AdWords is an online advertising program offered by Google where
an advertiser can purchase certain keywords. When a user searches
Google using an advertiser's keyword, an advertisement may
appear next to the Google search results. Keywords can also trigger
advertisements to show on other sites across the Internet which are
affiliated with Google AdWords. By purchasing the keywords,
Vancouver Career College was able to rank higher in some Google
search results than Vancouver Community College when a user did a
search for "VCC".
In determining the likelihood of consumer confusion, the Court
reviewed authorities which state that the "first
impression" of the searcher is the point to determine if
confusion, and therefore liability, arise. The Court ruled that a
"first impression" can only be made when the searcher
reaches a web site, i.e. clicks through the search results
and arrives at a landing page. On the facts of the case, the
defendant's web site made no reference to the plaintiff. Based
on the content of the defendant's web site, and the requirement
that a student enroll for classes in person, there was no
likelihood of confusion.
The result is consistent with an April 2015 decision of the
Federal Court of Canada as to whether using trademarks in metatags
can constitute infringement. In Red Label Vacations Inc v 411 Travel
Buys Limited the Court determined that the use of
metatags in the hopes of improving rankings in search results
merely gives the consumer a choice of distinct links to choose
from, and does not direct the person doing the search to one
particular competitor. While search engine rankings may influence
the link that is selected, the consumer always has a choice. Even
if a searcher who is looking for the web site connected with a
particular trademark clicks on a link to a competitor's site,
that misdirection is not independently actionable. There must still
be confusion as to the source of the goods or services. If there is
no likelihood of confusion with respect to the source of the goods
or services on the web site, there is no trademark
Both the Vancouver Community College and Red Label
Vacations decisions give consumers a fair amount of credit to
review the content of a web site before making a purchasing
decision, and not only rely on search result rankings. In doing so,
Canadian courts have afforded no traction to the doctrine of
initial interest confusion that has been accepted in some US cases
(see, for example, Multi Time Machine Inc v Amazon.com
While the use of trademarks in Google AdWords and metatags may
not attract liability, web site content that faces the consumer
will continue to be an important factor in future cases. Where
creative content or trademarks are appropriated, this will remain
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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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.
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