Whether infringement of a trademark and depreciation of goodwill can be established turns on the facts, even if a defendant fails to file a defence or show up at trial. At least the Plaintiffs in a recent Federal Court decision, Salam Toronto Publications and Mohsen Seyed Taghavi v. Salam Toronto, Inc. et al. did not have to pay the Defendants’ costs.

In the absence of a defence and given proof that the Defendants had been properly served, the Court determined that the action was a proceeding in default of defence”, which meant every allegation in the Statement of Claim had to be treated as if it had been denied and the Plaintiff had to demonstrate on a balance of probabilities that the claims were made out.

In Farsi, “Salam” is a word meaning “hello” or “welcome”. The Plaintiffs had been publishing a current affairs newspaper since October 2000 and the Plaintiffs’ trademark, SALAM TORONTO, was registered in 2004 for use in association with wares, namely, newspapers and magazines. The Plaintiffs’ business name, “Salam Toronto Publications” was registered in 2001. The Plaintiffs also had domain names, salamtoronto.net and salamtoronto.ca.

The Defendants’ trade name, “Salam Toronto”, was registered in 2002 and was used in connection with immigration and settlement services. The Defendants had also acquired the domain name, salamtoronto.com, when the Plaintiffs let the registration lapse.

The Court identified the key issue as whether the Defendants’ trade names were confusing with the Plaintiffs’ registered mark, contrary to section 20(1) of the Trade-marks Act. After reviewing the elements of confusion set out in section 6(5) of the Act, the Court concluded that confusion was simply not established. Of particular significance was the nature of the trade. Although the Plaintiffs and the Defendants focused on Toronto’s Iranian community and the Defendants’ ads appeared in a competing publication, the audiences and the manner of purchase for the Plaintiffs’ wares and the Defendants’ services differed, the Plaintiffs’ newspapers being of interest to those concerned with current affairs and the Defendants’ services being directed to persons with settlement or immigration issues. There might be some overlap, but in the Court’s opinion confusion was unlikely. In considering other circumstances, the Court also concluded that members of the Iranian community were unlikely to assume the publisher of a respected current events newspaper was also an immigration specialist.

In the absence of confusion, there was no reason to conclude there was any infringement or for that matter, passing-off, and no evidence had been lead to suggest any depreciation of goodwill. In the circumstances, the Plaintiffs could not succeed.