Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd.

Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd.
Court (s) Database
Federal Court Decisions
Date
2021-06-11
Neutral citation
2021 FC 602
File numbers
T-1127-10
Notes
A correction was made on June 17, 2021
Decision Content
Date: 20210611
Docket: T-1127-10
Citation: 2021 FC 602
Ottawa, Ontario, June 11, 2021
PRESENT: The Honourable Justice Fuhrer
BETWEEN:
SADHU SINGH HAMDARD TRUST
Plaintiff
and
NAVSUN HOLDINGS LTD. AND 6178235 CANADA INC.
Defendants
AMENDED JUDGMENT AND REASONS
I. Overview
[1] This matter revolves around the Punjabi term AJIT, meaning “unconquerable” or “invincible,” and the rights to it in Canada in association with newspapers. The dispute between the parties is lengthy and the procedural history leading to this second redetermination of the summary trial is complex. The issues to be redetermined are the Plaintiff’s claims of passing off, infringement and depreciation of goodwill, including all factual and legal issues related to liability.
[2] To address the issues to be redetermined, I first summarize the factual background, followed by the nature of the proceedings and procedural history, including the findings that stand. I then summarize the parties’ evidence and particularize the issues to be redetermined. Finally, I base my analysis on this foundation, including careful consideration of the parties’ records and submissions for this second redetermination, and applicable legal principles.
[3] For the reasons that follow, I find Hamdard Trust succeeds in its claim for passing off, but only in respect of Navsun’s Original Logo (described below). The Defendants are liable to Hamdard Trust for compensatory damages in the amount of $10,000, but only for the period July 2004 to September 2009, having regard to the applicable limitation and defence. Otherwise, Hamdard Trust’s claims for infringement under Sections 19 and 20, and depreciation of goodwill under Section 22, in respect of Navsun’s Modified Logo (described below) are dismissed.
II. Factual Background
A. (a) Daily Ajit
[4] The Plaintiff, Sadhu Singh Hamdard Trust [Hamdard Trust] publishes a Punjabi-language newspaper known as AJIT, widely-read and well-known among the Punjabi population in India. Since at least as early as 1968, the words THE DAILY AJIT JULLUNDUR (with AJIT shown in larger, bold text), and later Daily Ajit, Jalandhar, were displayed in Latin characters on the newspaper’s masthead, in addition to a stylized version of the Punjabi name AJIT. The word “Daily” appears to have been dropped altogether by 2016, leaving the words Ajit, Jalandhar. To differentiate between the Plaintiff’s and Defendants’ newspapers, I refer to the Plaintiff’s newspaper as Daily Ajit.
[5] In 1955, Dr. Sadhu Singh Hamdard founded Daily Ajit, originally under the name Ajit Patrika, in Jalandhar, Punjab state, India. The name changed in 1959 to simply AJIT and has been used continuously since then. Dr. Hamdard was the Chief Editor from 1955 until his death in 1984. A sample masthead from 1968 is reproduced immediately below:
[6] Dr. Hamdard created Hamdard Trust in 1977, a public charitable trust, and donated all assets of the Daily Ajit newspaper to it, including machinery, presses and buildings. Dr. Hamdard was the Chair of Hamdard Trust until his death in 1984. As the English name Daily Ajit implies, it is a daily newspaper with typical content, including local, national and international news, weather forecasts, sports, television listings, features, editorials and advertisements. Hamdard Trust launched the website with the domain name www.ajitjalandhar.com in 2002. The Daily Ajit content is available to read on the Hamdard Trust’s website and also on mobile apps.
[7] The Daily Ajit newspaper’s average daily circulation has grown from 23,467 copies in 1975 to 400,126 copies in 2016, with 414,590 copies on weekends. There have been subscribers in Canada and other countries since at least 1968. Circulation of the Daily Ajit newspaper beyond India is thin, however, because of late delivery resulting from large geographical distances. This is borne out, for example, by the circulation figures for Canada. During the twenty-year period spanning from 1990 to 2010, circulation of Daily Ajit reached a high of 43 subscribers in 1991, with a low of 4 in 2003, 2004, 2006 and 2008, and only 7 in 2010. In each of the years 2002 until and including 2010, the number of Canadian subscribers was under 10. Not many daily subscriptions to the newspaper, therefore, are sold overseas. There have been, however, letters to the editor and advertising from Canada over the years. Further, since the launch of Hamdard Trust’s mobile apps in about December 2012, which permit users to access Daily Ajit content online free of charge, the number of user downloads of the apps for Android and IOS operating systems in Canada has grown to exceed 71,000 as of August 17, 2017.
