BCFIT Trade-Mark Infringed and Passed Off, with a Side of Defamation

In British Columbia Recreation and Parks Association v. Zakharia [2015] BCSC 1650, Justice Funt of the British Columbia Supreme Court found the Defendants, John Zakharia and Jane Doe, liable for defamation, passing off, trademark infringement, injurious falsehood, breach of the Competition Act and conspiracy to injure. In addition to injunctive relief, Justice Funt awarded the BCRPA $106,000 and Suzanne Strutt $115,000 in damages.

BCRPA is a non-profit organization that offers programs and designations for fitness professionals. Ms. Strutt is the CEO of BCRPA. BCRPA is the registered owner of a trade-mark consisting of the word BCFIT, for use in services of “developing, arranging and conducting educational conferences and programs and providing courses of instruction in the fields of physical activity, recreation and health”.

Mr. Zakharia is a personal trainer who had previously been registered with BCRPA. He along with an unknown woman operated the website www.BCfit.ca, which displayed the BCFIT trade-mark. The website, an email account and Instagram account all used the BCFIT trade-mark in an infringing manner.

The Defendants also made statements that the Plaintiffs were bullying and extorting Mr. Zakharia and the Defendants were prejudiced against low-income individuals and persons with disabilities. Justice Funt found none of these statements to be true.

In holding that Mr. Zakharia committed the tort of passing off Justice Funt concluded that “Mr. Zakharia used www.bcfit.ca in order to misrepresent and confuse.”

Furthermore, with respect to trade-mark infringement:

Mr. Zakharia’s purpose was to create confusion about BCFIT by posting or linking negative comments on the BCfit Website he established. Articles he posted on the website had, in large font, BCRPA REVIEW and Suzanne Strutt BCRPA.

Justice Funt ordered damages to be paid and a permanent injunction with respect to passing off and trade-mark infringement. Mr. Zakharia was also ordered to transfer www.BCfit.ca to BCRPA.

A copy of the decision can be found here.