The Supreme Court of Canada has dismissed an application for leave to appeal
from the Federal Court of Appeal ("FCA") judgment in Sadhu Singh Hamdard Trust v. Navsun Holdings
Ltd., 2019 FCA 10 (CanLII), in which the FCA held that the
distinctiveness of a trademark had been negated by third party use
of the same mark. While it is well-established that the
distinctiveness of a trademark may be negated in this way, this
case further establishes that distinctiveness will still be negated
even if the third party is a later user and infringing. So the
mantra "use it or lose it" doesn't quite go far
enough – rather, Canadian trademark owners must "use
and enforce it, or lose it".
In this case, the Trust had filed an application to register the
mark AJIT (the "Mark") for newspapers, and Navsun opposed
on grounds that the Mark lacked distinctiveness because Navsun was
also using the mark AJIT for newspapers. In determining whether the
Mark lacked distinctiveness, the Trademarks
