RE/MAX, LLC v. PROPERTY MAX REALTY INC. AND OTHERS T-545-16

RE/MAX, LLC v. PROPERTY MAX REALTY INC. AND OTHERS T-545-16

RE/MAX, LLC v. PROPERTY MAX REALTY INC. AND OTHERS T-545-16

RE/MAX, LLC sued PROPERTY MAX REALTY INC. AND OTHERS for trademark infringement in Vancouver Canada according to Federal Court file T-545-16. PROPERTY MAX REALTY INC. appears to operate from propertymax.ca.

Trademark Infringement and Passing Off

PROPERTY MAX’s logo doesn’t look anything like the RE/MAX logo, the name includes the words “MAX REALTY” and that may be the basis for the trademark passing off claim.

RE/MAX logo
RE/MAX sues Property Max Realty

property-max-realty-inc-logo-webpage propertymax.ca-website-2009-November-1-archived-webpage

Mohan Subramaniyam last registered propertymax.ca on 2011/01/12. But the archive.org Wayback machine shows that the “Property/Max Realty Inc. Brokerage” had a website at propertymax.ca since at least November 2009.

Maybe they should try and claim the affirmative defenses of laches and a lack of distinctiveness. A nuans pre-search report for the words “MAX REALTY” might help to show how distinctive those words are in Canada.

It would be interesting to read the trademark infringement claim.

RE/MAX is short for “Real Estate Maximums.” REMAX operates in Canada from remax.ca. REMAX is an American international real estate company that operates through a franchise system. Wikipedia
Headquarters: Denver, Colorado, United States
Stock price: RMAX (NYSE) US$34.68 -0.12 (-0.34%)
Apr 5, 2016, 4:02 PM EDT – Disclaimer
CEO: Dave L. Liniger
Founded: 1973, Denver, Colorado, United States
Revenue: 171 million USD (2014)
Founders: David (Dave) Liniger, Gail A. Liniger

Links to Official Court information for T-545-16:

RE/MAX, LLC v. PROPERTY MAX REALTY INC. AND OTHERS

Summary of T-545-16

Federal Court Type: Trade Mark Infringement

Parties and Lawyers:

PARTY FIRM LAWYER
RE MAX LLC Bull, Housser & Tupper LLP MACDONALD, KAREN F
RE MAX LLC
SUBRAMANIYAM, MOHAN (AKA)
SUBRAMANIYAM, MOHAVAROTHYARAJAH
PROPERTY MAX REALTY INC

Intellectual Property:

NAME NUMBER
RECTANGLES DESIGN
RE/MAX

Docket Summary

Result: Defendants Agree to a Consent judgment

(43) 2016-12-19 – Vancouver

Judgment dated 19-DEC-2016 rendered by The Honourable Madam Justice Heneghan Matter considered without personal appearance The Court’s decision is with regard to Motion in writing Doc. No. 37 Result: Consent judgment adjudging that the Defendants, by themselves and their directors, officers, servants, workmen, agents and employees are permanently restrained and enjoined from, directly or indirectly: a) using or infringing the RE/MAX Trademarks….(see Judgment for full terms) Within seven days of the judgment herein, the Defendants, at their own expense shall destroy all articles, including any and all packaging, stationery, advertising of other material, in their possession, custody or power which are contrary to Para 2 of this Order, and provide the Plaintiff with a signed representation under oath that such destruction has taken place. In all other respects, the Plaintiff’s action shall be dismissed without prejudice on a without costs basis. Filed on 19-DEC-2016 copies sent to parties Transmittal Letters placed on file. entered in J. & O. Book, volume 1322 page(s) 297 – 300 Final Decision

() 2016-12-16 – Vancouver

Communication to the Court from the Registry dated 16-DEC-2016 re: regarding motion for consent judgment.