[8] Since 1984, the Daily Ajit masthead features a logo comprised of the Punjabi name AJIT in a unique stylized form [Hamdard Trust’s Logo] and in the colour red. The most unusual part of Hamdard Trust’s Logo is the “hook” above the stylized Punjabi word AJIT, which is flattened on top and extends to the left across adjacent characters. The flattened bottom of the final letter also is unique. These design features comprise an original design created by an employee of Hamdard Trust in 1984 and are not found in any Punjabi font. That said, the balance of the lettering resembles a font known as “Nanak heavy font” first published in 1995. A sample masthead from 2004 is reproduced immediately below:
[9] Hamdard Trust’s Logo is registered in Canada under trademark registration No. TMA914925 dated September 23, 2015 essentially for printed and electronic newspapers and magazines and related services. The registration is based on use of the trademark in Canada since at least as early as August 22, 1984 for such goods and claims other dates of use for the remaining goods and services. Colour is not claimed as a feature of the trademark. Hamdard Trust’s Logo as registered is reproduced immediately below:
[10] Hamdard Trust became aware of Ajit Weekly (described below) when its then Editor-in-Chief, Dr. Barjinder Singh Hamdard, visited Canada in 1995.
B. (b) Ajit Weekly
[11] Since 1993, the Defendant, Navsun Holdings Ltd. [Navsun] and its predecessors, the Bains family, have published a free weekly newspaper in Canada targeted to the Punjabi community in Canada and subsequently, in the United States of America. To differentiate between the Defendants’ and Plaintiff’s newspapers, I refer to the Defendants’ newspaper as Ajit Weekly. The Ajit Weekly, also a Punjabi-language newspaper, had some English language content.
[12] The family-run business first operated under the name The Ajit or Weekly Ajit. Navsun was incorporated in 1997, originally under the name Ajit Newspaper Advertising, Marketing and Communications Inc. which was changed to Navsun Holdings Ltd. in 2005. Since 1998, Navsun has operated a website with the domain name www.ajitweekly.com where electronic versions of the Ajit Weekly newspaper are published. The Defendant, 6178235 Canada Inc. [617Canada] is the current publisher of the Ajit Weekly newspaper, under licence from Navsun since January 2004. The Bains family remains involved with the business and the companies. Unless implied from the context or stated otherwise, references to Navsun include 617Canada.
[13] The Ajit Weekly newspaper is distributed every week in bundles to grocery stores, supermarkets, restaurants, temples and newspaper stands around the Greater Toronto and Vancouver areas. Copies are placed in newspaper boxes bearing Navsun’s AJIT Design Mark (described in greater detail below) at specific locations in British Columbia and Toronto. As of 2014, Navsun was printing 11,000 newspapers per week from its Vancouver-based printer and 13,000 newspapers per week from its Toronto-based printer. The website at www.ajitweekly.com, where the electronic version of Ajit Weekly newspaper is published, receives a wide ranging number of visits each month (from about as low as 5,500 to as high as 30,000 and sometimes beyond).
[14] For many years Navsun’s masthead incorporated the Punjabi word AJIT (essentially in the form of Hamdard Trust’s Logo depicted in paragraph 8 above), with the words “The Ajit (Weekly Newspaper)” underneath, and with a design featuring two Canadian flags flanking the Sikh Khanda symbol under those words, as shown immediately below:
[15] Each week a different colour was chosen to use on the front of the newspaper and in the Punjabi word AJIT. In 2000, Navsun decided to use the colour magenta for such word and replaced the words “The Ajit (Weekly Newspaper)” with “www.ajitweekly.com.” A sample masthead from the Ajit Weekly newspaper as it appeared in January 2000 is shown immediately below:
[16] On March 3, 2005, Navsun registered the design mark shown below [Navsun’s Original Logo] in Canada under registration No. TMA634203 essentially for printed and electronic newspapers and magazines, and related online services, based on use of the mark in Canada since at least as early as October 15, 1993. Navsun’s Original Logo was comprised of Hamdard Trust’s Logo with the words AJIT WEEKLY underneath. Because earlier iterations of Navsun’s Original Logo depicted above contained the same design element and some form of the words AJIT WEEKLY underneath, I include those earlier iterations in the term Navsun’s Original Logo. Navsun cancelled the registration in 2010, after Hamdard Trust commenced expungement proceedings that were rendered moot by reason of the cancellation.
[17] Since September 2009, Navsun has used the following design mark instead [Navsun’s Modified Logo], normally with the stylized Punjabi word AJIT in the colour green:
[18] Navsun adopted the above mark further to a Partial Settlement Agreement signed by the parties on September 15, 2009 discussed in greater detail below.
