Hayer Construction v. Hayhurst, 2022 BCPC 228

Citation: Hayer Construction v. Hayhurst 2022 BCPC 228 Date: 20221017 File No: 2158889 Registry: Prince George IN THE PROVINCIAL COURT OF BRITISH COLUMBIA Small Claims Act, RSBC 1996, c 430 BETWEEN: HAYER R. CONSTRUCTION FIRM INC. CLAIMANT AND: KIMBERLY HAYHURST dba HEY K MARKETING DEFENDANT REASONS FOR JUDGMENT OF THE HONOURABLE JUDGE J.T. DOULIS Counsel for the Claimant: M. Wright Counsel for the Defendant: S. Joo Place of Hearing: Prince George , B.C. Date of Hearing: September 1, 2022 Date of Judgment: October 17, 2022 Introduction

[ 1 ] The Claimant, Hayer R. Construction Firm Inc., has sued the Defendant, Kimberly Hayhurst, for damages for breach of contract . The parties entered into an oral contract in mid-December 2018, whereby the Defendant agreed to render to the Claimant certain marketing, branding and graphic design services. Pursuant to their agreement, the Defendant designed the Claimant’s logo, which she delivered in the spring of 2019.

The corporate logo consisted of a stylized three-dimensional form of the letter “H” using an isometric typography, which the Defendant approved and accepted. [ 2 ] In the fall of 2020, Robin Hayer, the President of the corporate Claimant, discovered the Harvard University Graduate School of Design in Cambridge, Massachusetts, also had a logo consisting of a three-dimensional stylized “H”. The two logos were extremely similar, but not identical.

Out of an abundance of caution, Robin Hayer decided to abandon the use of the Hayer Construction logo and notified the Harvard University Trademarks Program of his concerns and intention. The Plaintiff now sues the Defendant for producing a graphic design logo which was unusable without risk of infringing Harvard University’s intellectual property rights. ISSUES [ 3 ] The issues are whether Kimberly Hayhurst breached of her contract with Hayer Construction with respect to the design of the Hayer Construction logo, and if so, the measure of damages. The Claimant [ 4 ] The Claimant, Hayer R.

Construction Firm Inc. was incorporated in March 2012 pursuant to the laws of British Columbia. In these Reasons for Judgment, I will refer to the Claimant as “Hayer Construction.” [ 5 ] Hayer Construction is a family-owned business consisting of Robin Hayer, his wife, Jonita Hayer, and his father, Roop Hayer. They are Hayer Construction’s only employees. [ 6 ] Hayer Construction’s primary business is constructing single and multi-family residences, although it also undertakes other projects. To date, all of Hayer Construction’s projects have been within the City of Prince George, British Columbia.

Hayer Construction’s address for business is 429 Tara Place, Prince George, BC V2M 0A6. [ 7 ] Hayer Construction subcontracts with all the architects, engineers and trades it may require when undertaking a construction project. The Defendant [ 8 ] Kimberly Hayhurst is the sole owner of an independent consultancy business known as Hey K Marketing (“Hey K”). She registered Hey K as a proprietorship in British Columbia on November 8, 2018, under No.

FM0760758. [ 9 ] Kimberly Hayhurst has worked for several decades in the field of marketing, communications, public relations, program development, graphic design, web design, and digital media. [ 10 ] Hey K is a home-based business located at 593 Radcliffe Drive, Prince George, B.C. V2M 3N5. Through Hey K, Kimberly Hayhurst provides marketing products and services including brand development, graphic design, and communications. [ 11 ] In these Reasons for Judgment, I will refer to the Defendant as Kimberly Hayhurst.

The Evidence [ 12 ] At trial, the Court received the oral testimony of the Robin Hayer, President of Hayer Construction, and the oral testimony of Kimberly Hayhurst, proprietor of Hey K. Marketing. [ 13 ] The Court also received into evidence as exhibits: Exhibit 1: Agreed Statement of Facts entered at trial on September 1, 2022, attaching the following exhibits: a. Hayer Construction Graphic Design Manual 2019; b. The logo of the Harvard University Graduate School of Design; and c.

A screen shot taken from the Harvard University Graduate School of design website; Exhibit 2: The Claimant’s Book of Documents including: a. Hayer Construction Graphic design Manual 2019; b. Hey K Marketing’s business proposal dated December 11, 2018, emailed to Robin Hayer and Hayer Construction from Kimberly Hayhurst; c. An email from Robin Hayer to the Harvard Trademark Program sent December 10, 2020; d. An email exchange between Kimberly Hayhurst to the “Accounts Hayer Construction” sent January 14, 2020; e. The following three invoices from Signtek Industries Inc.: i.

Invoice 20219 from Inc. for “Hayer Construction Signs” dated May 8, 2020;

ii. Invoice 20562 for “Lawn Signs” dated June 19, 2020; and iii. Sales Order #23460 for “Hayer Construction Signs” dated June 22, 2021; Exhibit 3: Email from Rick Calixo to Robin Hayer dated December 14, 2020, attaching a print out from a Trademark Electronic Search System for a “DESIGN PLUS WORDS, LETTERS AND/OR NUMBER” TRADEMARK” FILED February 26, 2015, described as “a three dimensional stylized “H” composed of intersecting rectangles” Exhibit 4 : Defendant Book of Documents including: a.

