On March 21, 2023, the Federal Court of Canada (the Court) issued its decision in Dermaspark Products Inc v Patel, 2023 FC 388, in which it awarded compensatory and punitive damages for copyright and trademark infringement on summary trial.

Pollogen Inc. and DermaSpark Products Inc. (collectively, the Plaintiffs) brought an action for copyright and trademark infringement against Balsam Day Spa and Ms. Binal Patel (collectively, the Defendants) relating to the use of advertising and marketing materials for a counterfeit professional facial treatment machine.  The Defendants asserted that the machine was “real”.

The Defendants brought a motion for summary trial, seeking an order dismissing the Plaintiffs’ claims, striking the statement of claim, and awarding damages.  The Court found that summary trial was appropriate in the circumstances.

In its assessment of the evidence, the Court found that the Defendant, Ms. Patel’s, evidence was inconsistent, evasive, and evolving. The Court also found that Ms. Patel was “reckless or willfully blind to the possibility that she was purchasing a counterfeit machine.”

The Court found that the Plaintiffs had established that the Defendants infringed their copyright for several works, and that Ms. Patel’s own evidence demonstrated that the Defendants had used the Plaintiffs’ trademarks in the performance of the services.  Thus, the Court concluded that the Defendants were liable for copyright and trademark infringement, passing off, and depreciation of goodwill.

The Court awarded $5,000 in statutory damages for copyright infringement, and $20,000 in compensatory damages for trademark infringement, passing off, depreciation of goodwill, and unfair competition.  The Court determined that these damages were not sufficient to sanction the Defendants’ conduct, and therefore awarded an additional $20,000 in punitive damages.

The Court also found that “[t]he decisions made by Ms. Patel and no one else resulted in Balsam’s use of counterfeit products and breach of copyright.”  Thus, the Court found Ms. Patel was jointly and severally liable for the damages.

Summary By: Michelle Noonan


23 04 05

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