III. Nature of the Proceedings and Procedural History
[19] There have been numerous proceedings involving these parties in Canada, the United States of America and elsewhere. The relevant USA and Canadian proceedings are summarized below.
A. (1) United States of America
[20] On August 12, 2004, the Hamdard Trust commenced an action in the United States District Court for the Eastern District of New York [District Court] against Navsun and Darshan Singh, also known as Dr. Darshan Singh Bains (Director of Navsun and Editor-in-Chief of the Ajit Weekly newspaper), now deceased. Hamdard Trust alleged trademark and copyright infringement by the Defendants. The District Court granted, and the United States Court of Appeals for the Second Circuit confirmed on appeal, summary judgment in favour of the Defendants, except with respect to the copyright claim.
[21] In settlement of the copyright claim, the parties signed a Partial Settlement Agreement [PSA] on September 15, 2009 in which the Defendants agreed not to dispute, in any jurisdiction, that Hamdard Trust owns valid copyright in Hamdard Trust’s Logo (identified as the “Daily Ajit Logo” in the PSA) and that Hamdard Trust’s Logo, but not the word AJIT, meets the requirements to merit copyright protection.
[22] The PSA terms also included a limited licence to the Defendants to use Hamdard Trust’s Logo and Navsun’s then essentially identical logo, until December 31, 2009. Navsun agreed to use, as of January 1, 2010, a “clearly distinguishable” logo. The parties stipulated that the different stylized form of the word AJIT, as shown in green above in Navsun’s Modified Logo, is “clearly distinguishable.” The parties also agreed that: (i) the limited licence would not affect their respectively asserted trademark and other rights in any jurisdiction; and (ii) the PSA could be pleaded as a full and complete defence in other proceedings. The District Court made the PSA part of an Order on October 1, 2009, by consent of all parties.
B. (2) Canada
[23] Hamdard Trust commenced the present action on July 15, 2010 against Navsun, 617Canada and Master Web Inc., a printer and distributor of the Ajit Weekly newspaper in Canada. Proceedings against Master Web were discontinued in 2015.
[24] In its Thrice Amended Statement of Claim, Hamdard Trust alleges, briefly, that the Defendants:
- by their use of Navsun’s Original and Modified Logos, have directed and continue to direct attention to their wares, services or business in such a way as to cause or be likely to cause confusion in Canada between the Defendants’ wares, services or business and those of Hamdard Trust, contrary to paragraph 7(b) of the Trademarks Act, RSC 1985, c T-13;
- have infringed Hamdard Trust’s Logo and AJIT trademark within the meaning of section 20 of the Trademarks Act;
- by their use of AJIT and Navsun’s Original Logo, have infringed Hamdard Trust’s Logo and AJIT trademark within the meaning of section 19 of the Trademarks Act;
- by their use of Navsun’s Modified Logo, have depreciated the value of the goodwill in Hamdard Trust’s Logo and AJIT trademark; and
- have infringed copyright in Hamdard Trust’s Logo.
[25] In their Second Amended Statement of Defence and Counterclaim, the Defendants dispute Hamdard Trust’s claims. The Defendants allege that a number of the claims in registration No. TMA914925 for Hamdard Trust’s Logo are false, including the claimed date of use in Canada (since at least as early as August 22, 1984), in so far as electronic publications and internet related services are concerned. The Defendants thus counterclaim for a declaration that registration No. TMA914925 is void ab initio and should be struck from the register of trademarks. (The Defendants’ counterclaim previously alleged false and misleading statements by Hamdard Trust tending to discredit the business, wares or services of a competitor, contrary to paragraph 7(a) of the Trademarks Act. The Counterclaim was dismissed by the Federal Court in 2014, confirmed on appeal, as mentioned below, and hence, no longer forms, altogether, part of the proceedings.) The Defendants also point out that Hamdard Trust’s claims of infringement and depreciation of goodwill, which they denied, cannot be advanced before the date of registration of Hamdard Trust’s Logo (September 23, 2015). Further, the Defendants plead delay, laches and acquiescence.
[26] In its Amended Reply to the Second Amended Statement of Defence and Counterclaim, Hamdard Trust claims that registration No. TMA914925 covers both Hamdard Trust’s AJIT Logo and AJIT trademark. In addition, registration No. TMA914925 contains no misrepresentations and conforms to the requirements of the Trademarks Act. Further, the Defendants were aware of the underlying application and did not oppose it.