(42) 2016-12-15 – Vancouver

Consent on behalf of all parties to judgment per terms attached. filed on 15-DEC-2016

() 2016-12-15 – Vancouver

Covering letter from Plaintiff dated 15-DEC-2016 concerning the motion for judgment and advising that the parties have settled. placed on file on 15-DEC-2016

(41) 2016-12-15 – Vancouver

Solicitor’s certificate of service on behalf of Karen MacDonald confirming service of 40 upon all parties by email on consent on 15-DEC-2016 filed on 15-DEC-2016

(40) 2016-12-15 – Vancouver

Motion Record containing the following original document(s): 37 38 39 42 Number of copies received: 3 on behalf of Plaintiff filed on 15-DEC-2016

(39) 2016-12-15 – Vancouver

Written Representations contained within a Motion Record on behalf of Plaintiff concerning Motion Doc. No. 37 filed on 15-DEC-2016

(38) 2016-12-15 – Vancouver

Affidavit of Amy Jobson sworn on 15-DEC-2016 contained within a Motion Record on behalf of Plaintiff in support of Motion Doc. No. 37 with Exhibits A filed on 15-DEC-2016

(37) 2016-12-15 – Vancouver

Notice of Motion contained within a Motion Record on behalf of Plaintiff in writing to be dealt with in the Vancouver local office for Judgment on consent filed on 15-DEC-2016 Draft Order\\Judgment received.

() 2016-12-07 – Ottawa

Communication to the Court from the Registry dated 07-DEC-2016 re: case management judge to be assigned

() 2016-11-29 – Vancouver

Fax Transmission Confirmation received from Plaintiff and Defendant with respect to Order Doc. 36 placed on file on 29-NOV-2016

(36) 2016-11-29 – Vancouver

Order dated 29-NOV-2016 rendered by Roger Lafrenière, Esq., Prothonotary Matter considered without personal appearance The Court’s decision is with regard to Status Review Result: 1. The action shall continue as a specially managed proceeding. 2. The Plaintiff shall provide a status report and a proposed timetable for completion of the next steps in the proceeding by December 16, 2016, unless a full and final settlement has been reached in the interim. Filed on 29-NOV-2016 copies sent to parties Transmittal Letters placed on file. entered in J. & O. Book, volume 1320 page(s) 164 – 165 Interlocutory Decision

() 2016-11-29 – Vancouver

Communication to the Court from the Registry dated 29-NOV-2016 re: Doc. 35 re Status Review

(35) 2016-11-28 – Vancouver

Submissions (Rule 380) on behalf of Plaintiff (Further Submissions) to be dealt with in the Vancouver local office filed on 28-NOV-2016

() 2016-11-24 – Vancouver

Communication to the Court from the Registry dated 24-NOV-2016 re: Doc. 33

(34) 2016-11-14 – Vancouver

Solicitor’s certificate of service on behalf of Madeleine A. Hodgson confirming service of Doc. 33 upon Defendant by e-mail on consent on 14-NOV-2016 filed on 14-NOV-2016

(33) 2016-11-14 – Vancouver

Submissions (Rule 380) on behalf of Plaintiff to be dealt with in the Vancouver local office filed on 14-NOV-2016

(32) 2016-10-27 – Ottawa

Notice of Status Review by Gosselin, D. to the parties and their solicitors requiring the Plaintiff to serve and file, within 15 days from the date of this notice to show cause by written submissions why this action should not be dismissed for delay Filed on 27-OCT-2016 cc’s sent to parties

() 2016-07-18 – Toronto

Acknowledgment of Service received from both parties, via facsimile with respect to doc # 31 placed on file on 18-JUL-2016

(31) 2016-07-15 – Toronto

Order dated 15-JUL-2016 rendered by Martha Milczynski, Prothonotary Matter considered without personal appearance The Court’s decision is with regard to Motion in writing Doc. No. 21 Result: dismissed Filed on 15-JUL-2016 copies sent to parties entered in J. & O. Book, volume 1306 page(s) 149 – 151 Interlocutory Decision

() 2016-07-11 – Toronto

Communication to the Court from the Registry dated 11-JUL-2016 re: 369 motion doc 21 sent for disposition

(30) 2016-07-08 – Toronto

Affidavit of service of Mohan Subramaniyam sworn on 08-JUL-2016 on behalf of Defendant confirming service of doc 29 upon Plaintiff by courier on 08-JUL-2016 filed on 08-JUL-2016

(29) 2016-07-08 – Toronto

Reply Representations on behalf of Defendant in response to the opposing submissions doc. No. 26 to the Motion in writing Filed on 08-JUL-2016

(28) 2016-07-05 – Vancouver

Affidavit of service of Amy L. Jobson sworn on 05-JUL-2016 on behalf of Plaintiff confirming service of Doc. 27 upon Defendants by process server on 05-JUL-2016 confirming service Doc. 27 upon Defendants by email on 05-JUL-2016 with Exhibits “A” filed on 05-JUL-2016

