Passing Off and the Importance of Evidence

How much evidence is enough to win a passing off case—particularly where the parties are notforprofit organizations and the alleged goodwill arises from a single event? In Federation of Asian Canadians Toronto v. Asialicious Holdings Inc., 2026 FC 495, the Federal Court confirmed that credible, well-documented early use can be decisive, even where damages are modest.

The Facts

Federation of Asian Canadians Toronto (FACT) is a not-for-profit corporation created in connection with the organization of a recurring Asian food and cultural event in Scarborough that began in 2019. The defendant, Federation of Chinese Canadians in Markham (FCCM) is a not-for-profit corporation incorporated in Ontario that has operated food-related programming for many years, including the Taste of Asia events.

The defendants denied liability and brought a counter claim alleging that FACT’s use of ASIALICIOUS constitutes passing off against them.

FACT presented evidence which showed that a Toronto Councillor asked its founder to help create an annual community event in Scarborough and that FACT was created to host that event. The Councillor suggested the ASIALICIOUS name in early 2019, based on the SUMMERLICIOUS and WINTERLICIOUS events that take place in Toronto. FACT hosted a 2019 press conference that included media attendance, showed use of the ASIALICIOUS mark in banners and posters, the program book, the advertising campaign, and the attendance-counting process for the August 2019 ASIALICIOUS Carnival.

FACT filed trademark applications for its mark but there were problems with the applications and FACT did not rely on the registrations it eventually obtained. 

In early 2020, someone asked FACT’s founder whether FACT was running an event called the ASIALICIOUS Festival in February 2020. This was the first time she became aware of the defendants’ event.

While the defendants presented evidence that they had thought about using the ASIALICIOUS name at an earlier time there was no concrete evidence to indicate they did so. The Judge was highly critical of this evidence as it was imprecise, unsupported by documents and unreliable.

Passing Off

To succeed with an action for passing off, a plaintiff must meet the three part test set out by the Supreme Court of Canada. The plaintiff must show:

(a) reputation or goodwill established in the trademark as used with the goods or services;

(b)  deception of the public due to a misrepresentation; and

(c) actual or potential damage.

In assessing whether a plaintiff has established goodwill and deception, the Court considers the perspective of the relevant consumers, including both direct and indirect consumers. A trademark can have its distinctiveness negated by another party’s contemporaneous use in the Canadian marketplace, and an allegation of passing off does not preclude a party from relying on the alleged infringing use to challenge distinctiveness.

Distinctiveness 

The Court first considered whether the ASIALICIOUS trademark was distinctive of one of the parties as being the source of the services provided. To do that, it was necessary to identify the relevant services and market. The record showed three centrally relevant public events or programs:

(a) FACT’s August 2019 ASIALICIOUS Carnival in Scarborough;

(b) the defendants’ February 2020 ASIALICIOUS Festival based in Markham, promoted across the Greater Toronto Area (GTA), and featuring participating restaurants in this area ; and

(c) FACT’s September 2020 ASIALICIOUS^TMTO restaurant promotion program with participating restaurants across the GTA and subsequent continued use of the ASIALICIOUS trademark with its Carnival from 2021 to 2025 and with ASIALICIOUS^TMTO up until two years ago.

The events and services are not identical in every detail, but they were very closely related. Each parties’ use of the ASIALICIOUS mark involved Asian food promotion, event programming, public attendance or participation, restaurant or food vendor participation, sponsorship, and promotion in the GTA.

The relevant consumers were not limited to members of the public that attended or participated in the parties’ events as they also included participating restaurants, food vendors, sponsors, and suppliers. The relevant geographic market was the GTA.

The next question was whether, by February 2020, the ASIALICIOUS mark had acquired source significance for FACT in the GTA for the ASIALICIOUS Carnival for Asian food and cultural events and related promotion services. The evidence clearly established that this was the case.