[27] The Plaintiff brought a motion for summary judgment, summary trial, or for an order that the Statement of Claim be treated as a Notice of Application pursuant to Rule 300 of the Federal Court Rules and that the Application be heard and decided on the basis of the filed evidence. The Defendants brought a cross-motion for summary judgment or summary trial to be heard the same date as the Plaintiff’s motion. These motions resulted in the first of several Federal Courts’ determinations of this matter.
(1) (a) 2014 FC 1139 [Hamdard FC 2014]
[28] Noting the complexity of the matter, Justice McVeigh found that it could be determined as a summary trial on affidavit evidence filed and cross-examined by both parties. This finding has not been displaced in successive determinations; hence, the matter has come before me as a second redetermination of the parties’ summary trial motions. Justice McVeigh dismissed Hamdard Trust’s claim and the Defendants’ counterclaim, with no costs to either party.
(2) (b) 2016 FCA 69 [Hamdard FCA 2016]
[29] On appeal from Hamdard FC 2014, the Federal Court of Appeal allowed Hamdard Trust’s request that the matter be remitted to the Federal Court for redetermination of its claim but maintained the judgment regarding the dismissal of Hamdard Trust’s claim against Master Web and the dismissal of the Defendants’ counterclaim regarding violation of paragraph 7(a) of the Trademarks Act. In arriving at this determination, Justice Gleason made a number of noteworthy findings.
[30] First, because the Copyright Act, RSC 1985, c C-42, prescribes a three-year limitation period, Hamdard Trust can claim copyright infringement only for acts going back as far as July 15, 2007 (three years prior to the issuance of the Statement of Claim on July 15, 2010): Hamdard FCA 2014, at para 10. Second, both parties’ marks are comprised of a stylized version of the word AJIT which is a commonly-used name among Punjabis. The trademarks in issue thus are not just the word AJIT “but, rather, the word and the stylized way in which it is written, that both papers use as their logos”: Hamdard FCA 2016, at para 28. Third, “the presence of the requisite damages to found a claim in passing off can be established through proof of a loss of control over reputation, image or goodwill”: Hamdard FCA 2016, at para 31 (citing Cheung v Target Event Production Ltd, 2010 FCA 255 at paras 24, 27-28; Orkin Exterminating Co Inc v Pestco Co. of Canada Ltd et al, 1985 CanLII 157 (ON CA) [Orkin], [1985] O.J. No. 2536, 1985 CarswellOnt 144 at paras 48-49, 75).
(3) (c) 2018 FC 1039 [Hamdard FC 2018]
[31] On the first redetermination of this matter, Justice Fothergill incorporated Justice McVeigh’s summary of the evidence to that point, and then summarized additional evidence subsequently filed by the parties: Hamdard FC 2018, at paras 25-27. On the merits, Justice Fothergill found that Hamdard Trust established its claims of passing off, but only with respect to Navsun’s Original Logo (and not with respect to Navsun’s Modified Logo nor the domain name www.ajitweekly.com), and awarded only nominal damages of $5,000 (because of no proven impact on Hamdard Trust’s business).
[32] Justice Fothergill also found Navsun’s Original Logo infringed Hamdard Trust’s copyright. Hamdard Trust thus could recover damages, but only from July 2007 (three years prior to the time when the action was commenced in July 2010, having regard to the three-year limitation period noted by Justice Gleason in Hamdard FCA 2014) to September 2009 (when the PSA was executed). A nominal amount of $5,000 in damages for copyright infringement was awarded. Otherwise, Justice Fothergill found that Hamdard Trust had not met its burden of establishing passing off, trademark infringement, depreciation of goodwill or copyright infringement in respect of Navsun’s Modified Logo.
[33] Regarding the Defendants’ Second Amended Statement of Defence and Counterclaim, which was filed in advance of the first redetermination, Justice Fothergill found that while the Defendants were granted leave to file an amended statement of defence, this could not have the effect of reviving the counterclaim given its prior dismissal.
(4) (d) 2019 FCA 295 [Hamdard FCA 2019]
[34] On appeal from Hamdard FC 2018, the Federal Court of Appeal granted the following (in summary):
the cross-appeal by Navsun and 617Canada, in part regarding the (re)determination of liability for passing off from July 2007 to September 2009 in respect of Hamdard Trust’s Logo;
variation of the damages award so that Navsun is liable to Hamdard Trust for $5,000 for copyright infringement from July 2007 to September 2009 (regarding Navsun’s Original Logo);
Hamdard Trust’s appeal regarding the dismissal of its claims under paragraph 7(b) and sections 19, 20 and 22 of the Trademarks Act, with the matter remitted to the Federal Court for redetermination of all factual and legal issues related to liability under these provisions.