Hey K Marketing’s business proposal dated December 11, 2018, emailed to Hayer Construction Firm, Robin Hayer, from Kimberly Hayhurst; b. Hayer Construction Graphic design Manual 2019; c. Inspirational design documents Kimberly Hayhurst reviewed when creating the logo for Hayer R. Construction Firm Inc.; d. Email sent on June 24, 2019, from Kimberly Hayhurst on behalf of Hey K Marketing attaching the Hayer Construction Graphic Standards Manual and advising she had uploaded the “graphic design files for a business card, letterhead, envelop and all the logos to a Google Drive”; and e.

Four photographs Kimberly Hayhurst took of signage on Hayer Construction developmental properties in the summer of 2021. The Contract [ 14 ] Kimberly Hayhurst was referred to Hayer Construction by her former colleague. [ 15 ] In December 2015, Kimberly Hayhurst met with Robin Hayer to discuss the possibility of her providing Hayer Construction with services in, (

a) branding and design; (

b) website construction; and (

c) digital marketing. Kimberly Hayhurst testified as to the importance of understanding the client’s needs so she can accurately assess the full scope of the work involved and in order to provide an accurate quote for “deliverables.” [ 16 ] On December 11, 2018, Kimberly Hayhurst emailed Robin Hayer and Hayer Construction a four-page customized proposal confirming their meeting and the services she could offer (“the proposal”): Exhibit 2 (Tab 2) and Exhibit 4 (Tab 1).

Under the heading, “The Need”, on page 1, Kimberly Hayhurst writes: THE NEED Hayer Construction has been undergoing an organizational change presenting an incredible opportunity to refresh its visual identity, advance its reputation and engage its community and clients. The business is building on more than 30 years of experience in Prince George, primarily in the construction of single and multi-family residential homes. They are undertaking some high profile projects in downtown Prince George, including an office space to engage the public.

Building on both established and new partnerships, they are demonstrating a modern, luxury, personalized experience for homeowners. Hayer Construction is looking to demonstrate excellence in the homebuilding experience and seek to bring something new to the Prince George homebuilding market. [ 17 ] Under the caption, “HOW I CAN HELP YOU”, Kimberly Hayhurst states in her proposal, “Hayer Construction is looking for a new visual identity to represent their renewed brand.” In her proposal Kimberly Hayhurst sets out multiple branding and design processes she would employ to assist Hayer Construction, including: (

a) discovery, articulation and positioning; (

b) creation and deliverables; (

c) website; and (

d) digital marketing and reporting. She also set out a cost estimate for the development and design of these products and monthly fees for ongoing management. [ 18 ] On or about December 15, 2018, Robin Hayer accepted Kimberly Hayhurst’s proposal on behalf of Hayer Construction without questioning its contents or seeking revision.

If his acceptance was in writing, it was not tendered in evidence at trial. [ 19 ] Pursuant to the term of the resulting contract, Kimberly Hayhurst was to provide “a number of design and branding products, including goods in the form of a designed logo for the company as a whole.”[Exhibit 1, para. 3.] [ 20 ] Kimberly Hayhurst provided its services in 2019, and invoiced Hayer Construction a total of $7,103.03, allocated as follows: a. Invoice #1012 issued January 8, 2019, totalling $4,200, inclusive of GST for the “Hayer Construction Rebrand Services”. This sum consisted of (

a) the Hayer Construction logo, including the logo, graphic standard manual, animated logo totalling $3,360 including $150 GST; and (

b) Framework 22 signage totalling $350 plus $17.50 in GST; (

c) Third Avenue Hoarding totalling $472.50 inclusive of $22.50 in GST; b. Invoice #1074 issued November 11, 2019, totalling $2,903.03, inclusive of GST, for the “Framework 22 Services”; which included: (

a) the Framework 22 logo (no charge – included in the web and signage project); (

b) Framework website ($2,625 including $125 GST); (c) $25.23 domain registration; (d) $158 web hosting and $94.80 email hosting; and c. Invoice #1075 issued September 26, 2019, totalling $200 for Hayer Construction Family services for a “custom illustration.” The Hayer Construction logo [ 21 ] Pursuant to the terms of the contract, Kimberly Hayhurst designed and provided to Hayer Construction a corporate logo (the “Hayer Construction logo”) as per the Graphics Standards Manual found in Exhibits 2 and 4.

[ 22 ] The Hayer Construction logo was a stylized letter “H” based on an isometric grid, which renders two dimensional items three dimensional. The basic building block of an isometric design is a cube: See Exhibit 1, para.5; Graphic Design Manual (Exhibits 2 and 3). [ 23 ] The Hayer Construction logo was to be used in conjunction with the name “Hayer Construction” as follows: [ 24 ] Kimberly Hayhurst testified as to the design process she used in creating the Hayer Construction logo.

