LEXPERT MAGAZINE
|
APRIL/MAY 2017 13
munity College, the plaintiff, and Vancou-
ver Career College, the defendant, arose
over the acronym "VCC." Vancouver Ca-
reer College had used it internally for some
time, but only Vancouver Community
College had marketed itself publicly using
the acronym.
In 2009, however, Vancouver Career
College began an extensive advertising
campaign. e college purchased VCC
as a keyword for the Google and Yahoo!
search engines. At the same time, it bought
the domain "VCCollege.ca" for its website.
It also purchased a series of other domain
names that included the term VCC. e
website itself did not use the term, however,
nor was there anything on the website that
related to the plaintiff.
Numerous students and prospective stu-
dents who used VCC as a search term testi-
fied that they were directed to Vancouver
Career College, mistakenly believing that
it was the same
institution as Van-
couver Commu-
nity College.
e court found
that VCC had be-
come identified in
the public mind
with Vancouver
Community Col-
lege. Vancouver
Career College's purchase of the VCC
trademark, considered in the context of the
search results page, produced confusion for
the consumer and therefore interfered with
Court clarifies passing off on the Net
BCCA's ruling on trademark in keyword advertising brings Canadian law closer to other jurisdictions BY JULIUS MELNITZER
Vancouver Community College's goodwill
in the mark.
Timothy Stevenson of Smart & Biggar/
Fetherstonhaugh in Ottawa says the deci-
sion indicates the
need for caution in
designing the spon-
sored link.
"Businesses will
have to be careful
about the way in
which their spon-
sored link appears
on the search en-
gine's results page,"
he says.
"Bidders using competitor's marks will
have to ensure that that pop-up is not con-
fusing on first impression."
One advantage of the BCCA's decision
is that it brings internet keyword advertis-
ing law into sync with the law relating to
meta tags and with the Federal Court of
Appeal's decision in Red Label Vacations.
e decision suggests that the use of
trademarks in meta tags (themselves a form
of keywords) could indeed give rise to li-
ability for trademark infringement.
e court ruled that the extent to which
a trademark may be used without infring-
ing the mark is fact-specific.
"In some situations, inserting a regis-
tered trademark (or a trademark that is
confusing with a registered trademark) in
a meta tag may constitute advertising of
services that would give rise to a claim for
infringement," the court stated.
e BCCA ruling has brought Canadian
law closer to that of the UK, US and conti-
nental Europe. But just how close it comes
depends on the judicial interpretation go-
ing forward. "e Court of Appeal didn't
explain how far the successful keyword bid-
der can go in designing its advertisement on
the search page," Wilson notes.
BIDDING ON a competitor's trademark
in keyword advertising does not in and of
itself amount to infringement, but doing so
in combination with a confusing advertis-
ing message can amount to passing off, says
the British Columbia Court of Appeal.
Keyword advertising occurs when busi-
nesses bid for specific keywords to be as-
sociated with their website in response to
searches conducted on Google or other
search engines. e highest bidder's adver-
tisement appears as a "sponsored link" on
the webpage displaying the search engine's
results. If a user clicks on the sponsored
link, the search engine charges the bidder
the amount it bid.
e BCCA's February decision in Van-
couver Community College v. Vancouver
Career College reverses a lower court's deci-
sion that the "first impression" test for as-
sessing confusion occurs when a searcher
lands on the webpage of the keyword ad
purchaser by way of a link from search en-
gine results. According to the BCCA, that
confusion can occur when the search re-
sults are displayed.
"e bottom line is that businesses can
use a competitor's keywords in their key-
word bidding strategy so long as they don't
couple that strategy with resulting advertis-
ing that prevents the consumer from being
able to distinguish between the two," says
Chris Wilson of Norton Rose Fulbright
Canada LLP in Vancouver, who success-
fully represented Vancouver Community
College on the appeal.
e dispute between Vancouver Com-
CHRIS WILSON
> NORTON ROSE
FULBRIGHT CANADA LLP
TIMOTHY
STEVENSON
> SMART & BIGGAR
/FETHERSTONHAUGH
ON THE CASE
"BUSINESSES WILL HAVE TO BE CAREFUL ABOUT THE WAY
IN WHICH THEIR SPONSORED LINK APPEARS ON THE SEARCH
ENGINE'S RESULT PAGES. BIDDERS USING COMPETITOR'S
MARKS WILL HAVE TO ENSURE THAT THE POP-UP IS NOT
CONFUSING ON FIRST IMPRESSION."
> TIMOTHY STEVENSON, SMART & BIGGAR/FETHERSTONHAUGH