(27) 2016-07-05 – Vancouver

Motion Record in response to Motion Doc. No. 21 containing the following original document(s): 26 Number of copies received: 3 on behalf of Plaintiff filed on 05-JUL-2016

(26) 2016-07-05 – Vancouver

Written Representations contained within a Motion Record on behalf of Plaintiff concerning Motion in writing Doc. No. 21 filed on 05-JUL-2016

(25) 2016-06-28 – Toronto

Affidavit of service of Mohan Subramaniyam sworn on 28-JUN-2016 on behalf of Defendant confirming service of doc 24 upon Plaintiff by registered mail on 28-JUN-2016 filed on 28-JUN-2016

(24) 2016-06-28 – Toronto

Motion Record containing the following original document(s): 21 22 23 Number of copies received: 3 on behalf of Defendant filed on 28-JUN-2016

(23) 2016-06-28 – Toronto

Written Representations contained within a Motion Record on behalf of Defendant concerning Motion in writing Doc. No. 21 filed on 28-JUN-2016

(22) 2016-06-28 – Toronto

Affidavit of Mohavarothayarajah Subramaniyam sworn on 28-JUN-2016 contained within a Motion Record on behalf of Defendant in support of Motion Doc. No. 21 with Exhibits A filed on 28-JUN-2016

(21) 2016-06-28 – Toronto

Notice of Motion contained within a Motion Record on behalf of Defendant in writing to be dealt with in the Toronto local office for an Order to vary the Order of Madam Prothonotary Milczynski dated 20-JUN-2016 pursuant to Rule 399(2)(a) filed on 28-JUN-2016

(20) 2016-06-21 – Toronto

****** CANCELLED ****** Acknowledgment of Service received from both parties, via facsimile with respect to doc # 20 filed on 21-JUN-2016

() 2016-06-20 – Toronto

Acknowledgment of Service received from both parties, via facsimile with respect to doc # 19 placed on file on 20-JUN-2016

(19) 2016-06-20 – Toronto

Order dated 20-JUN-2016 rendered by Martha Milczynski, Prothonotary Matter considered without personal appearance The Court’s decision is with regard to Motion in writing Doc. No. 5 Result: dismissed Filed on 20-JUN-2016 copies sent to parties entered in J. & O. Book, volume 1303 page(s) 389 – 391 Interlocutory Decision

(18) 2016-06-20 – Toronto

****** CANCELLED ****** Order dated 20-JUN-2016 rendered by Martha Milczynski, Prothonotary Matter considered without personal appearance The Court’s decision is with regard to Motion in writing Doc. No. 5 Result: dismissed Filed on 20-JUN-2016 copies sent to parties entered in J. & O. Book, volume 1303 page(s) 387 – 388 Interlocutory Decision

() 2016-06-13 – Toronto

Communication to the Court from the Registry dated 13-JUN-2016 re: 369 motion doc 5 & directions required for the Plaintiff’s letter received June 10/16 attempting to file written representations in response to the Defendants new affidavit evidence (not filed) but contained within the reply. sent for disposition

() 2016-06-13 – Toronto

Memorandum to file from Andrew Murray dated 13-JUN-2016 In regards to document 15 I expressly told the client when he filed his representations that the attached affidavit and evidence would not be considered by the court as it does not conform to rule 369(3) placed on file.

(17) 2016-06-08 – Toronto

Affidavit of service of Mohan Subramaniyam sworn on 08-JUN-2016 on behalf of Defendant confirming service of Doc 16 upon Plaintiff by telecopier on 08-JUN-2016 filed on 08-JUN-2016

(16) 2016-06-08 – Toronto

Motion Record containing the following original document(s): 15 Number of copies received: 3 on behalf of Defendant filed on 08-JUN-2016

(15) 2016-06-08 – Toronto

Reply Representations contained within a Motion Record on behalf of Defendant in response to the opposing submissions doc. No. 12 to the Motion in writing Filed on 08-JUN-2016

(14) 2016-06-03 – Vancouver

Solicitor’s certificate of service on behalf of Karen F. MacDonald confirming service of Doc. 12 upon Defendants by regular mail on 03-JUN-2016 filed on 03-JUN-2016

(13) 2016-06-03 – Vancouver

Affidavit of service of Amy L. Jobson sworn on 03-JUN-2016 on behalf of Plaintiff confirming service of Doc. 12 upon Defendants by email and courier on 03-JUN-2016 with Exhibits “A” filed on 03-JUN-2016

