ASIALICIOUS: Who Comes to Mind?

Foodies in the Greater Toronto Area (GTA) may be aware of the Asialicious Carnival, an annual community celebration of Asian culture and cuisine that started in 2019 and is currently getting ready for its eighth year. What many may not have been aware of is that, for five of those years, the carnival’s iconic name, “ASIALICIOUS”, has been the point of contention in a lengthy legal dispute that has just been ruled on by the Federal Court in Federation of Asian Canadians Toronto v. Asialicious Holdings Inc. et al, 2026 FC 495. The Court’s decision offers valuable guidance on how a court will resolve competing claims for passing off where each party claims to have acquired a reputation in the same trademark.

The parties

The principal parties in this case are the organizers of the Asialicious Carnival in Scarborough, namely, the Federation of Asian Canadians Toronto (FACT) and the organizers of the Taste of Asia street festivals in Markham, namely, the Federation of Chinese Canadians in Markham (FCCM).

Both sides brought competing claims against the other, alleging a reputation and exclusive rights in the trademark and trade name, ASIALICIOUS.

FACT and FCCM each held ASIALICIOUS branded events over the follow period:

August 2019: FACT held the first Asialicious Carnival in Scarborough.
February 2020: FCCM held their own Asialicious Festival in Markham, promoted across the GTA.
September 2020 to 2025: FACT has held annual ASIALICIOUS branded events, promoted across the GTA.

All of these events were similar in their offerings. Each involved public attendance, Asian cuisine, live performances, and were marketed throughout the GTA.

Each party claimed the other was infringing its rights in the ASIALICIOUS trademark and brought a claim against the other for passing off.

Passing off / section 7(b) of the Trademarks Act

Trademarks are protected not only through the federal trademark registration system but also through the tort of passing off, as codified in section 7(b) of the Trademark Act. If a trademark has given its owner a reputation that is associated with specific goods or services, it can be protected from others’ attempts to confuse the public and take advantage of that reputation. No trademark registration is needed to sue someone for passing off.

Passing off is codified in section 7(b) of the Trademarks Act:

Unfair Competition and Prohibited Signs

Prohibitions

7 No person shall

(b) direct public attention to his goods, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his goods, services or business and the goods, services or business of another;

According to the Supreme Court in Ciba‑Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120, a plaintiff must prove the following three things in order to succeed in a claim for passing off:

reputation or goodwill established in the trademark through use with relevant goods or services;
a deception of the public due to a misrepresentation; and
actual or potential damage to the trademark owner.

To satisfy the first requirement, a plaintiff must prove that the trademark is distinctive of the plaintiff (and the plaintiff alone) as a trade source. Concurrent use of the trademark by another can erode that distinctiveness.

Distinctiveness

Key to the Federal Court’s decision was the determination that, before FCCM’s ASIALICIOUS Festival in February 2020, ASIALICIOUS had already acquired a reputation in the GTA market following FACT’s first Carnival in August 2019, such that the trademark was already distinctive of FACT in the mind of relevant consumers.

FACT successfully made out its case with evidence of its marketing campaign, the abundance of ASIALICOUS branding during its event, close proximity and association of the FACT and ASIALICIOUS trademarks and the major turnout of approximately 25,000 people. This evidence was enough to persuade the Court that the average consumer in the GTA, after August 2019, would associate an ASIALICIOUS event exclusively with FACT.

FCCM tried to counter this through testimony that they had been using the ASIALICIOUS trademark as early as 2013-2015. The Court rejected this argument because of inconsistencies in the testimony from FCCM’s witnesses and the lack of corroborating evidence to prove any earlier usage. FCCM was unable to show that the general GTA consumer has ever associated ASIALICIOUS exclusively with its organization.

After concluding that ASIALICIOUS was distinctive of FACT when FCCM started using it, the Court then had to consider whether this distinctiveness was eroded by FCCM’s concurrent use of ASIALICIOUS in the years following FACT’s first event.

Concurrent use

In Sadhu Singh Hamdard Trust v Navsun Holdings Ltd., 2019 FCA 10, the Federal Court of Appeal ruled that distinctiveness in a trademark can be negated when that trademark is being concurrently used (e.g. by the defendant) in the same marketplace to such a degree that consumers no longer associate that mark with a single trade source (e.g. the plaintiff).

This permits a defendant in FCCM’s position to cite its own infringing use of a trademark as evidence that the plaintiff’s trademark has lost its distinctiveness. In order for concurrent use to negate the distinctiveness of a trademark, the evidence must show that the trademark no longer indicates a single source of the associated goods and services.

However, in this case, FCCM failed to lead evidence that its concurrent use of ASIALICIOUS had eroded the association of ASIALICIOUS with FACT in the mind of the relevant consumer. The Court found that FCCM’s concurrent use of ASIALICIOUS in the GTA was only likely to confuse the general public, not to render the mark non-disinctive. Consumers were likely to think, mistakenly, that FCCM’s event was related to FACT but they still associated ASIALICIOUS with FACT.

The result

The Court ultimately ruled that FCCM had infringed FACT’s rights in the ASIALICIOUS trademark under section 7(b) of the Trademark Act. To reach this decision, the Court applied the Ciba-Geigy factors and found that: (1) FACT proved the existence of a distinctive reputation through the success of their first Asialicious Carnival; (2) any following use of ASIALICIOUS by FCCM was therefore deceptive to the public; and (3) that deception was harmful to FACT by diluting the goodwill associated with the trademark.