Exhibit 4, Tab 3, is a copy of Kimberly Hayhurst’s design file on which she drew for inspiration when designing the Hayer Construction logo. [ 25 ] The parties agree that in producing the Hayer Construction logo, Kimberly Hayhurst “performed Google searches, industry-based searches and design and imagery searches to determine whether similar designs were being used by others.”: Exhibit 1, para. 7. [ 26 ] Kimberly Hayhurst testified the searches she undertakes when creating a logo is “industry standard stuff.” She takes a snap shot of the image of interest and uploads it into the automated Google internet search engine.

She then conducts searches on this image as well as on its reverse. She also undertakes a text-based search. Kimberly Hayhurst engages in these web-based searches in the course of her design process both before and after creating the logo. Google uses algorithms to display search results. This is the process she used when creating the Hayer Construction logo. It took “dozens of hours.” Kimberly Hayhurst sought to identify any logos that she considered “too similar” to the Hayer Construction logo. None of her search efforts produced any similar logos.

Specifically, Google did not identify the Harvard School of Design logo or website. [ 27 ] The parties’ oral contract did not explicitly refer to any searches regarding the Hayer Construction Logo: Exhibit 1, para. 6. In particular, the parties did not specifically agree that Kimberly Hayhurst would conduct trademark searches on the Hayer Construction logo. I gather neither Kimberly Hayhurst nor Robin Hayer turned their mind to the trademark issue.

Kimberly Hayhurst is not a trademark agent and had Hayer Construction sought this service, Kimberly Hayhurst would have had to sub-contract with a registered trademark agent. [ 28 ] Prior to finalizing it, Kimberly Hayhurst provided Robin Hayer with a copy of the Hayer Construction logo. Robin Hayer approved the Hayer Construction logo on behalf of Hayer Construction: Exhibit 1, para. 9. Allegations of infringement [ 29 ] Robin Hayer testified that he was on the social media platform Instagram in the fall of 2019.

He saw a logo on someone’s page and “instantly thought it was someone reposting his materials.” He discovered the logo was associated with Harvard University Graduate School of Design. [ 30 ] The Harvard School of Design logo is “extremely similar,” but not identical, to the Hayer Construction logo: Exhibit 1, paras. 10, 11. Both logos use a letter “H” based on an isometric grid: Harvard University Graduate School of Design [ 31 ] The Harvard School of Design logo is subject to a US trademark, registered under number 4812852 and serial number 86546610

which is owned by the President and Fellow of Harvard College Corporation Massachusetts (“Harvard University”), which operates the Harvard University Graduate School of Design: Exhibit 1, para. 12. [ 32 ] The Harvard School of Design logo is not a registered trademark in Canada. The Claimant has adduced no evidence to corroborate Robin Hayer’s assertion that Harvard University has a “worldwide patent” (i.e. “trademark”). [ 33 ] The Harvard School of Design uses its logo on printed materials for promotional and educational purposes, including on its website: Exhibit 1, para. 13.

The only document entered into evidence at trial was a screenshot from the Harvard School of Design website (Exhibit 1 “C”) depicting an aerial photograph of a structure of some sort in a field with the caption: Ideas on . . . #1. Climate Change #2. Housing #3. Practice #4. Health #5 Infrastructure [ 34 ] At the time Robin Hayer discovered the similarity between the Hayer Construction logo and the Harvard School of Design logo, Hayer Construction had already published the Hayer Construction logo on its own website and had it printed on physical signs: Exhibit 1, para. 14.

The only corroborating documentary evidence of Hayer Construction publishing the Hayer Construction Logo was a photograph Kimberly Hayhurst took of a Hayer Construction sign in the summer of 2021: Exhibit 4, Tab 5. [ 35 ] In December 2020, Robin Hayer sent Kimberly Hayhurst an email in which he attached an image of the Harvard School of Design logo. It included no text. Kimberly Hayhurst regarded this email as a threat of legal action and did not respond.

This email was not entered into evidence at trial. [ 36 ] Shortly after receiving the email from Hayer Construction, Kimberly Hayhurst received a letter from Hayer Construction’s lawyer, to which she did respond. Neither pieces of correspondence was tendered into evidence at trial. [ 37 ] Kimberly Hayhurst has consistently denied using the Harvard School of Design logo in creating the Hayer Construction logo.

She is steadfast that any similarity between the two logos is coincidental. [ 38 ] On December 10, 2020, Robin Hayer sent an email to the Harvard Trademark Program (Exhibit 3) in which he states: I am emailing regarding my company logo and visual identity that I recently had made from a designer. I am in Canada and I recently came across your Harvard Graduate School of Design logo which is very similar to the logo created by the designer I used. I’ve approached the designer and advised her about this and that it looks too similar in my opinion.

I am going to voluntarily change my logo as I feel it emulates your logo. I have shown my designer that Harvard has a patent as of 2016 and it is a world wide patent. Her response is below. “What I can provide is that I designed the Hayer Construction logo completely independently. I have design process files that demonstrate this. I conduct searches during my design process to see if I can find any logos that would be deemed “too similar” and had no results appear for the logo I provided to the Hayers. Any similarity to the Harvard Graduate School of Design’s logo is purely coincidental.

