Chitiz Pathak Successful in Defeating Copyright and Trademark Claim

December 16, 2014

Tamara Ramsey and associate Gargi Chopra were successful in defending a claim for violations to the Canadian Trade-mark and Copyright Act over an unregistered trademark that was used by their client who published a free weekly newspaper in Toronto and Vancouver against the Plaintiff, a publisher of a subscription daily newspaper in India (with a small number of subscribers in Canada).

The use of the mark “Ajit”, a common word in the Punjabi language by both parties resulted in litigation over many years and in different jurisdictions.

In this proceeding, the Federal Court considered the evidentiary requirements for establishing passing off where neither party had a registered trademark or registered copyright. In addressing the common law test for passing off the Court found that the Plaintiff failed to prove the requirements and essentially did not enjoy sufficient goodwill / reputation in Canada under subsection 7(b) of the Trade-marks Act.

The Court found that there was no originality attached to the mark and furthermore that there was no confusion considering all of the factors under section 6(5) notwithstanding it’s explicit finding that the degree of resemblance was “very similar”. In dismissing the Plaintiff’s claim, the following facts were emphasized: the newspapers co-existed for many years, the newspapers had their own distinct channel of trade and more importantly, there was no evidence of the magnitude of online readership.

The Federal Court also dismissed the Plaintiff’s claim, with costs, against the Defendant, Master Web, who printed the paper version of the Defendant’s newspaper in Toronto finding that the printer cannot be held accountable for the infringement of copyright or trademark.

A copy of the decision is available by clicking here.

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