[35] In the course of arriving at this disposition, Justice Laskin made several noteworthy findings that have a bearing on the outstanding issues, as well as on my analysis. First, so long as the summary trial judge undertakes their own analysis, nothing precludes the judge from adopting the evidential summaries or portions of the reasons from the previous summary trials: Hamdard FCA 2019, at para 16. Second, an infringement claim under section 19 of the Trademarks Act involves the question of whether the trademarks in issue are identical which means the same, not merely similar: Hamdard FCA 2019, at paras 20, 22.
[36] Third, an infringement claim under section 20 of the Trademarks Act involves a consideration of all subsection 6(5) factors, even where there is a significant degree of resemblance between the trademarks in issue: Hamdard FCA 2019, at paras 25, 28. Fourth, the test for assessing depreciation of goodwill under section 22 of the Trademarks Act is the four-part test set out in paragraph 46 of Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 [Veuve Clicquot]: Hamdard FCA 2019, at para 34.
[37] Fifth, to have recourse to a passing off claim under paragraph 7(b) of the Trademarks Act, a plaintiff must meet the threshold requirement of having “a valid and enforceable trademark, whether registered or unregistered, at the time the defendant first began directing public attention to its own goods and services.” This in turn requires consideration of whether the plaintiff has demonstrated use of its trademark to distinguish its wares and services from those of others: Hamdard FCA 2019, at para 39.
[38] Sixth, it was open to the Federal Court to consider the factors described at para 54 of Veuve Clicquot (for assessing goodwill in the context of section 22) in connection with the Federal Court’s conclusion of the existence of the goodwill required to support a claim under paragraph 7(b): Hamdard FCA 2019, at paras 47-50. Seventh, the Federal Court made no palpable and overriding error in concluding that “Navsun has offered no credible explanation for its decision to use the ‘Ajit’ name in Canada when it launched the Ajit Weekly in 1993”: Hamdard FCA 2019, at para 52. Eighth, the Federal Court was correct in finding the Defendants’ counterclaim no longer was before it, and in declining to consider it: Hamdard FCA 2019, at paras 55-56.
(5) (e) The Word Mark AJIT
[39] In addition to the above legal proceedings, the parties have engaged in proceedings before the Trademarks Opposition Board. One such proceeding is noteworthy, in part because the parties referred to it in their pleadings and submissions in the case before me. Further, I consider that it has a bearing on Justice Gleason’s finding in Hamdard FCA 2014, at para 28, to the effect that the trademarks in issue are not just the word AJIT but rather the word and its stylization that both papers use as their logos. I find what is at issue in this second redetermination, at least as of December 28, 2012, is the stylized version of the word AJIT used by the parties.
[40] Hamdard Trust applied in 2010 to register the word mark AJIT under application No. 1487122 for printed publications and newspapers (as amended). Further to Navsun’s opposition, the Registrar of Trademarks refused the application on the basis of non-distinctiveness. The material date as of which the Registrar assessed the distinctiveness of Hamdard Trust’s applied for trademark AJIT was the date of filing of the opposition, December 28, 2012. The Registrar found that Navsun’s mark AJIT was known sufficiently by such date to negate the distinctiveness of the word mark AJIT in the hands of Hamdard Trust, citing Bojangles International LLC v Bojangles Café Ltd, (2006) 48 CPR (4th) 427 (2006 FC 657 [Bojangles] at para 34). Thus, the Registrar refused the application: Navsun Holdings Ltd v Sadhu Singh Hamdard Trust, 2015 TMOB 214 [Navsun TMOB 2015] at para 41. Hamdard Trust’s appeals to the Federal Court (2018 FC 42) and Federal Court of Appeal (2019 FCA 10) were dismissed, as was its application for leave to appeal to the Supreme Court of Canada.
IV. Issues to be Redetermined
[41] Before framing the issues to be redetermined, I note the following points no longer are in dispute based on the above procedural history:
- the determination of this matter as a summary trial on affidavit evidence filed and cross-examined by both parties;
- adoption of summaries of affidavit and cross-examination evidence, as well as portions of the reasons, from Hamdard FC 2014 and Hamdard FC 2018: Hamdard FCA 2019, at para 16;
- copyright infringement with respect to Navsun’s Original Logo: Hamdard FC 2018, at para 79; and nominal damages of $5,000 for such infringement; Hamdard FCA 2019, at para 63;
- copyright infringement with respect to Navsun’s Modified Logo (Hamdard Trust did not pursue such claim before the Federal Court on the first redetermination because of the PSA): Hamdard FCA 2019, at para 11, and Hamdard FC 2018 at para 76;
- that Navsun’s internet domain name www.ajitweekly.com is not confusingly similar to Hamdard Trust’s Logo: Hamdard FCA 2019, at para 32;
- the existence of goodwill in connection with Hamdard Trust’s paragraph 7(b) claim: Hamdard FCA 2019, at paras 47-50;
- that Navsun offered no credible explanation for its decision to use AJIT in Canada when it launched Ajit Weekly in 1993: Hamdard FCA 2019, at para 52; and
- the Defendants’ counterclaim: Hamdard FCA 2019, at paras 55-56.