Reverse image searches still provide no such similar results. The logo of Hayer Construction and of the Harvard Graduate School of Design are different. They are reversed, rotated and use different fonts. US patents do not apply nor have jurisdiction in Canada. The two businesses serve completely different geographical regions, industries and target markets. There is little to zero risk of confusion or business impact from any inadvertent similarity between the Harvard and the Hayer logo.” I’ve attached the logo and visual identity created by the designer. Can you advise if this infringes on any patents?

Your time is appreciated and I look forward in hearing back. [ 39 ] On December 14, 2020, Rick Calixto sent an email to Robin Hayer Construction (Exhibit 3), stating: Dear Robin: Thank you for your email and you are correct that the logo created by your designer is identical to Harvard’s registered trademark (see attached). The only difference is that it has been turned around.

You should therefore definitely have a unique logo created specifically for your company and that is not identical or confusingly similar to Harvard’s (or anyone else’

s) since such use would cause consumer confusion and could be viewed as an infringement of Harvard’s trademark rights to this logo design in Canada. And the fact that someone claims they came up with a name or design independently of an already protected trademark does not allow the new name or design to be used. I appreciate that you checked with your office.

Regards, Rick Rick Calixto I Executive Director, Harvard Trademark Program [ 40 ] Rick Calixto attached what appears to be a search results from the Trademark Electronic Search System with the United States Patent and Trademark Office: Exhibit 3. [ 41 ] Robin Hayer’s December 10, 2020, email to Harvard Trademark Program and Rick Calixto’s December 14, 2020, responding email is the only communication between Hayer Construction and Harvard University with respect to this issue. [ 42 ] Neither Rick Calixto, nor anyone from Harvard University, provided any evidence the Harvard School of Design logo is a registered trademark in Canada. [ 43 ] The Court has received no evidence of Harvard University generally or Harvard Graduate School of Design specifically operating in Canada. [ 44 ] Hayer Construction did not provide any evidence as to Rick Calixto’s expertise or qualifications beyond what is written in his December 14, 2020, email: Exhibit 3.

Rick Calixto has not been tendered or qualified as an expert witness in these proceedings.

Specifically, the Court does not recognize Rick Calixto as an expert in the area of intellectual property rights, which includes trademarks and the tort of passing off. [ 45 ] There is no evidence that Rick Calixto had any information as to Hayer Construction’s business operations beyond what can be gleaned from Robin Hayer’s December 10, 2020, email (Exhibit 3). [ 46 ] No one on behalf of Harvard University appeared or testified at the trial of this matter, or provided any affidavit evidence. [ 47 ] Despite the dearth of evidence, I am prepared to take judicial notice that Harvard University is a private “ivy league” university operating in Cambridge, Massachusetts.

The proceedings [ 48 ] On January 20, 2021, Hayer Construction filed a Notice of Claim in the Provincial Court of British Columbia, Prince George Registry 2158889, claiming $9,954.69 in damages, plus $226 in costs. The $9,954.69 represents: a. The entire amount Hayer Construction paid Kimberly Hayhurst for all services in the amount of $8,454.69; and b. The estimated cost of changing the marketing material on the website: $1,500. [ 49 ] On February 18, 2021, the Defendant (Kimberly Hayhurst dba Hey K.

Marketing), filed a Reply disputing the claim in its entirety and counterclaimed for $50 in filing fees. [ 50 ] On July 26, 2021, the parties appeared before Judge Nadon for a Settlement Conference. The matter did not settle and Judge Nadon ordered Hayer Construction to amend and particularize its Statement of Claim. [ 51 ] On October 8, 2021, Hayer Construction filed an Amended Notice of Claim pursuant to the Order of Judge Nadon made July 26, 2021.

Hayer Construction amended its Notice of Claim to claim a total of $7,134.96 in damages. [ 52 ] In its October 8, 2021, Amended Notice of Claim, Hayer Construction particularizes its damages as follows: 7. The Claimant has therefore suffered damages in the amount of: a. $3,360.00 paid for the Design Services; b. $1,602.91 paid for branded signage purchased prior to discovery of the logo's deficiency and invoiced on May 8, 2020; c. $2,172.05 paid for branded signage purchased prior to discovery of the logo's deficiency and invoiced on July 19, 2020; d.

Further and other costs to replace marketing products both realized and unrealized. [ 53 ] At trial, Counsel for Hayer Construction submitted the Claimant was entitled to $11,551.11 in damages, which is $4,416.15 more than the “total amount claimed” in its October 8, 2021, Amended Notice of Claim. Hayer Construction purports to justify this amount based on its para. 7(d). [ 54 ] In her Reply, Kimberly Hayhurst maintains:

a. She designed the Hayer Construction logo independently without copying an existing logo. Specifically, without limitation, KimberlyHayhurst did not copy or take inspiration from the Harvard School of Design logo; b. Hayer Construction did not retain her to undertake any trademark searches or provide any trademark-related service; c. The Hayer Construction logo does not infringe the Harvard School of Design logo; d. Hayer Construction did not act in a commercially responsible manner by failing to engage a qualified trademark agent or lawyer; and e.