(12) 2016-06-03 – Vancouver

Motion Record in response to Motion Doc. No. 5 containing the following original document(s): 10 11 Number of copies received: 3 on behalf of Plaintiff filed on 03-JUN-2016

(11) 2016-06-03 – Vancouver

Written Representations contained within a Motion Record on behalf of Plaintiff concerning Motion in writing Doc. No. 5 filed on 03-JUN-2016

(10) 2016-06-03 – Vancouver

Affidavit of Amy L. Jobson sworn on 01-JUN-2016 contained within a Motion Record on behalf of Plaintiff in opposition to Motion Doc. No. 5 with Exhibits “A” filed on 03-JUN-2016

() 2016-05-31 – Toronto

Letter from Plaintiff to Federal Court dated 31-MAY-2016 Advising the Court that the Defendant’s affidavit of service of Mohan Subramaniyam, sworn May 20/16 confirming service the Defendant’s motion by courier on May 20/16. However, the Plaintiff did not receive the motion record by courier until Tuesday May 24/16. The Plaintiffs intend to respond by June 3/16 which is 10 days after the date that the Plaintiff was served. received on 31-MAY-2016

(9) 2016-05-20 – Toronto

Affidavit of service of MOHAN SUBRAMANIYAM sworn on 20-MAY-2016 on behalf of DEFENDANTS confirming service of DOC 8 upon Plaintiff by courier on 20-MAY-2016 filed on 20-MAY-2016

(8) 2016-05-20 – Toronto

Motion Record containing the following original document(s): 5 6 7 Number of copies received: 3 on behalf of DEFENDANTS filed on 20-MAY-2016

(7) 2016-05-20 – Toronto

Written Submissions contained within a Motion Record on behalf of DEFENDANTS concerning Motion Doc. No. 5 filed on 20-MAY-2016

(6) 2016-05-20 – Toronto

Affidavit of MOHAVAROTHAYARAJAH SUBRAMANIYAM sworn on 20-MAY-2016 contained within a Motion Record on behalf of DEFENDANTS in support of Motion Doc. No. 5 with Exhibits A filed on 20-MAY-2016

(5) 2016-05-20 – Toronto

Notice of Motion contained within a Motion Record on behalf of DEFENDANTS in writing to be dealt with in the Toronto local office for an Order 1)TO SELF-REPRESENT FOR ALL DEFENDANTS 2)ALLOWING REGISTERED OWNER OF PROPERTY/MAX REALTY INC, MOHAN SUBRAMANIYAM TO FILE AFFIDAVIT IN SUPPORT OF THIS MOTION filed on 20-MAY-2016

(4) 2016-05-18 – Vancouver

Affidavit of service of Tito Acosta sworn on 18-MAY-2016 on behalf of Plaintiff confirming service of Doc 1 upon Mohavarothyarajah Subramaniyam by process server on 06-MAY-2016 filed on 18-MAY-2016

(3) 2016-05-18 – Vancouver

Affidavit of service of Tito Acosta sworn on 09-MAY-2016 on behalf of Plaintiff confirming service of Doc 1 upon the Registered and Records office of Property Max Realty Inc by process server on 02-MAY-2016 filed on 18-MAY-2016

(2) 2016-05-18 – Vancouver

Affidavit of service of Tito Acosta sworn on 09-MAY-2016 on behalf of Plaintiff confirming service of Doc 1 upon the Registered and Redcords office for Property/Max Realty Inc by process server on 02-MAY-2016 filed on 18-MAY-2016

(1) 2016-04-05 – Vancouver

Statement of Claim filed on 05-APR-2016 Tariff other action – $150.00

David Michaels

David Michaels, J.D., B.Eng., CHRM is a legal blogger (and a trained attorney) who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993.

David is a brand consultant, a writer, an eCommerce entrepreneur, and an aeronautical engineer.
http://ca.linkedin.com/in/davidtmichaels/

Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author’s notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.

comments
  • Seems like Re/Max spends a lot of time and money chasing small Brokerages for what they consider trademark infringement. I have a Boutique style Brokerage in Sudbury On, and received a letter that the red, white and black bands on my salesperson’s sign is deceiving the public and lead them to believe it is a Re/Max sign. My name is Catherine Bernier, Broker of Record with U-View Realty Inc.. I understand that Re/Max has lost their red, white and blue trademark as it is to similar to the Dutch flag. Same rule applies here in Canada. Would be interesting to know how many other Brokerages Re/Max is going after for similarities with their trademarks and designs.

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