FACT also proved that ASIALICIOUS was used as a trademark in association with the services FACT provided as early as 2019 and consistently thereafter. Ordinary consumers in the market in the relevant GTA encountering Asian food and cultural event services promoted under the ASIALICIOUS mark, would understand that the mark indicates that FACT was the single source of the services. 

The Defendants’ Use of the Mark

The evidence of alleged earlier use by FCCM of the ASIALICIOUS mark before its 2020 ASIALICIOUS Festival was, at best, suspect and not credible and certainly did not show use as a trademark. The defendants did not establish that they acquired any goodwill and distinctiveness in their favour in the ASIALICIOUS mark before FACT began using the mark in August 2019.  As a result, the counterclaim was dismissed.

As a matter of law the Judge was satisfied that that contemporaneous use can negate distinctiveness. However, the evidence must show that by the relevant time the trademark had ceased to indicate a single source. That has not been shown here. The defendant’s use of the mark with their 2020 ASIALICIOUS Festival caused confusion but did not diminish the distinctiveness of the ASIALICIOUS mark particularly since this was their only use of the mark established.

Confusion

The documentary support of actual confusion was limited. However, to show passing off under paragraph 7(b) of the Trademarks Act does not require extensive proven instances of actual confusion where likely confusion is otherwise strong. Here, the use of the ASIALICIOUS mark with the overlap in services, the common geographic market, and the timing all point to likely confusion as to source, sponsorship, or affiliation.

Actual or Potential Damage 

While the issue of whether FACT has, or will likely, suffer damage or injury to its reputation or goodwill because of the Defendants’ activities is conceptually distinct from the issue of the quantum of damages, actual or potential damages cannot be presumed, and there must be evidence proving them. Use of an owner’s trademark may cause the owner to suffer an actual loss of control over its trademark, and such loss is sufficient to ground the third component of the test for passing off.

Once FACT had acquired goodwill in ASIALICIOUS, the defendants’ commencement of use of the trademark for closely related services in the same market caused FACT to lose exclusive control over that goodwill.

 Remedies

The defendants, and those acting under their direction or control, were permanently enjoined from using ASIALICIOUS or any materially similar variant, in association with multicultural entertainment exhibitions and the organization of festivals to promote food, restaurants, the hospitality industry, and food culture, restaurant-promotion programs, coupon-book or discount-card programs, and directly related event-promotion services in the GTA, in a manner likely to cause confusion with FACT’s services. 

Nominal damages of $5,000.00, were awarded payable by the defendants jointly and severally. That amount recognizes the need for a limited deterrent, while remaining proportionate to the lack of evidentiary record on quantifiable harm and the not-for-profit status of two of the defendants. Costs of the action were also awarded to FACT.

Comment

This decision underscores that passing off cases frequently are won or lost on the quality of the evidentiary record. FACT succeeded not because the scale or duration of its use, but because its early use was well documented, consistent, and credible. By contrast, the defendants’ vague assertions of prior use, unsupported by contemporaneous documents, were fatal.

For organizations operating festivals or promotional events, the decision is a reminder that trademarks should be treated as strategic assets from inception, and that evidentiary discipline is vitally important.

The decision serves as a practical reminder that trademark disputes are often decided long before litigation begins. Early legal advice, careful recordkeeping, and timely filings can make the difference between enforcing rights and losing them. 

We can assist organizations with securing trademark protection, advising on brand selection and use, and establishing the evidentiary foundations needed to support and defend those rights. Proactive trademark planning remains one of the most effective—and cost efficient—tools for avoiding the type of dispute faced in this case.

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If you have questions, please contact me at  jmckeown@LN.Law

John McKeown

Loopstra Nixon LLP.  

130 Adelaide St W Suite 2800Toronto, Ontario, M5H 3P5Canada

 jmckeown@LN.Law

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This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances. Copyright © John Mckeown, All rights reserved. To unsubscribe to the IP Update please send me an email at jmckeown@Ln.Law

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