[42] In addition to the above points, the Plaintiff agreed at the rehearing of the matter before me that paragraph 7(c) of the Trademarks Act also no longer is left for redetermination. I note, in any event, that the thrice Amended Statement of Claim does not contain any claim based on such provision.
[43] The following overarching issues thus remain for the second redetermination of this matter:
Have the Defendants engaged in passing off within the meaning of paragraph 7(b) of the Trademarks Act?
Have the Defendants infringed Hamdard Trust’s Logo within the meaning of Section 19 of the Trademarks Act?
Have the Defendants infringed Hamdard Trust’s Logo within the meaning of Section 20 of the Trademarks Act?
Have the Defendants depreciated whatever goodwill attaches Hamdard Trust’s Logo within the meaning of Section 22 of the Trademarks Act?
What remedies, if any, are appropriate in the circumstances?
[44] The first question must be determined with regard to Navsun’s Original Logo and Navsun’s Modified Logo, while second, third and fourth questions are to be determined with reference to Hamdard Trust’s Logo as registered under registration No. TMA914925 dated September 23, 2015 and Navsun’s Modified Logo which Navsun has used in Canada since September 2009.
V. Relevant Provisions
[45] See Annex “A” below.
VI. Parties’ Evidence
[46] Because nothing precludes me from adopting the evidentiary summaries of the prior proceedings (Hamdard FCA 2019, at para 16), I do so. See Annex “B” for a list of the affidavits the parties rely on; see Annex “C” for the summaries of the affidavits and cross-examinations, including relevant portions of additional affidavits not previously summarized.
VII. Analysis
A. A. Passing Off – Paragraph 7(b)
(1) (1) General Principles
[47] The Trademarks Act regulates both registered and unregistered trademarks. More specifically, paragraph 7(b) is directed to the enforcement of trademarks and trade names in Canada. “[T]he civil remedy in s. 7(b) protects the goodwill associated with trade-marks and is directed to avoiding consumer confusion through use of trade-marks”: Kirkbi AG v Ritvik Holdings Inc, 2005 SCC 65 [Kirkbi] at para 35. As noted by Justice Laskin, it is a requirement that the Plaintiff prove “possession of a valid and enforceable trademark, whether registered or unregistered, at the time the defendant first began directing public attention to its own goods and services”: Hamdard FCA 2019, above at para 39. Apart from the amendment of the word “wares” to “goods” and the formal repeal of paragraph 7(e), section 7 has remained substantially the same from the time when the Plaintiff commenced this lawsuit in 2010 to the present, including the recent amendments to the Trademarks Act that came into force in June 2019.
[48] In order to succeed in an action for passing off, a plaintiff must establish three elements: the existence of goodwill; deception to the public because of a misrepresentation; and actual or potential damage to the plaintiff. Greater detail about these prerequisites can be found in Ciba-Geigy Canada Ltd v Apotex Inc, 1992 CanLII 33 (SCC), [1992] 3 SCR 120 [Ciba-Geigy] at 132, citing Reckitt & Colman Products Ltd v Borden Inc, [1990] 1 All ER 873 at 880. Paraphrasing, a plaintiff must establish, more specifically, that:
(1) there exists goodwill or reputation attached to the goods or services supplied by the plaintiff, in the mind of the purchasing public, by reason of association with the identifying get up, such as a brand, recognized by the public as distinctive of the plaintiff’s goods or services;
(2) the defendant has made a misrepresentation to the public (whether intentional or not) resulting in or likely to result in the public concluding the defendant’s goods or services are those of the plaintiff; and
(3) the plaintiff has suffered or likely will suffer damage as a result of the erroneous belief caused by the defendant’s misrepresentation regarding the source of the goods or services.
[49] In my view, inherent in (1) above is the threshold requirement for a plaintiff to establish that it has used its trademark to distinguish its goods and services from those of others, thus resulting in a valid and enforceable trademark, whether registered or unregistered, at the time the defendant started to direct public attention to its own goods and services: Hamdard FCA 2019, at para 39, citing Nissan Canada Inc v BMW Canada Inc., 2007 FCA 255 at paras 15-18. A plaintiff who does not meet this minimum threshold cannot succeed in preventing others from using that mark or name: Brewster Transport Co v Rocky Mountain Tours & Transport Co, 1930 CanLII 36 (SCC), [1931] SCR 336 at pages 339-340.
