Royal Pacific Real Estate Group Ltd. v. Dong, 2018 BCSC 1272
On July 30, 2018, after a 15-day trial in the British Columbia Supreme Court, Mr. Justice Sewell issued Reasons for Judgment in a trademark infringement and passing off claim brought by two Royal Pacific companies against a former sales agent, Vinh Phat Steven Dong, and two companies owned and controlled by Mr. Dong.
The Royal Pacific Plaintiffs have been in the real estate industry in Vancouver since the mid-1990s and have had enormous success. For example, in 2016, they arranged $15 billion of sales. As a result, the Royal Pacific trademark and the name ROYAL PACIFIC has become well known in Vancouver in connection with real estate related services. Mr. Dong became a real estate agent at one of the Royal Pacific Plaintiffs in 2012. He signed a sales representative contract. In 2012, the Defendants purchased the domain name <royalpacific.co> and in 2013 the Defendants purported to launch a software service called Bliip Box aimed at real estate professionals. The software platform displayed Royal Pacific’s registered trademark and the launch of the business relied upon the use of the domain name <royalpacific.co> and false statements made to the public such as “Royal Pacific … is looking to endorse local business on our Bliip Box”. None of these actions were authorized or consented to by the Plaintiffs. When the Defendants did not cease their infringing activities and refused to deliver the <royalpacific.co> domain name to the Plaintiffs, Mr. Dong’s sales representative contract with Royal Pacific was cancelled. After further refusals by the Defendants to comply, litigation was commenced in December 2013.
The Judge held that the Defendants had infringed Royal Pacific’s registered trademark and the Defendants had passed off their goods and services as approved or endorsed by the Royal Pacific group of companies. The Judge also found Mr. Dong personally liable for his own actions and the actions of the two Defendant companies as he was the sole shareholder and director of the companies and used the companies in the course of his business. The Judge awarded damages against all three defendants. Given the conduct of Mr. Dong during the litigation, the Judge awarded elevated costs to the Plaintiffs and issued a vexatious litigation order restraining Mr. Dong from commencing litigation against Gowling WLG without first obtaining leave of the Court.
Scott Foster and Greg Hoff of Gowling WLG represented Royal Pacific with assistance of associates Nicholas Pike and Siobhan McConnell.
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