FCA Confirms Successful Trade-mark Opposition by Local Newspaper

January 24, 2019

In an appeal to the Federal Court of Appeal, Tamara Ramsey and Bettina Xue Griffin were successful in defending the decision of the Federal Court and Trade-mark Opposition Board allowing an opposition to a trade-mark application by a foreign newspaper for the word mark “Ajit”.

AJIT, a common name in India, is used by the Applicant, a Punjabi-language newspaper based in India that had a few subscribers in Canada. The name AJIT has also, for many years, been used by the Opponent, a free weekly Canadian newspaper. The opposition was allowed on the basis that the word mark “Ajit” was not distinctive of the foreign newspaper in Canada. 

The Federal Court of Appeal confirmed that it is “incumbent upon a trader to protect the distinctiveness of its mark, even in the face of infringing use” and rejected the argument that a party is barred from relying on its own confusing use of a trade-mark to challenge another’s right to the mark.  For a copy of the decision, please click here.

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