Buyers of Keywords Beware! Content of Ads May Spell Confusion

Dollarphotoclub 86927923-300x200.jpg

By Jonathan Roch and Lauren Blaiwais, February 8th, 2017

In the British Columbia Supreme Court (“BCSC”) decision of Vancouver Community College v Vancouver Career College (Burnaby) Inc, 2015 BCSC 1470, the Vancouver Community College  alleged that the Vancouver Career College was wrongfully using and passing off its mark, VCC, in both its domain name and keyword advertising. The BCSC ruled that purchasing keywords of a competitor’s trademark is not sufficient to establish passing off and that the relevant time to assess a likelihood of confusion in passing off assessments is once a consumer reaches a website, and not when a consumer reviews search engine results.  

However, on January 26, 2017, the British Columbia Court of Appeal (“BCCA”) overturned the BCSC’s decision (2017 BCCA 41) holding that the claim of passing off had been established. The court found it is a consumer’s “first impression” that is relevant and therefore confusion occurs when a customer reviews search engine results. The BCCA did go on to affirm that purchasing a competitor’s trademark as a keyword is not sufficient in and of itself to establish passing off.

Parties using competitors’ trademarks in keyword advertising will therefore need to be very vigilant with the message of their keyword ads to avoid passing off.

For more information please contact:

Jonathan Roch, Partner

T: 613.801.1059

E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

 

Lauren Blaiwais, Articling Student

T: 613.801.1057

E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

 

 

Submit to DiggSubmit to FacebookSubmit to Google BookmarksSubmit to StumbleuponSubmit to TwitterSubmit to LinkedIn

cb photo 111 561d6b13433c5JONATHAN ROCH

Partner

Jonathan assists clients with their intellectual property rights including patents, trademarks, copyrights, industrial designs and trade secretsMBM read_more_btn

MBM logo

About MBM

 The process of invention is complete only with the IP protection provided in law. That's where MBM comes in. We match our clients' creative thinking with the creative protection needed to achieve their goals.Read More About MBM

New MBM IP Industry Event Calendar

New MBM IP Industry Event Calendar ...Read More