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TRADEMARKS - Infringement - Passing off and unfair competition 

Wednesday, December 23, 2020 @ 6:49 AM  

Lexis Advance® Quicklaw®
Appeal by Dong and his companies from a judgment that found them liable for trademark infringement and passing off and dismissed their counterclaim. Royal Pacific owned a registered trademark in association with residential and commercial real estate services. Dong entered a sales representative agreement with the respondents that allowed the use of its trademark for real estate services. The agreement further allowed either party to terminate without cause by providing 21 days’ notice. Dong developed a personal website that used the Royal Pacific trademark. He used the Royal Pacific trademark to seek business for his social media referral application business. The respondents terminated the sales representative agreement and commenced their action after Dong refused to take down the website and cease using their registered trademark for his other business. Dong counterclaimed alleging the respondents breached the sales representative agreement by wrongfully denying him the ability to use the name Royal Pacific and by terminating the agreement for an improper purpose.

HELD: Appeal dismissed. There was no palpable or overriding error in the trial judge’s conclusion the respondents acted lawfully in terminating the agreement and did so for no improper purpose. The trial judge did not err in finding Dong was not entitled under the sales representative agreement to utilize the respondents’ trademark and trade name in the manner he did. He did not err in concluding Dong promoted his products in such a way to create the impression that the products and services were in some way approved or endorsed by the respondents. The counterclaim substantially depended on Dong being successful in the action brought against him. It was clear from the record Dong was permitted to raise every argument available on his counterclaim. The trial judge did not err in dismissing the counterclaim.

Royal Pacific Real Estate Group Ltd. v. Dong, [2020] B.C.J. No. 1857, British Columbia Court of Appeal, M.E. Saunders, E.A. Bennett and J. DeWitt-Van Oosten JJ.A., November 20, 2020. Digest No. TLD-December212020005