[50] A trademark’s distinctiveness resides in its ability “to indicate the source of a particular product, process or service in a distinctive manner, so that, ideally, consumers know what they are buying and from whom”: Kirkbi AG v Ritvik Holdings Inc, 2005 SCC 65 [Kirkbi] at para 39, [2005] 3 SCR 302. While a trademark’s traditional role was to create a link in the prospective buyer’s mind between the product and the producer, it has come to represent not only a guarantee of origin but also an assurance to the consumer that the quality will be what they have come to associate with the mark (paraphrasing Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 [Mattel] at para 2, [2006] 1 SCR 772).
[51] An assessment of the issue of deception to the public because of a defendant’s alleged misrepresentation necessitates consideration of the likelihood of confusion under section 6 of the Trademarks Act: Hamdard FCA 2019, at para 53. As noted more recently by the Federal Court of Appeal, “[t]he Supreme Court made it clear in Masterpiece that all factors set out in subsection 6(5) and surrounding circumstances must be assessed and balanced unless the marks do not resemble one another”: Loblaws Inc v Columbia Insurance Company, 2021 FCA 29 at para 11, citing Masterpiece Inc v Alavida Lifestyles Inc., 2011 SCC 27 [Masterpiece] at para 49. The confusion test to be applied can be summed up generally as follows: “[it] is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the [mark] at a time when he or she has no more than an imperfect recollection of the [prior] trade-marks and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks” Veuve Clicquot, at para 20.
[52] With these principles in mind, I find Hamdard Trust has established the Defendants engaged in passing off with respect to Navsun’s Original Logo but not with respect to Navsun’s Modified Logo, for the reasons below.
(2) (2) Navsun’s Original Logo
(a) (a) Threshold – Distinctiveness
[53] The passing off enquiry begins with a consideration of whether Hamdard Trust had a protectable right in Canada in 1993 when Navsun’s predecessors launched Ajit Weekly and, thus, began to direct public attention to their newspaper as contemplated by paragraph 7(b) of the Trademarks Act. I find that it did, having regarding to the three criteria for establishing the distinctiveness described by Justice Noël, that: a mark and product are associated; the trademark owner uses the association between the mark and the product; and the association enables the owner to distinguish their product from those of others: Bojangles, at para 70 citing Havana House Cigar and Tobacco Merchants Ltd v Skyway Cigar Store (1998), 1998 CanLII 7773 (FC), 147 FTR 54, [1998] FCJ No 678 (FC), rev'd on other grounds by (1999), 251 NR 215, [1999] FCJ No 1749 (FCA). In 1993, Hamdard Trust’s Logo was associated with Punjabi-language newspapers; Hamdard Trust used that association to sell its Daily Ajit newspapers, and the association enabled Hamdard Trust to distinguish its Daily Ajit newspapers from those of others.
[54] Contrary to Navsun’s argument, in my view the word AJIT, whether in Punjabi or Latin characters, is inherently distinctive in connection with newspapers and related goods and services. It has no meaning in and of itself in relation to such goods and services and, thus, it is capable of serving as a source indicator, notwithstanding how common AJIT may be as a first or given name of individuals or as the name of other businesses in other fields or industries. That said, the proliferation of AJIT as a name of individuals and businesses can have an impact on its strength as a trademark.
[55] Navsun succeeded, however, in its opposition to Hamdard Trust’s application to register the word mark AJIT, not because AJIT lacks inherent distinctiveness. Rather, as of the date Navsun opposed the application on December 28, 2012, Navsun had acquired a significant, or at least sufficient, reputation in Canada in Navsun’s Original Logo to displace any earlier reputation Hamdard Trust may have had in the word AJIT in connection with its Daily Ajit newspaper: Navsun TMOB 2015, at paras 37-42. In addition, the Registrar noted, “it appears that the parties are on common ground in accepting that each party uses the English term AJIT as a trade-mark and also uses the Punjabi script form of the word ‘ajit’ as a trade-mark”: Navsun TMOB 2015, at para 25.
[56] I find based on the evidence in the case before me, the parties have used the word AJIT both in Punjabi and Latin characters, to varying degrees but as part of, or in connection with, their respective logos. As Justice Gleason concluded, the marks at issue in the case are not simply the word AJIT but, rather, the word and the stylized way in which it is written and used as logos by both parties: Hamdard FCA 2016, at para 28.