Hayer Construction did not suffer any damages due to her actions or inactions. Assessing credibility [55] Many of the salient facts in this trial are unopposed or not seriously contested. Still, there are some pieces of evidence whichrequire me to assess the witness’ reliability and credibility. This exercise engages the oft-cited test described in Faryna v. Chorny, (BCCA), at p. 357, wherein Mr. Justice O’Halloran for British Columbia Court of Appeal stated: . . .

In short, the real test of the truth of the story of the witness in such a case must be its harmony with the preponderance of theprobabilities which a practical and informed person would readily recognize as reasonable in that place and in those conditions . . . [56] In this case I heard from only the parties themselves. I found Kimberly Hayhurst to be a credible witness on whose evidence I cangenerally rely. Much of her evidence was corroborated by documentation tendered into evidence at trial. [57] I have less confidence in Robin Hayer’s evidence.

Specifically, I do not believe that Hayer Construction has or had any imminentor concrete plans to expand its business into California in 2018 or since. I do not accept that Kimberly Hayhurst’s description of HayerConstruction’s operational needs in her December 11, 2018, proposal was the product of her own limited perspective.

KimberlyHayhurst’s proposal acknowledges that Hayer Construction was “undergoing an organizational change” and “undertaking some highprofile projects in downtown Prince George” and “seeking to bring something new to the Prince George homebuilding market.” I do notbelieve she overlooked or disregarded Hayer Construction’s plan to expand its operations internationally. [58] Robin Hayer testified he had “visited California about a dozen times in the past seven years actively looking.” He provided noevidence as to what steps Hayer Construction has taken towards expanding its operations outside northern British Columbia, let aloneinto the United States.

He did not even identify an area in California where this alleged expansion was or is supposed to occur. It isalmost four years since Robin Hayer first met with Kimberly Hayhurst, and Hayer Construction has yet to undertake a constructionproject outside the City of Prince George, British Columbia. I find it implausible that Hayer Construction was or is poised to embark onany international or global expansion of its construction business.

Simply put, I do not believe Robin Hayer’s evidence in this respect. [59] I also am troubled by Hayer Construction’s vacillating position on damages and its lack of independent corroboration of its actualexpenses associated with replacing or removing the Hayer Construction logo from its signage or website. The Signtek invoices found atTab 4 of Exhibit 2, do not specify they are replacement signs for those bearing the Hayer Construction logo.

Legal analysis Issue #1: Did Kimberly Hayhurst breach her contract with Hayer Construction with the design of the Hayer Construction logo? [60] In order to establish a breach of contract, Hayer Construction must adduce evidence to prove on the balance of probabilities that acontract existed and it had been breached.

The parties agree that on or about December 15, 2018, Hayer Construction entered into an oralcontract with Kimberly Hayhurst pursuant to which she was to provide Hayer Construction with “a number of design and brandingservices” which included the creation of the Hayer Construction logo: Exhibit 1, Tab 3. [61] Hayer Construction submits its oral contract with Kimberly Hayhurst included an implied term her graphic designs would “neitherinfringe on the intellectual property rights of other entities nor attract sufficiently credible accusations of infringement such that theDesign Services would become unusable.” Hayer Construction claims that because of its similarity to the Harvard School of Design logo,the Hayer Construction logo is unusable.

The thrust of Hayer Construction argument is that if it uses the Hayer Construction logo, itbecomes vulnerable to a lawsuit for infringing Harvard University’s intellectual property rights. [62] In Canada, intellectual property includes patents, trademarks, industrial design, copyrights, and integrated circuit topographies.Although Robin Hayer has used the term “patent,” I accept the only intellectual property right in issue is with respect to the HarvardSchool of Design’s logo or trademark. [63] I accept as true Kimberly Hayhurst’s evidence that: a. there are millions of logos used worldwide; b. she did not copy or use as inspiration the Harvard School of Design logo; c. she searched the Hayer Construction logo, and its reverse image, in Google on a number of occasions before finalizing its design; d.

Google did not capture the Harvard School of Design logo in its search results; and e. any similarity between the Harvard School of Design logo and the Hayer Construct logo is coincidental. [64] Hayer Construction bears the burden of proving Kimberly Hayhurst failed to conduct adequately searches for possible similaritiesbetween the Hayer Construction logo and other trademarks (either registered or unregistered). Generally, expert evidence is required toprove a professional’s work was below a reasonable standard: Bergen v. Guliker, 2015 BCCA 283; Absolute Industries Ltd. v.

Harris, 2014 BCSC 287 at para. 61; Integrated Contractors Ltd. v. Leduc Development Ltd., 2016 BCSC 1984, at para. 23. Theexception to this rule is when the deficiency is not technical in nature, or where the work is obviously substandard: Schellenberg v.Wawanesa Mutual Insurance Company, 2019 BCSC 196 at para.112; Bridgewater Tile Ltd. v Copa Development Corporation, 2022BCSC 310 , paras. 169-170.

In this case, Hayer Construction asserts Kimberly Hayhurst’s breach of contract was akin tonegligence, thus not “technical in nature,” and her search efforts were not “obviously substandard.” [65] Hayer Construction provided no evidence to contradict Kimberly Hayhurst’s evidence that in the field of graphic design, herGoogle search process was the industry standard.

