On April 14, 2026, the Federal Court (per Manson J) issued a detailed and instructive reminder that trademark rights in Canada can arise through use alone without registration. The Court reaffirmed that where goodwill and confusion are established, the courts will not hesitate to protect those rights. This decision is particularly significant when brands are publicly launched before formal trademark registration.
Federation of Asian Canadians Toronto v Asialicious Holdings Inc., 2026 FC 495.
Background
The Plaintiff, the Federation of Asian Canadians Toronto (FACT), is an Ontario not‑for‑profit created to organize Asian food and cultural events. In August 2019, it launched and heavily promoted the ASIALICIOUS Carnival in Scarborough. The event attracted tens of thousands of attendees and featured extensive advertising, media coverage, sponsorships, and consistent branding using the ASIALICIOUS name and logo.
In February 2020, the Federation of Chinese Canadians in Markham (FCCM), the Chinese Cuisine & Hospitality Association of Canada (CCHAC), and Asialicious Holdings Inc. (collectively the “Defendants”) launched a separate ASIALICIOUS Festival in Markham, promoting Asian restaurants across the Greater Toronto Area (GTA) under the same name.
The ASIALICIOUS trademark registration timeline is as follows:
- February 10, 2020: Asialicious Holdings filed a Canadian trademark application for ASIALICIOUS.
- February 13, 2020: a director and officer of FACT filed two Canadian trademark applications for ASIALICIOUS.
- March 24, 2024: Asialicious Holdings abandoned its ASIALICIOUS trademark application.
- December 12, 2025: FACT’s first ASIALICIOUS trademark application was registered.
- February 17, 2026: FACT’s second ASIALICIOUS trademark application was registered.
Both sides accused the other of passing off. FACT’s trademark registrations were not in issue, as they were obtained after this proceeding was started. The core issue was which party first established goodwill and distinctiveness in the ASIALICIOUS trademark.
Issues
The Court considered the following questions:
- Did ASIALICIOUS have goodwill and distinctiveness within the market at the material times?
- What effect did potential contemporaneous use of ASIALICIOUS in the same market have on distinctiveness?
- Did the Defendants pass off their services as those of FACT?
- Did FACT pass off its services as those of the Defendants?
- If liability was established, what remedies were appropriate?
Analysis
Valid trademarks must distinguish the goods or services of a single trader. Contemporaneous use by another party may erode that distinctiveness, but only if it is supported by evidence of actual use.
The Court applied the well-established three-part test for passing off under paragraph 7(b) of the Trademarks Act set out by the Supreme Court of Canada in Ciba-Geigy Canada Ltd v Apotex Inc, [1992] 3 SCR 120:
- the existence of goodwill or reputation in the mark;
- misrepresentation causing likely confusion; and
- actual or potential damage to the goodwill holder.
- FACT established goodwill first
Both FACT and the Defendants used the ASIALICIOUS trademark in connection with Asian food promotion, event programming, public attendance or participation, restaurant or food vendor participation, sponsorship, and promotion in the GTA. FACT adopted an ASIALICIOUS-based design mark for its ASIALICIOUS Carnival in 2019 and 2020. The Defendants did not begin using their ASIALICIOUS design mark until later in 2020.
The Court held that by February 2020, when the Defendants first publicly used their mark, ASIALICIOUS had already acquired source significance in favour of FACT in the relevant market. The Court found that in August 2019, FACT used ASIALICIOUS as a trademark in association with multicultural entertainment exhibitions and the organization of festivals to promote food, restaurants, the hospitality industry, and food culture. The Court further found that the typical consumer in the GTA would understand the ASIALICIOUS trademark to indicate FACT as the single source of those services. Evidence of goodwill included: media covered press conferences; paid advertising across multiple platforms; prominent signage and event branding; significant public attendance; and consistent association between ASIALICIOUS and FACT as organizer. This was sufficient to establish goodwill and distinctiveness.
The Defendants failed to prove earlier use. FCCM provided no credible evidence of any pre-2019 public use of ASIALICIOUS. Internal emails, vague recollections, and unsupported claims of discount cards were not evidence of actual trademark use. As the Court noted at paragraph 43, “An alleged trademark without use is non-existent.” There were no flyers, cards, advertisements, or public materials proving any pre-2019 use by the Defendants.
This finding by the Court also resolved the counterclaim by the Defendants. Given the lack of goodwill or prior reputation in the ASIALICIOUS trademark attributable to the Defendants, FACT’s use of ASIALICIOUS was not a misrepresentation.
- Likelihood of Confusion Was Established
The central inquiry under subsection 7(b) of the Trademarks Act is whether the Defendants directed public attention to their services in a manner likely to cause confusion. While contemporaneous use can negate distinctiveness, that conclusion must be supported by evidence showing that the trademark did not signify one single source.
Here, both sides operated in the same geographic area (the GTA) and offered closely related services involving Asian food events, restaurant promotions, and cultural programming.
The Court found clear evidence of actual confusion, including members of the public asking whether both events were operated by the same organization, and online commentary mistakenly attributing one event’s promotions to the other. This evidence was more than enough to establish the misrepresentation element. Therefore, the Court held that when CCHAC and FCCM commenced public use of ASIALICIOUS in February 2020, they directed public attention to their services in a manner likely to cause confusion with FACT’s existing ASIALICIOUS trademark.
FACT’s claim under subsection 7(c) of the Trademarks Act was not established. The Court found no evidence establishing that a consumer ordered a FACT service and instead received the Defendant’s service. There was no diversion of sales.
- The Resulting Damage Was Loss of Control Over Goodwill
FACT could not prove lost profits, and the evidence of reputational harm was limited. Despite this, the Court held the damages element of a passing off case under subsection 7(b) was satisfied given that the Defendants’ use of its confusing mark for closely related services in the same market caused FACT to lose exclusive control over its acquired goodwill. Loss of control over goodwill is itself compensable harm in a passing off action.
Conclusion and Remedy
FACT succeeded in establishing passing off under subsection 7(b) of the Trademarks Act against the Defendants, specifically in relation to CCHAC and FCCM’s use of ASIALICIOUS beginning in February 2020, and later related uses by Asialicious Holdings. The Counterclaim by FCCM and Asialicious Holdings was dismissed given that ASIALICIOUS was not established to have been used as a trademark or had acquired any distinctiveness with respect to their services before FACT began it use of ASIALICIOUS.
The Court awarded FACT:
- a permanent injunction prohibiting the Defendants from using ASIALICIOUS (or similar variants) in connection with Asian food and cultural events, restaurant promotions, and discount programs in the GTA;
- a specific prohibition against Asialicious Holdings Inc. using ASIALICIOUS as a trade name; and
- $5,000 in nominal damages, payable jointly and severally by the Defendants.
The Court also ordered all the Defendants to pay FACT costs jointly and severally in the amount of $66,730.31, together with a lump sum award of $5,000 reflecting unnecessary work caused by the Defendants.
Takeaways
This decision highlights some important principles for business owners with respect to their trademarks rights.
- Registration is not required to enforce trademark rights in Canada, but clear and provable public use of the trademark that generates goodwill is necessary.
- Internal planning and name discussions do not amount to trademark use without actual use in the marketplace. Early, well‑documented branding activities (advertising, events, media, sponsorships) are critical evidence.
- Not‑for‑profit organizations are not immune from trademark liability or injunctions.
- Applying for trademark registration after someone else has established goodwill will not cure intellectual property rights or automatically confer such rights.
The Defendants have 30 days from the date of judgment to appeal to the Federal Court of