Case Comment: Key Words and Passing Off

April 8, 2017

Tamara Ramsey published a case comment in the INTA Bulletin about the case of Vancouver Community College v. Vancouver Career College (Burnaby) Inc., 2017 BCCA 41 in which the Court considered claims for passing off based on both key word advertising domain names. It is important to note that key words advertising will not constitute passing off unless the ads resulting from that search are confusing. A copy of the case comment is reproduced below.

 

CANADA: Keywords Can Be Used to Pass Off if Ads Are Confusing

Contributor: Tamara Ramsey, Chitiz Pathak LLP, Toronto, Canada

Verifier: Timothy O. Stevenson, Smart & Biggar/Fetherstonhaugh, Ottawa, Canada
INTA Bulletins Law & Practice—North America Subcommittee

For the last two decades, courts around the world have been struggling to apply established principles regarding trademark infringement passing off to Internet technologies. On January 26, 2017, in the matter of Vancouver Community College v. Vancouver Career College (Burnaby) Inc., 2017 BCCA 41, the British Columbia Court of Appeal held that the defendant’s Internet-based keyword-triggered advertisements violated the trademark rights of Vancouver Community College. This decision provides some clarity regarding the nexus between keyword advertising, domain names, trademarks in Canada, the circumstances in which trademark rights can be relied upon to prevent competitors from making use of confusing domain names.

Starting in 1998, Vancouver Community College used the domain namewww.vcc.bc.ca, , in November 2002, changed its domain name to www.vcc.ca. Vancouver Career College adopted www.vccollege.ca as its domain name. The court ultimately based its finding of likelihood of confusion on the domain name displayed in the online advertising for Vancouver Career College. The court also discussed the issue of keyword advertising because it was the mechanism through which people looking for “Vancouver Community College” or “VCC” on the Internet would be sent advertisements displaying the domain name for the competing college,www.vccollege.ca.

The court reconciled some apparently conflicting decisions to hold that confusion is to be determined on the basis of the first impression at the time that search results appear. It does not matter that such confusion may be dispelled once someone clicks or taps through the advertisement sees the content of the website. In this case, the court found that there was confusion because there is nothing in the domain name www.vccollege.ca displayed in the keyword-triggered advertisements for Vancouver Career College that distinguished the owner of that domain from Vancouver Community College.

Keyword advertising played a role in this case, but the court was careful to comment that “[m]erely bidding on words, by itself, is not delivery of a message”—stressed that how the defendant presents itself in the advertisements that are triggered by keyword searches is the most important determinant.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2017 International Trademark Association

 

 

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