sufficient goodwill in Canada in 1993 to support a passing-off claim. The court resolved the following factors in the plaintiff’s favour: the extent to which the parties’ trademarks would have become known in Canada as of 1993, the length of time the trademarks had been in use as of 1993, and the nature of the goods, services or business.

As for the defendant’s modified logo, however, the court found that the plaintiff failed to meet the threshold distinctiveness for its passing-off claim to succeed, considering that its logo’s distinctiveness in 1993 was displaced following the defendant’s adoption of the modified logo in 2009.

The court further found that the s. 19 claim should fail because the defendant’s modified logo had been used for around six years in Canada by the time the plaintiff registered its logo in 2015, and because the logos are not identical. The s. 20 claim was also rejected because the court saw no likelihood of confusion between the plaintiff’s logo and the defendant’s modified logo. Finally, the court said that the plaintiff’s logo was not known enough in Canada at the relevant time to have significant goodwill.

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