Manson J.
Jennifer Lee of Keyser Mason Ball LLP for Best Brains, Inc. (Applicant)
Priyadharishini Balasingham on their own behalf (Respondent)
Best Brains, Inc. v Priyadharishini Balasingam (Best Brains Tutors), 2024 FC 2089
December 20, 2024
The Applicant Best Brains, Inc. brings an action against Respondent Priyadharishini Balasingam (Best Brains Tutors), alleging its use of the name “Best Brains Tutors” in association with educational services since 2017 violated the Applicant’s trademark BEST BRAINS that has been in use by the Applicant since at least as early as 2013.
Three issues were considered by the Court, including whether the use of the name constitutes trademark infringement contrary to sections 19 and/or 20 of the Trademarks Act (“TMA”), passing off contrary to subsection 7(b) of the TMA, and/or a likelihood of depreciation of goodwill contrary to section 22 of the TMA.
Although the Court found that the marks are not identical so as to amount to infringement under section 19 of the TMA, the Court held that the Respondent’s use of the mark infringed the registered trademark under section 20 for being confusingly similar. Going through the confusion factors contained in subsection 6(5), the Court found that the factors favour the Applicant. In particular, the Court held that the mark was not clearly descriptive of the Applicant’s services and that it had acquired distinctiveness through use in Canada since 2013. Further, the Court held that the nature of services, business, and channels of trade overlap given that both the Applicant’s and the Respondent’s use of the mark are in association with educational services. Finally, the Court found that the trademarks strongly resemble each other in appearance, sound, and the ideas suggested.
The Court also found that the elements for establishing passing off contrary to subsection 7(b) of the TMA are met. It found that there was more than 10 years of use of the mark, demonstrating goodwill in association with the registered services, that the Respondent’s use of the trademark in association with educational services gave rise to a likelihood of confusion amounting to misrepresentation, and that the Applicant has suffered actual or potential damages.
The Court found the Applicant’s section 22 TMA argument failed to establish that the registered mark had the requisite goodwill required under that provision. In particular, the Court found that the Applicant was unable to show that the mark has acquired goodwill capable of depreciation.
Accordingly, Manson J. found that the use of the name “Best Brains Tutors” infringed the registered trademark of Best Brains, Inc. under section 20 of the TMA and amounts to passing off under subparagraph 7(b) of the TMA. Nonetheless, the Applicant was unsuccessful in its section 22 TMA likelihood of depreciation of goodwill argument. The Applicant was awarded declaratory and permanent injunctive relief, the destruction of any materials that bear that mark, and costs amounting to a lump sum award.
Prepared by Sandi Gendi, Borden Ladner Gervais LLP