Background

Best Brains, Inc. v. Priyadharishini Balasingam DBA Best Brains Tutors, 2024 FC 2089 (Justice Manson) is a trademark infringement decision of the Federal Court. The Respondent is self-represented. Having considered no evidence filed by the Respondent other than the statement of defence and based on the evidence filed by the Applicant, the Court found that the Respondent’s use of the name “Best Brains Tutors” infringes the registered trademark of the Applicant and amounts to passing off, contrary to sections 7(b) and 20 of the Trademarks Act (“TMA”). The Court awarded the Applicant $15,000 for damages and $6,787 for costs and ordered permanent injunction and deliver-up or destroy.

s.20 trademark infringement

The Court considered both ss. 19 and 20 of the TMA and held only s.20 is applicable as the marks are substantially similar but not identical. In finding trademark infringement contrary to s.20, the Court considered whether the trademarks are confusing and found all surrounding circumstances listed under s.6(5)(a) to (e) of the TMA to favour the Applicant. In particular, the Court focused on the degree of resemblance factor and found that the Respondent’s name “Best Brains Tutors” encompasses the entirety of the Applicant’s trademark BEST BRAINS (which is registered in association with educational services), and the word “tutors” is clearly descriptive of the services in question and does nothing to distinguish the Respondent’s name from the Applicant’s trademark.

s.7(b) passing off

In finding passing off contrary to s.7(b) of the TMA, the Court considered all following components being satisfied:

(i) the existence of goodwill – Applicant’s more than 10 years of use of the trademark;

(ii) deception of the public due to a misrepresentation – Respondent’s use of the “Best Brains Tutors” name in association with educational services gives rise to a likelihood of confusion and constitutes a misrepresentation; and

(iii) actual or potential damage to the Applicant – in particular, loss of any quality control over its BEST BRAINS trademark by virtue of the Respondent’s unauthorized activities.

s.22 depreciation of goodwill

The Court rejected the Applicant’s claim under s.22. Unlike in passing off, for the existence of goodwill capable of depreciation, Applicant’s evidence failed to make out any of the following relevant factors except to some extent, geographic reach: the degree of recognition of the mark, the volume of sales and depth of market penetration, the extent and duration of advertising and publicity, geographic reach, degree of inherent or acquired distinctiveness, breadth of channels of trade, and extent to which the mark is identified with a particular quality.

Damage, remedies, costs

The damages were in the amount of $15,000. No punitive damages were awarded as the Court did not find the Respondent’s infringing conduct and failure to respond to be sufficient to meet the standard of “malicious, oppressive and high-handed conduct.” The Court ordered a permanent injunction to prevent use and deliver-up or destruction of any packaging, labels, advertising and online materials. Also, costs were awarded to the Applicant in the amount of $6,787.39 (35% of legal fees plus 100% reasonable disbursements).

Keyser Mason Ball, LLP (Jennifer Lee) represented the Applicant.

Respondent (Priyadharishini Balasingham) was self-represented.