The British Columbia Court of Appeal (the “Court of Appeal”) in Vancouver Community College v Vancouver Career College (Burnaby) Inc. unanimously reversed the trial court’s decision regarding the use of competitors’ trademarks as keywords for online advertising campaigns. As previously reported in the October 2015 Charity & NFP Law Update’s “Use of Trade-marks in Keyword Advertising is Not Passing Off”, Vancouver Community College (“Community College”) claimed that Vancouver Career College (“Career College”) was passing off its trademarks, including the mark “VCC”, with its online keyword advertising campaign. The terms were purchased by the Career College as keywords used in online advertisements such that searches of the Community College’s trademarks would direct individuals to the Career College’s website. However, the Career College’s website did not actually use the Community College’s trademarks, and the difference between the two websites was apparent. As such, the issue before the trial judge was whether or not the use of the Community College’s trademarks in keyword advertising campaigns constituted passing-off of the Community College’s trademarks.
The trial judge found that the elements of passing off, namely goodwill, public confusion, and damages, could not be established. On appeal, the Court of Appeal overturned the trial court’s decision on all three grounds. Most noteworthy, the Court of Appeal rejected the trial court’s determination on the point at which confusion is assessed. The trial court held that confusion should be assessed at the point where the individual reaches the target website, and because it was obvious it was not the Community College’s website, there was no confusion. The Court of Appeal overturned this finding and held that “the moment for assessing confusion was upon the first encounter when search results appear, not when the searcher arrives at the landing page.” As such, the display of the Career College’s advertisements with search results for the Community College’s “VCC” trademark was found to create confusion and amount to passing-off.
Charities and not-for-profits should be mindful of this decision when embarking on keyword advertising campaigns and ensure that they are not presented in a way that may be intentionally or unintentionally misleading or misrepresentative of an association with another organization’s trademarks.