The Federal Court of Canada recently had occasion to consider a case involving both copyright and trademark issues with a distinctly international flavour. At issue was a Punjabi-language subscription daily newspaper called AJIT DAILY, published in India, and a free weekly newspaper published in Canada called AJIT WEEKLY. The Plaintiff’s AJIT newspaper started publication in India in 1955, and the AJIT WEEKLY publication was first published in Canada in 1993. Disputes between the parties had previously been decided by Courts in the United Kingdom and the United States.
In the case of Hamdard Trust v. Navsun Holdings et al, decided on November 26, 2014, the Federal Court decided the case by way of a summary trial, a format which was consented to by all of the parties.
Litigation was commenced by the Plaintiff in the United States, and the trademark complaints were dismissed by summary judgment. In contrast, the copyright claims were resolved between the parties by way of a settlement agreement which was approved by the U.S. court.
In the United Kingdom, the Plaintiff successfully expunged the registration of the Defendant’s trademark registration for the AJIT WEEKLY logo.
In Canada, neither party had a registered trademark or a registered copyright. On the copyright issue, the Court dismissed the copyright claims against the Defendants on the basis that the settlement agreement permitted the use of the current form of masthead currently being used by the Defendants. The Court held that any disputes between the parties regarding copyright should go back to the United States court, as prescribed in the settlement agreement.
With respect to the passing off claims, the Court was required to determine whether the Plaintiff had proved the following elements making up the common law of passing off, as well as statutory passing off contrary to Section 7(b) of the Trade-marks Act, namely: (1) the existence of goodwill; (2) the likelihood of the deception of the public due to the misrepresentation; and (3) potential or actual damages suffered.
Madam Justice McVeigh held that the Plaintiff’s evidence fell short of establishing a sufficient reputation in Canada (there were only 7 subscribers in Canada), and she also held that the United Kingdom decision was neither binding nor persuasive in Canada. The Court also held that, after examining all of the Section 6(5) confusion factors, there was no likelihood of confusion. The relevant factors included the fact that the word AJIT was a common Punjabi word, the marks had co-existed for many years, and that the goods were sold through different channels of trade. Finally, the Court held that there was no proof of damage.
On the Defendant’s counterclaim, relating to false and misleading statements made by the Plaintiff, the Court held that the statements were simply derogatory statements of the type which would normally be made by parties involved in longstanding litigation.
Accordingly, in the case of international disputes, Canadian courts will give consideration to the judgments arrived at in different jurisdictions, but such decisions will not be followed slavishly. It is also important to bear in mind that reputation and use in Canada is the primary element to be established in a Canadian court in a passing off action, even if there is international use and registration.