On June 11, 2014 Justice O’Reilly of the Federal Court released his decision relating to the registerability of the trademark “Asia Miles” in light of opposition from Air Miles International.

The trade-marks opposition board had upheld Air Miles International’s opposition to the registration of “Asia Miles”.  Justice O’Reilly, on an application for judicial review, interfered with the Board’s findings and sent it back for reconsideration.

For the full written decision see: Cathay Pacific v. Air Miles International, 2014 FC 549.

This decision is important to the law of trademarks for the following reasons:

  1. Use of a mark includes use by authorised licensees in Canada.
  2. A licence to use a mark need not be in writing.
  3. Distinctiveness may be acquired through use of a mark in Canada by a licensee.
  4. Distinctiveness can indeed reduce the likelihood of confusion.
  5. A lack of evidence of actual confusion during a period of parallel use of allegedly confusing marks is relevant to the likelihood of confusion.