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.
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.