Specifically, Hayer Construction provided no expert evidence to prove that graphicdesigners are generally expected to conduct trademark database searches in the course of their due diligence to ensure their designs donot infringe on any other entities’ intellectual property. [66] Hayer Construction did not suggest that upon replicating Kimberly Hayhurst’s “Google searches” it attained different results.Specifically, Hayer Construction did not adduce evidence that any Google searches it had undertaken captured the Harvard School ofDesign logo. [67] Even if Kimberly Hayhurst had conducted a trademark search with the Canadian Intellectual Property Office or in the CanadianTrademark Database, it would not have disclosed the Harvard School of Design logo, because it is not a registered trademark in Canada.Nevertheless, Robin Hayer still worries that by using the Hayer Construction logo, Hayer Construction may be infringing the HarvardSchool of Design logo. [68] Hayer Construction relies on the case of Sadhu Singh Hamdard Trust v.

Navsun Holdings Ltd., 2014 FC 1139, which is one ofmany decisions involving those two entities. Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd., 2014 FC 1139 was successfullyappealed in Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd., 2016 FCA 69. The Court remitted the case back to the Federal Courtfor redetermination: Sadhu Singh Hamdard Trust v Navsun Holdings Ltd, 2018 FC 1039. This decision in turn was appealed by bothparties. In Sadhu Singh Hamdard Trust v.

Navsun Holdings Ltd., 2019 FCA 295 , the Federal Court allow in part both theappeal and the cross-appeal and again remitted these claims back to the Federal Court for further redetermination: Sadhu Singh HamdardTrust v. Navsun Holdings Ltd., 2021 FC 602 . Infringement of the Harvard School of Design logo [69] I accept the Harvard School of Design logo is a registered trademark in the United States and that it is the property of HarvardUniversity which operates that graduate degree program. Kimberly Hayhurst maintains the Hayer Construction logo does not infringe theHarvard School of Design logo.

The issue of whether the Hayer Construction logo would be unusable in a foreign jurisdiction requiresexpert evidence from an expert in that foreign jurisdiction’s intellectual property law. Hayer Construction has adduced no expertevidence to show whether the Hayer Construction logo is sufficiently similar to the Harvard School of Design logo to sustain aninfringement action in the United States or anywhere else. As I have already stated, I do not accept Rick Calixto’s December 14, 2019email to Robin Hayer as an expert report.

In any event, I do not find credible Robin Hayer’s assertion Hayer Construction has or had anytangible plan to expand its operations into California or Massachusetts or anywhere elsewhere in the United States. Trademarks in Canada [70] In Canada, a trademark is statutorily defined in Trademarks Act, RSC 1985, c T-13 (the “TMA”), as follows: trademark means (

a) a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguishtheir goods or services from those of others, or . . . When deemed to be used 4

(2) A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of thoseservices. [71] Harvard University has not registered the Harvard School of Design logo under the TMA. Had it done so, it may have sought adeclaration from the Federal Court of Canada that a defendant had infringed the its registered trademark or used the trademark in amanner likely to depreciate goodwill or cause confusion and passed off their services as those offered by the Harvard School of Design:(see ss. 19-22, 7(

b) and (

c) of the TMA). In considering this issue, I have reviewed and considered Justice Laskin’s decision for theappellate court in Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd., 2019 FCA 295 , which set out the principles andanalytical framework of when a trademark infringes on another. Passing off [72] A trademark represents the reputation, experience, and expertise of a business while differentiating its products and services fromthose of competitors.

Even where the business does not have a validly registered trademark in Canada, it can still sue a competitor atcommon law for the tort of “passing off.” I gather this is what concerns Robin Hayer. [73] The question of Hayer Construction’s legal vulnerability if it uses the Hayer Construction logo in Canada is highly contextual andevidence specific. I have not lost sight of the fact that Harvard University is not a party to this action.

However, in order to fairly considerthe issues before me, I must consider the reasonableness of Hayer Construction’s concerns that if it uses the Hayer Construction logo, itmay be violating Harvard University’s intellectual property rights in Canada. [74] To succeed in a lawsuit under the common law tort of passing off, a plaintiff must prove, (

a) the existence of goodwill, (

b) deception of the public resulting from a misrepresentation, and (

c) actual or potential damage to the plaintiff: Ciba-Geigy Canada Ltd. v.Apotex Inc., (SCC), cited in Vancouver Community College v. Vancouver Career College (Burnaby) Inc., 2017 BCCA41 (“VCC”) at para. 30. (

a) the existence of goodwill [75] “Goodwill” is not defined in the TMA. In Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23, Justice Binniedescribed goodwill at para. 50, as “[i]n ordinary commercial use, it connotes the positive association that attracts customers towards theowner’s wares or services rather than those of its competitor.” [76] I accept that the Harvard School of Design logo is used in connection with its graduate degree program in Cambridge,Massachusetts.

However, in this proceeding, there is no evidence that Harvard University generally or Harvard School of Designspecifically operating in Canada. Beyond its publically accessible website, the Court has received no evidence of widespread advertisingof the Harvard School of Design in Canada featuring its logo on buildings or in signage or on printed material. [77] The evidence before me, which is threadbare, does not indicate Harvard University uses the Harvard Design School logo in Canadato distinguish its goods and services from those of others.

