On July 22, 2014, the B.C. Court of Appeal dismissed the claim
of B.C.'s provincial auto insurer, the Insurance Corporation of
British Columbia (ICBC), that a personal injury lawyer's
registration and use of domain names incorporating its official
mark "ICBC" violated the Canadian Trade-Marks
In Insurance Corporation of British Columbia v. Stainton
Ventures Ltd., 2014 BCCA 296 the Court held that the domain
names "icbcadvice.ca" and "icbcadvice.com" did
not infringe ICBC's rights as internet users will recognize
that the term "icbc" in the domain names does not
necessarily mean that they are associated with ICBC and might just
refer to the subject matter of the websites to which they
Under s. 9 of the Trade-Marks Act, Canadian armed
forces, universities and other designated public authorities (which
includes ICBC) are entitled to designate any badge, crest, emblem
or trade-mark of their choice as an "official
mark". Once recorded in the national Trade-marks
Register, no person other than the holder of the official mark is
entitled to use it.
ICBC adopted "ICBC" as its official mark in
1989. It also adopted 23 other official marks that
incorporate "ICBC". The domain names
"icbcadvice.ca" and "icbcadvice.com" were being
used by a personal injury lawyer whose practice includes acting for
people injured in motor vehicle accidents who have claims against
ICBC. The website posted at these domains offers information
to assist claimants in dealing with ICBC and its adjusters.
There was evidence before the Court that the website included
several disclaimers stating that it was not connected with ICBC and
that there were a number of other domain names incorporating
"icbc" being used by parties unconnected to ICBC.
ICBC argued that the domain names were infringing because they
so nearly resembled its official mark as to be mistaken for it, and
that consumers would therefore likely be led to believe that ICBC
itself is offering the advice at the website.
The Court held that it was unable to accept ICBC's
"as it fails to give the 'relevant consumer'',
i.e. an Internet user, credit for even the most basic understanding
of the function of a domain name."
The Court held that the average Internet user understands
"a domain name which, in part, contains the name of a
business or its acronym will not necessarily be affiliated with or
endorsed by that business and may, instead, be the subject matter
of the website or entirely unrelated to that business. As
well, they understand that it is necessary to view a website to
determine whose site it is."
The Court of Appeal held that an internet user would not, simply
based on observing the domain names, mistakenly believe that the
advice being offered via the website was provided or endorsed by
This decision, which is in line with many others in recent
years, is a strong statement by B.C.'s top court that Internet
users have become more sophisticated in their ability to interpret
what they find online. As a result, something more than just
use of an official mark in a domain name may be required to make
out a claim of infringement.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).