Bennett Jones
The British Columbia Supreme Court has decided that the use of a competitor's trademarks in Google AdWords does not constitute infringement.
In Vancouver Community College v Vancouver Career College (Burnaby) Inc., Vancouver Community College asserted trademark rights in "VCC". It claimed that those rights were infringed, among other things, when Vancouver Career College purchased VCC as a Google AdWord.
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 enrol 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 infringement.
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 Inc).
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 actionable.