Case information

Intellectual property — Trade-marks — Confusion — Registration — Both parties distribute newspapers in Canada under name AJIT — Whether Applicant’s AJIT trade mark is “distinctive”.

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The parties both publish a Punjabi language newspaper under the name “AJIT”, which is Punjabi for “unconquerable” or “invincible”. The paper published by Sadhu Singh Hamdard Trust (the “Trust”) is a daily publication based on India, and has been distributed in Canada since 1968. Its highest distribution in Canada was between 1990 and 1993, when it averaged 29 annual subscriptions; between 2002 and 2010, it had six subscribers. The paper published by Navsun Holdings Ltd. has been published weekly since about 1993 and is distributed in Vancouver and the Greater Toronto area. When these proceedings were commenced, its weekly circulation was roughly 11,000 in Vancouver and 13,000 in the Toronto area.

In June 2010, the Trust applied to register the trade mark AJIT based on its use of the mark since at least as early as 1968 in association with printed publications and newspapers. The Examination Section of the Canadian Intellectual Property Office objected on the basis that the mark was confusing with four pending applications by Navsun. The Trust advised that those applications had been voluntarily withdrawn. The application was advertised for opposition purposes in the Trade Marks Journal dated August 1, 2012. It was opposed by Navsun.

The Trade marks Opposition Board found that Navsun’s mark was sufficiently known to negate the distinctiveness of the mark applied for by the Trust on the material date. The Federal Court dismissed the Trust’s appeal, as did the Court of Appeal.