It does not appear that Harvard University could meet the minimum thresholdrequirement of proving a valid and enforceable trademark in Canada. This is a prerequisite to Harvard University succeeding in an actionto prevent Hayer Construction from using the Hayer Construction logo in Canada. It not apparent that Harvard University has significantgoodwill in the Harvard School of Design logo in the relevant market given the differences between its business and that of the HayerConstruction’s.

I assume the “relevant market” for Harvard University is the pool of applicants seeking a graduate degree in architectureand design; I assume the “relevant market” for Hayer Construction is the pool of persons seeking a newly constructed building or a firmto construct a building in Prince George, or elsewhere in northern British Columbia. (

b) deception of the public resulting from a misrepresentation [78] In Veuve Clicquot (at para. 18), the Supreme Court of Canada held the purpose of a trademark is “to function as a symbol of thesource and quality of wares and services, to distinguish those of the merchant from those of another, and thereby to prevent “confusion”in the marketplace [79] In Sadhu Singh Hamdard Trust v.

Navsun Holdings Ltd., 2019 FCA 295 , at para 53, the Federal Court of Appeal held thatan assessment of the issue of deception to the public because of a defendant’s alleged misrepresentation necessitates consideration of thelikelihood of confusion under s. 6 of the TMA. [80] Subsection 6(2) of the TMA provides that "the use of a trademark causes confusion with another trademark if the use of bothtrademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks aremanufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.” [81] The test for confusion is assessed as the “first impression in the mind of a casual consumer somewhat in a hurry” at a time whenthey have “no more than an imperfect recollection” of the registered mark and without giving the matter “detailed consideration orscrutiny”: Veuve Clicquot, para. 20.

Expert evidence is unnecessary. A judge is entitled to give effect to their own opinion as to thelikelihood of deception or confusion: Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 , at para. 89 citing GeneralElectric Co. v General Electric Co., [1972] 2 All ER 507, at 515. [82] In accessing deception or confusion the Court must considers all of the surrounding circumstances, including those factorsenumerated in subsection 6(5) of the Trademarks Act: (

a) the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known; (

b) the length of time the trademarks or trade names have been in use; (

c) the nature of the goods, services or business; (

d) the nature of the trade; and (

e) the degree of resemblance between the trademarks or trade names, including in appearance or sound or in the ideas suggested bythem. [83] A plaintiff is not required to prove the defendant had an intention to deceive. The plaintiff need only establish that some confusionin the minds of the public may be a likely consequence of the defendant selling or offering for sale a product or service that is not of theplaintiff’s making under the guise or implication that it is the plaintiff’s product or service: Ciba-Geigy v. Apotex, para.

Also, confusionmay be presumed where the defendant indicates the plaintiff’s trademark and acts in ways to convey the impression that its business isassociated with the plaintiff’s business: Triple Five Corp., v. Walt Disney Productions 1994 ABCA 120 . [84] The s. 6(5) TMA criteria are not exhaustive and different weight will be given to each one in a context specific assessment: VeuveClicquot, at para 54.

In Suzuki Motor Corp v Hayabusa Fightwear Inc (2014), 2014 FC 784 , 122 CPR (4th) 1 (FCTD)discusses the differing approach a Court will take when comparing the likelihood of confusion between a registered or an unregisteredmark.

The Federal Court states at para 46: When dealing with a registered trade-mark, one must consider the entire scope of rights granted under the registration and its potentialuse must be considered as well as its actual use:[ Masterpiece, supra.] The comparison will be much narrower when comparing anoffending mark with an unregistered trade-mark, and will be restricted to the actual use of that mark. [85] Hayer Construction has not provided any evidence of anyone being confused or likely to be confused about the relationship

between Hayer Construction and Harvard School of Design. In my view, this is not a situation where confusion is self-evident. HayerConstruction is in the business of constructing homes and other edifices in northern British Columbia. Harvard University is providingan elite education program in architecture and design in Massachusetts.

Kimberly Hayhurst argues there is “little to zero risk of confusionor business impact from any inadvertent similarity between the Harvard and the Hayer logo.” I agree that it is improbable that aconsumer, upon seeing the isometric “H” next to “Hayer Construction” might believe the construction project was that of HarvardUniversity’s School of Design. Conclusion [86] I conclude that Robin Hayer made a business decision to abandon Hayer Construction’s use of the Hayer Construction logo. Hebelieved the Hayer Construction logo was too similar for his comfort to the Harvard School of Design logo.

He made this decisionwithout the benefit of legal advice on the competing intellectual property rights. It is noteworthy that in his December 10, 2020, email tothe Harvard’s Trademark Program, Robin Hayer stated, “I am going to voluntarily change my logo as I feel it emulates your logo.” [87] The evidence before me indicates that the parties did not discuss searches generally or trademark searches specifically. There is nospecific contractual term dealing with infringement of intellectual property. In M.J.B. Enterprises Ltd. v.

