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Infringement To The Omax: Default Judgement In Real Estate Trade-mark Action

In Maxwell Realty Inc. v. Omax Realty Ltd., Justice McDonald considered an ex-parte motion for default judgement for trade-mark infringement.

Maxwell operates a real estate agency in the provinces of Alberta and British Columbia. In 1999, Maxwell registered the the following design in association with the operation of a real estate agency:

maxwell

In 2015, Maxwell became aware that the defendant was operating in British Columbia under a company called Omaxwell Realty (also in the provision of real estate services) and appeared to operate a website: omaxwellrealty.com.

After a  unsuccessful cease and desist letter, Maxwell served Omax with a statement of claim alleging trade-mark infringement. Omax failed to file or serve a statement of defence as required by Rule 204.

In this motion for default judgment, Justice McDonald considered whether Omax’s activities infringe on Maxwell’s trade-mark. The rights of the owner of a trade-mark are deemed infringed when a person, not entitled to use the trade-mark, advertises its services in association with a confusing trade-mark. Justice McDonald agreed with Maxwell that there was confusion:

[22]           Here, the trade-mark has been used by the Plaintiff since 1999 in association with real estate services. The defendant only appears to have started to use the Omaxwell name in 2015. Evidently, as both the Plaintiff and the Defendant are in the real estate business primarily in western Canada, the risk of confusion is high.

[23]           Finally, the degree of resemblance of the names in appearance, and more importantly in the sound of the names, adds to the potential confusion.

[24]           I am satisfied that a consumer of real estate services would be confused, as the word Maxwell is the predominate word in the trade-mark. Additionally, the use of the word by the Defendant by simply placing an “O” in front of Maxwell still leaves the word Maxwell as the predominate characteristic of the phrase.

Next, Justice McDonald held that Maxwell was entitled to compensatory damages and costs, even in the absence of evidence of actual damage.

A copy of the decision can be found here.