Required factors for assessing required element of deception were not considered

Plaintiff publisher of daily newspaper in India brought action against defendant publishers of weekly newspaper in Canadian cities, with respect to its masthead logo that was similar to plaintiff’s logo, while defendants counter-claim to impeach mark registration. Pursuant to partial settlement agreement, defendants adopted new logo. Action and counter-claim were dismissed but, on redetermination after plaintiff’s appeal, action was allowed in part with respect to passing off and copyright infringement while claims for trademark infringement and depreciation of goodwill were dismissed . Plaintiff appealed; defendants cross-appealed. Appeal and cross-appeal allowed in part; claims remitted back for further redetermination. Correct legal test was not applied for plaintiff’s claim under s. 19 of Trademarks Act, as trial judge asked whether defendants’ mark was confusing similar to plaintiff’s registered mark rather than whether two marks were identical. Proper comparison was to assess whether marks were same, considering shared word “Ajit” as well as stylized writing for parties’ logos. Trial judge failed, for plaintiff’s claim under s. 20 of Act, to consider all of required factors in assessing likelihood of confusion and instead focused solely on appearance of marks . Trial judge erred in relying in part on whether modified logo was sufficiently different to avoid liability for copyright infringement. Trial judge also applied wrong test of confusing similarity instead of required four-part test for depreciation of goodwill claim. While trial judge did not err with respect to ascertaining existence of goodwill for test for passing off or by finding defendants’ explanation for using “Ajit” was not credible, required factors for assessing required element of deception were not considered . Finding of defendants’ liability for passing off and dismissal of plaintiffs’ claims under Trademark Act would be set aside. Defendants’ counterclaim had been dismissed in first trial and was not revived in first appeal, so it was no longer before court. Finding of passing off in relation to original logo would be set aside, along with dismissal of plaintiff’s claims under Act for passing off, infringement and depreciation of goodwill, with matters returned to Federal Court for redetermination.

Sandhu Singh Hamdard Trust v. Navsun Holdings Ltd. (2019), 2019 CarswellNat 7175, 2019 FCA 295, J.D. Denis Pelletier J.A., Judith Woods J.A., and J.B. Laskin J.A. (F.C.A.).

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