Canada: CAN THEY DO THAT? Policing Your Intellectual Property On The Internet

Last Updated: September 25 2009
Article by Lisa Martz

As more and more commerce is conducted online, it has become increasingly important to monitor the Internet for activities that infringe a company's intellectually property rights. In fact, the ease with which electronic material can be copied, coupled with an attitude of indifference amongst many online operators regarding the legality of their activities, makes the Internet a zone that is particularly ripe for infringement.

Once a brand is recognized to have value, it is inevitable that unauthorized third parties will do what they can to make money from it on the Internet. By now, most companies have registered for themselves an Internet address (referred to as a "URL" or domain name") that has as its dominant or only element their key brand or trade-mark (e.g., ), and are using this address to post a website that promotes their business. However, brand owners need to be aware that the more successful their online presence, the more likely it is that someone is seeking to trade on the Internet traffic looking for the brand owner's site.

Cyber-squatting is the term used to describe the registration of a domain name that incorporates the trade-mark of another. Although many Internet users rely on search engines (such as Google and Yahoo) to locate a website, studies show that a significant number of Internet users look for a website by way of "direct navigation," i.e., by guessing at the Internet address and typing it into their web browser. Where a brand allows for multiple logical formulations of a website address (e.g.,,, or, the potential for exploitation by unauthorized parties abounds. The typos that inevitably occur when Internet users attempt to type a brand name into their browser (e.g., provide another opportunity for brand exploitation (sometimes referred to as "typo-squatting").

The incentive for third parties to register domain names based on trade-marks they do not own arises from the huge dollars now being spent on online advertising. Owning a website that can be a platform for online advertising can generate significant revenue. This is because each time an Internet user, temporarily lost or distracted from his or her intended destination, clicks on a link posted on a website he or she has arrived at unintentionally, the owner of that website (or someone down the increasingly complex chain of syndication that now characterizes the world of online advertising), earns a fee. Typically, each "click" is worth an amount well below one dollar. However, enough clicks to a website that receives a high volume of traffic, or owning enough websites that each receive a lower volume of traffic, can add up to significant revenue.

Sometimes, this kind of cyber-squatting is viewed as nothing more than a nuisance. If the "pay per click" website has a very different "look and feel" (appearance and functionality) from the brand owner's website, Internet users are unlikely to be confused into thinking they have arrived at the brand owner's website. Even if Internet users pause to click on a few links at the pirate site, they may well persevere in their hunt for the brand owner's site. In such a case, a brand owner may conclude that no enforcement action is warranted. However, if the links on the pirate site lead to sites where Internet users can purchase a competitor's products or services, then the cyber-squatter's activities may end up depriving the brand owner of sales. In that circumstance, a failure to go after the pirate site can have a direct impact on the brand owner's bottom line.

Another, less common, circumstance that causes brand owners to take action is where the pirate site displays content that is offensive or could have the effect of depreciating their brand in the minds of consumers (e.g., pornographic or suggestive material).

The solution for a brand owner is first, to act preventively, and register the key domain names that Internet users are likely to assume to be the location of your website. If others have gotten there first, however, mechanisms are available to recover what should rightfully be yours. Although traditional remedies via a court action for trade-mark infringement may be available in some cases, most domain names (e.g., those using ".com," ".ca," and other major country codes) are subject to mandatory dispute resolution policies that bind domain name registrars (the companies that sell and administer registrations for domain names).

Under these processes, a complainant who claims that the domain name registered by another infringes their rights can file, with one of the approved dispute resolution forums, a written submission and supporting evidence that asserts the required test has been met for unlawful registration of a domain name. The elements required generally include proof of similarity to the brand owner's trade-mark, the lack of a legitimate claim to use the trade-mark on the part of the party who registered the domain name, and registration in bad faith (as defined in the policies). The respondent has the opportunity to file submissions and evidence to refute these claims. An arbitrator is appointed to review the materials (no oral hearings occur), and a decision is rendered within a few months. Where the domain name is found to be infringing, a mandatory order is issued to the registrar who maintains the domain name, directing it to transfer the domain name registration to the successful complainant.

In addition to the registration of domain names that incorporate the trade-mark of another, third parties may take advantage of well-known trade-marks in other ways. In the United States, the purchase and sale of key words that consist of another party's trade-mark in order to generate "sponsored" (or paid) links on the results page of a Google search when an Internet user types that trade-mark into Google's search engine, is the subject of ongoing litigation. The key question in these cases is whether such "hidden" use of a trade-mark (where the trade-mark itself is not displayed on the sponsored link or on the website that it leads to) constitutes "use" of the trade-mark so as to satisfy this required element for a claim of trade-mark infringement. The incorporation of another's trade-marks in the "meta-tags" for a website (the key words coded into the hidden text on a website), so that the website appears in the list of "organic" results generated by a search engine (i.e., those generated by operation of the search engine's own algorithms), is another form of unauthorized use of a trade-mark online. Whether such activities are unlawful remains largely unconsidered by Canadian courts.

In addition to protecting their trade-marks, companies should be vigilant in watching for breach of copyright through the unauthorized reproduction of material they have posted on their websites. Copyright law protects the rights of the owner of an original work, regardless of the form in which it appears. Content posted on a website in electronic form cannot therefore be reproduced without the permission of the owner of copyright for that material. However, the ease with which electronic information can be copied online facilitates copyright infringement, and "screen-scraping" (the copying of all or part of a web page) is rampant in the online world. Additional concerns arise where the infringing material is being used in a way that has the potential to harm the reputation or goodwill associated with the rights holder's own business. In some cases, this practice stems from ignorance of copyright law. In other cases, the violation of rights is deliberate and is carried out in the belief that the Internet is, or should be, beyond the control of rights holders. In either case, the rights holder can take steps to bring the infringement to an end. Although no expedited process for online copyright infringement has been developed, traditional remedies through court action remain available.

The Internet poses new challenges for intellectual property rights holders. However, remedies are available to protect against infringement. Being vigilant in watching for unauthorized use of your intellectual property ― and, where justified, taking steps to enforce your rights, can send an important message of deterrence to those who seek to profit online from what is rightfully yours.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
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).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions