Docket: T-155-15
Vancouver, British
Columbia, September 22, 2015
PRESENT: The Honourable Mr. Justice Annis
BETWEEN:
RE/MAX, LLC
Plaintiff
and
PM BRANDING CORP. DOING BUSINESS AS PMBRAND LTD. AND SOMETIMES DOING
BUSINESS AS PROMO MEDIA AND PROMOMEDIAUSA
Defendant
JUDGMENT
UPON MOTION in
writing dated September 3, 2015 on behalf of the Plaintiff for:
(a)
An order pursuant to Rule 210 of the Federal
Courts Rules for Default Judgment against the Defendant, PM Branding Corp.
Doing business as PmBrand Ltd. and sometimes doing business as Promo Media and
PromoMediaUSA (“PM Branding” or the “Defendant”), in the terms of the draft
Judgment attached hereto as Schedule “A”; and
(b)
Such further and other relief which to this
Honourable Court may deem just;
AND UPON reviewing the
material filed;
THE COURT’S JUDGMENT is that:
1. The
Plaintiff, RE/MAX, LLC, is the owner in Canada of the trade-marks listed in
Schedule A hereto (the “RE/MAX Trademarks”) and the corresponding trademark
registrations also listed in Schedule A; said registrations are valid; and the
RE/MAX Trade-marks have been infringed by the Defendant, contrary to section 20
of the Trade-marks Act.
2. At a minimum, the Defendant has
used the trademarks RE/MAX and REMAX, the following RE/MAX design trademark:
and the
following design trademarks, each of which incorporate a red, white and blue
colour claim:
in a manner likely to have the effect of depreciating the value of
the goodwill attaching thereto.
3. The Defendant has directed public
attention to its services and business in such a way as to cause or to be
likely to cause confusion in Canada between the Defendant’s services and business
and the services and business of the Plaintiff, contrary to section 7(b)
of the Trade-marks Act.
4. The Defendant has passed off its
services as and for those of the Plaintiff, contrary to section 7(c) of the Trade-marks
Act.
5. The Defendant has used, in
association with promotional products and related design, printing and
manufacturing services, a description which is false in a material respect and
which is of such a nature as to mislead the public as regards to the character,
quality and/or composition of such goods and services, and the mode of
manufacturing and production of such goods and the mode of performance of such
services, contrary to section 7(d) of the Trade-marks Act.
6. The Plaintiff, RE/MAX, LLC, is the
owner of copyright in and to its famous balloon designs, including Canadian
copyright registration nos. 1,057,202 and 1,057,203, copies of which are
depicted as follows:
(the “Balloon Copyrights”) and such registrations are valid.
7. The Defendant has infringed the
Plaintiff’s copyright in and to the Balloon Copyrights, contrary to ss. 3 and
27 of the Copyright Act.
8. The
Defendant, by itself and by its servants, workmen, agents and employees, is
permanently restrained and enjoined from, directly or indirectly:
(i) using or further infringing the
RE/MAX Trademarks;
(ii) using the RE/MAX Trademarks, any
words, or combination of words, or any other design, likely to be confusing
with the RE/MAX Trademarks, as or in a trade-mark or trade-name, or for any
other purpose;
(iii) depreciating the value of the
goodwill attaching to the RE/MAX Trademarks;
(iv) directing public attention to any
of the Defendant’s goods, services or business in such a way as to cause or to
be likely to cause confusion between the goods, services and business of the
Defendant and the goods, services and business of the Plaintiff;
(v) passing off the Defendant’s goods
and services as and for those of the Plaintiff;
(vi) using a material description that
is false and misleading to the public, or making false or misleading material
representations to the public, in promoting either the supply or use of the
goods and business interest, through suggesting an association to, or
authorization of, the Plaintiff; and
(vii) infringing the Plaintiff’s
copyright in and to the Balloon Copyrights.
9. The
Defendant shall pay forthwith to the Plaintiff the amount of $159,000.00, as
damages for its breaches of the Plaintiff’s trade-marks rights.
10. The Defendant
shall pay forthwith to the Plaintiff the amount of $40,000.00, as statutory
damages for its breaches of the Plaintiff’s copyrights.
11. The
Defendant shall pay forthwith to the Plaintiff the amount of $15,000.00, as
punitive and exemplary damages.
12. The
Defendant shall pay forthwith to the Plaintiff lump sum costs of these
proceedings in the amount of $4929.75, inclusive of disbursements.
13. The
Defendant shall pay to the Plaintiff post-judgment interest in the amounts
awarded in paragraphs 9, 10, 11 and 12, calculated from the date of this
Judgment at the current rate of 2.85% and at future rates determined according
to the British Columbia Court Order Interest Act, RSBC 1996,
c.79, Part 2.
14. Within
twenty-one (21) days of the Judgment, the Defendant shall, at its own expense:
(i) remove from any websites in the
Defendant’s control, including but not limited to <pmbrand.com> and
<pmbranding.com>, any and all use of the RE/MAX Trademarks and Balloon
Copyrights or other images or trademark or trade name use that is contrary to
paragraph 8 to this Order; and
(ii) deliver up to the Plaintiff all
articles, including all packaging, stationary, advertising or other material,
in its possession, custody or power which are contrary to paragraph 8 to this
Order.
15. Within
twenty-one (21) days of the Judgment, the Defendant shall execute any and all
necessary documents and take whatever other steps are necessary to transfer to
the Plaintiff the registration of the Internet domain names <balloonbrand.com>
and <balloonbrandusa.com>, and any other domain names owed by the
Defendant which use the trademarks REMAX, RE/MAX or any other name that would
be likely to suggest a business connection with the Plaintiff.
"Peter Annis"
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