Defence Construction (1951)Ltd., (SCC), at para. 27, Justice Iacobucci held term may be implied in a contract in three circumstances: a. based on custom or usage; b. as the legal incidents of a particular class or kind of contract; or c. based on the presumed intention of the parties where the implied term must be necessary “to give business efficacy to a contract or asotherwise meeting the ‘officious bystander’ test as a term which the parties would say, if questioned, that they had obviously assumed”. [88] In Moulton Contracting Ltd. v.

British Columbia, 2015 BCCA 89, leave to appeal dismissed, (SCC), JusticeLevine for the appellate court held (at paras. 54-58) that in considering the “business efficacy” of the contract, or the “officiousbystander” test, it is important to focus on the intentions of the actual parties and not the intentions of reasonable parties. She states: [55] The key element is that the implied term is more than just reasonable; it is necessary to make the contract as the parties intended.That is, without the term, the contract, as intended by the parties, would not be effective.

Also see: Jeff Day Hospitality Inc. v Heritage Conservation Holdings, Canada, Inc., 2022 ONCA 201, ay paras 18-20. [89] On the evidence before me, I cannot conclude the term Hayer Construction proposes might be implied based on custom or usage oras the legal incident of a particular class or kind of contract.

The only evidence of this nature was proffered by Kimberly Hayhurst whotestified as to the standard for performing searches in the graphic design industry. [90] The circumstances in which terms may be implied based on business efficacy or the officious bystander test are narrow and addressthe shared intention of the contracting parties.

Robin Hayer testified that he expected for the “amount in the proposal, I expected aunique logo I could use anywhere any time without conflict, and have a new visual identity for my brand to represent a larger marketingpresence.” At no time did Robin Hayer and Kimberly Hayhurst discuss trademark searches.

I find the parties’ intention was for KimberlyHayhurst to design a logo for Hayer Construction for its use in its business as described in Kimberly Hayhurst December 11, 2018business proposal (Exhibit 2). [91] I am not satisfied from the evidence that Kimberly Hayhurst failed to conduct searches for similar images to the HayerConstruction Logo to a standard that would be imposed on a reasonable graphic designer.

Business efficacy does not support animplication that for a fee of $3,360, inclusive of GST, that Kimberly Hayhurst would conduct trademark searches in multiplejurisdictions to foreclose the possibility that somewhere in the world another entity uses a logo or trademark with a “stylized letter ‘H’based on an isometric grid.” [92] I do not find any basis to imply a term that “the Design Services and its components would neither infringe on the intellectualproperty rights of other entities nor attract sufficiently credible accusations of infringement such that the Design Services would becomeunusable”: October 8, 2021 Amended Notice of Claim, para. 3. [93] In sum I find: a.

Kimberly Hayhurst held herself out as a person qualified to carry out the work described in her December 11, 2018, proposal; b. On or about December 15, 2020, Hayer Construction entered into an oral contract with Kimberly Hayhurst for, among other things,the Hayer Construction logo; c. It is an implied term of the contract that Kimberly Hayhurst would exercise the requisite skill, care, and diligence which mayreasonably be expected of a person of ordinary competence practicing in the field of graphic design, measured by the standard of thetime; d.

There was no contractual term, expressed or implied, that in the performance of her contractual duty to Hayer Construction, KimberlyHayhurst would conduct trademark searches on the Hayer Construction logo in Canada or the United States or elsewhere; e. Kimberly Hayhurst’s conducted multiple web-based searches prior to finalizing the Hayer Construction logo; f. Using the Google internet search engine, Kimberly Hayhurst conducted industry-based searches, and design and imagery searcheson the Hayer Construction logo to determine whether similar designs were being used by other entities; g.

Kimberly Hayhurst’s Google searches did not identify any logos that were similar to the Hayer Construction logo;

h. Specifically, Kimberly Hayhurst’s Google searches did not identify the Harvard School of Design logo as one similar to the Hayer Construction logo; i. Kimberly Hayhurst’s Google searches to identify any similar logos was the industry standard in the field of graphic design; j. Kimberly Hayhurst was not in breach of her implied duty to perform her work competently; k. It was also an implied term of the oral contract between the parties that Hayer Construction could use the Hayer Construction Logo in the geographical region where it carried on business; l.

Hayer Construction carried on business in northern British Columbia; m. There was no implied term in the contract that Kimberly Hayhurst’s “Design Services and its components would neither infringe on the intellectual property rights of other entities nor attract sufficiently credible accusations of infringement such that the Design Services would become unusable”; n.

Hayer Construction has failed to prove on a balance of probabilities that Hayer Construction could not use the Hayer Construction logo in the geographical region where it carried on business or, for that matter, anywhere else in British Columbia or Canada; o. There was no implied term of the contact between Hayer Construction and Kimberly Hayhurst that Hayer Construction could use the Hayer Construction logo in the United States of America or anywhere else outside Canada; and p.

Kimberly Hayhurst was not in breach of her implied duty to design a logo which Hayer Construction could use. [ 94 ] Accordingly, Hayer Construction’s claim against Kimberly Hayhurst, doing business as Hey K Marketing is dismissed. [ 95 ] The Defendant is entitled to her costs for filing a Reply in the amount of $50. _____________________________ The Honourable Judge J.T. Doulis Provincial Court of British Columbia