[57] Turning to the situation in 1993, I agree that Hamdard Trust had very few subscribers for its Daily Ajit newspaper in Canada. This is not, however, the sole measure of the distinctiveness of Hamdard Trust’s Logo nor of Daily Ajit’s reputation (as opposed to “acquired distinctiveness”) in Canada. Further, I disagree with Navsun that such reputation is limited by or dependent on whatever “acquired distinctiveness” arose through the use of Hamdard Trust’s Logo in Canada (because of the small number of Daily Ajit subscribers).
[58] As noted by Justice Southcott in Hamdard Trust’s appeal to the Federal Court of the Registrar’s decision in Navsun TMOB 2015, conclusions about Daily Ajit’s possible reputation and resulting goodwill, in the context of passing off, among a wider group in Canada than the few subscribers who bought the print version of the paper, “need not arise from the plaintiff’s use of the relevant trade-mark in the defendant’s market[; …] in assessing a passing off claim, the distinctiveness of the mark relevant to the confusion assessment can also be acquired through use of the plaintiff’s mark outside Canada”: Trust v Navsun Holdings Ltd, 2018 FC 42 [Trust FC 2018] at para 39. Justice Southcott’s view in this regard was formulated with reference to Justice Gleason’s decision in Hamdard FCA 2016 (at paras 25-27 of the latter decision).
[59] Navsun also points to a lack of evidence of any advertising of Daily Ajit newspaper in Canada prior to 1993. As noted by Justice Noël, however, “[t]he reputation of the mark can be proven by any means, and is not restricted to the specific means listed in section 5 of the Act, and it is for the decision-maker to weigh the evidence on a case-by-case basis”: Bojangles, at para 33. Although Justice Noël made this observation in the context of trademark opposition proceedings, I find nonetheless that, in the context of passing off proceedings, it was open to Hamdard Trust to establish the reputation of Hamdard Trust’s Logo in Canada in 1993, at the time when Navsun started to direct attention to its newly launched Ajit Weekly newspaper, by means other than (or in addition to) those listed in Section 5 of the Trademarks Act.
[60] Both parties’ affiants, including those residing in Canada, attested to the reputation of Hamdard Trust’s Daily Ajit Punjabi-language newspaper. It was the largest Punjabi-language newspaper in the world. It was well-known, if not famous, in India where it had been published for almost 40 years by 1993 under the name AJIT or a name containing AJIT (i.e. the initial name Ajit Patrika), and where Hamdard Trust’s Logo had been used for about 9 years by then. In the circumstances, I find it reasonable to infer that Daily Ajit, at the relevant time, thus was known or had a wider reputation among the sizable Punjabi diaspora in Canada, and in particular among the relevant universe of consumers being readers of Punjabi-language newspapers, than just those subscribers to the physical or hard copy newspaper. Satpaul Singh Johal’s affidavit of February 21, 2014 attests that, according to Canadian census data he reviewed, the people who gave Punjabi as their mother tongue numbered: 136,460 in 1991; 201,780 in 1996; 271,220 in 2001; 382,585 in 2006; and more than 450,000 in 2011. Punjabi speakers are mostly immigrants from the Punjab state in India or their descendants. The parties’ evidence does not address, however, the familiarity of such descendants in Canada with Daily Ajit.
[61] The possible contemporaneous or overlapping existence of a Hindi-language publication with the name Ajeet Patrika does not detract, in my view, from Daily Ajit’s reputation, or negate the distinctiveness of Hamdard Trust’s Logo, particularly in the absence of any details concerning Ajeet Patrika’s circulation, readership and reputation including whether the latter has any reputation in Canada. Nor does the existence of other people and businesses in India bearing the name “Ajit,” especially absent evidence that they occupy the newspaper, magazine or similar media publishing sphere, the extent to which they may do so, and whether their reach includes Canada.
[62] Further, as mentioned above, the Federal Court of Appeal found no palpable and overriding error in the determination that Navsun provided no credible explanation for its decision to use “Ajit” in Canada when it launched Ajit Weekly: Hamdard FCA 2019, at para 52, referring to Hamdard FC 2018, at para 36. Having considered the totality of the evidence, including the transcript of Kanwar (Sunny) Bains’ cross-examination on January 29, 2018, I agree with Justice Fothergill’s determination in this regard. Mr. Bains admitted to reading Daily Ajit newspaper “off and on” when growing up in the Punjab; in addition, he agreed that readers of Ajit Weekly newspaper “are entirely immigrants from the Punjab,” who “have been arriving in Canada continuously since [he] began to publish [his