When we're talking about trademarks, at which point do
we measure whether there is confusion in the mind of the
We reviewed this issue in 2015 (See: No copyright or
trademark protection for metatags). In that earlier decision,
Vancouver Community College sued a rival college for trademark
infringement, on the basis of the rival college using
"VCC" as part of a search-engine optimization and keyword
advertising strategy. The court in that case said: "The
authorities on passing off provide that it is the 'first
impression' of the searcher at which the potential for
confusion arises which may lead to liability. In my opinion, the
'first impression' cannot arise on a Google AdWords search
at an earlier time than when the searcher reaches a
website." In other words, it is the point at which a
searcher reaches the website when this "first impression"
is gauged. Where the website is clearly identified without the use
of any of the competitor's trademarks, then there will be no
confusion. That was then.
That decision was appealed and reversed in Vancouver Community
College v. Vancouver Career College (Burnaby) Inc., 2017 BCCA
41 (CanLII). The BC Court of Appeal decided that the moment
for assessing confusion is not when the searcher lands on the
'destination' website, but rather when the
searcher first encounters the search results on the search
page. This comes from an analysis of the Trade-marks
Act (Section 6) which says confusion occurs
where "the use of the first mentioned
trade-mark ... would cause confusion with the
last mentioned trade-mark."
And it draws upon the mythical consumer or searcher – the
consumer somewhat in a hurry". The BC court reinforced
that "the test to be applied is a matter of first impression
in the mind of a casual consumer somewhat in a hurry", and as
applied to the internet search context, this occurs when the
searcher sees the initial search results.
To borrow a few phrases from other cases, trade-marks have a
particular function: they provide a "shortcut to get
consumers to where they want to go" and "Leading
consumers astray in this way is one of the evils that trade-mark
law seeks to remedy." (As quoted in the VCC case at paragraph
68). Putting this another way, the 'evil' of leading
casual consumers astray occurs when the consumer sees the search
results displaying the confusing marks.
On the subject of whether bidding on keywords
constitutes an infringement of trademarks or passing-off, the court
was clear: "More significantly, the critical factor in
the confusion component is the message communicated by the
defendant. Merely bidding on words, by itself, is not delivery of a
message. What is key is how the defendant has presented itself, and
in this the fact of bidding on a keyword is not
sufficient to amount to a component of passing
off..." (Paragraph 72, emphasis added).
The BC Court issued a permanent injunction against Vancouver
Career College, restraining them from use of the mark
"VCC" and the term "VCCollege" in connection
with its internet presence.
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A recent decision of the Federal Court of Canada has highlighted the difficulties in asserting trademark and copyright rights related to the appearance of functional products with unique design elements.
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