Passing off and the tale of the missing (valid) trademark

In 2K4 Inc. (Indican Pictures) v Indiecan Entertainment Inc., 2025 FC 20, the Federal Court considered whether the Respondent, IndieCan Entertainment, was liable for passing off its film distribution services as those of the Applicant, Indican Pictures. The Applicant claimed the Respondent’s use of the name and mark “IndieCan” was likely to cause confusion in Canada contrary to paragraph 7(b) of the Trademarks Act.

The Court dismissed the application for lack of evidence of a valid trademark by the Applicant. This decision provides guidance on the evidence necessary to demonstrate the existence of a valid trademark as the threshold entry point to a passing off analysis.

The Court stated the test for passing off as follows:

“[P]assing off occurs when a person misleads the public into believing their goods or services are associated with or come from another business, causing confusion and harming the original business’s reputation or goodwill.”^[1]

The services of both the Applicant and Respondent were film distribution services. The Court found the provided definitions of “film distribution services” to be vague at best but settled on a user comment from the website “Quora” to define film distribution services as “the job of getting the movie out to the world in multiple ways (theatrical, cable, VOD, etc.)”^[2].

The Applicant, a US film distribution company, claimed they had started using their Indican trademark in early 2000, with continuous use in Canada since this time. The Respondent claimed they had started using their IndieCan mark once they incorporated in Canada, in 2011.

Ultimately, the case was decided based on evidence of when the Applicant had started using its mark, and whether they had used the mark in Canada prior to this date.

The following is a summary of these issues and the Court’s decision with respect to each.

What is the relevant date for assessing passing off?

The Court found the relevant date for assessing passing off was the date the Respondent, the more junior mark owner, entered the marketplace and started bringing the mark to the Canadian public’s attention.

There was debate concerning what the relevant date was, either 2011, the year the Respondent incorporated, or a few years later, when the Respondent’s activities rose to a level that constituted misrepresentation and caused confusion in the marketplace. The Court ultimately found the relevant date was when the Respondent started “directing public attention to its goods and services in a manner alleged to be confusing.”^[3]

How is use assessed in the context of services?

The Applicant attempted to substantiate the use of its trademark in Canada, prior to the relevant date of 2011, through sample agreements and invoices related to film distribution in Canada. However, the Court was not convinced the evidence provided, demonstrated any valid trademark use in Canada prior to 2011.

Evidence filed included agreements with companies with addresses in the US, an unsigned and undated licensing agreement with a Canadian production company, a signed licensing agreement dated after the relevant period and invoices to other American distribution companies. While the Applicant’s witness testified that there had been use of its mark in Canada, prior to the relevant date, the Court afforded these bare statements little weight without corroborative documentary evidence.

This case brings up the difficulties in establishing valid trademark use in association with services provided within a distribution chain. As was stated in Hilton Worldwide Holding LLP v Miller Thomson, 2020 FCA 134 at paras 85, 107-117, the benefit of a service must be delivered to people physically present in Canada. Additionally, an element of use of services in Canada is dependent on the relationship, or level of interactivity, between the owner of the trademark and the customer.

The Applicant argued that moviegoers in Canada received the benefit of its services, however the Court disagreed and found that Canadian Intermediaries, with which the Applicant would directly or indirectly transact, were the ultimate beneficiaries of the services offered.

The Applicant also argued that advertisement of its mark in the credits of the movies and the DVD dustjackets of the films it distributed, constituted valid trademark use. However, the Court found that there was no evidence that the movies distributed by the Applicant were shown in Canada, or that a Canadian bought a DVD from the Applicant’s website, prior to the relevant date.

Conclusion

The Court found the Applicant lacked the evidence necessary to establish the existence of a valid trademark prior to the relevant date and therefore, did not meet the minimum threshold for a claim of passing off.

Obiter

In obiter, the Court applied the test for passing off in the alternative, finding that there was no goodwill, and no deception of the public due to a misrepresentation.

Lack of goodwill

For the same reasons the Court found the Applicant had not demonstrated the existence of a valid trademark as of the relevant date (2011), the Court found the Applicant had not demonstrated goodwill subsisted in its trademark. The Court clarified that the relevant date for assessing use of the Applicant’s trademark, was the same for assessing the goodwill associated with the mark.

No deception of the public

Assuming a valid trademark, the Court would have found confusion between the Applicant and Respondent’s marks. However, given the Applicant’s lack of evidence of a valid trademark, the Court found there would have been no deception of the public as to the source of the services purchased.