ONLINE ADVERTISING
“EVEN THOUGH THE EVIDENCE SHOWED THAT SOME SALES FOR THE DEFENDANT WERE GENERATED DIRECTLY FROM THE SPONSORED LINK, THE COURT CONCLUDED THAT NO ACTUAL DAMAGES OR LOSSES WERE SHOWN TO BE SUFFERED BY THE PLAINTIFF.”
As has been the case in other areas of Internet law, Canada has been a bit of latecomer to the party when it comes to judicial consideration of the keyword advertising issue. Te first decision to deal with keyword advertising was rendered on May 28, 2010 by the British Columbia Supreme Court in Private Career Training Institutions Agency v Vancouver Career College (Burnaby) Inc. Te court confirmed that the use of a competitor’s trade name (or trademark) in Internet keyword advertising is acceptable, provided that there is no misrepresentation in the use of the competitor’s trade name.
In Private Career Training, the court considered whether the defendant’s use of keywords consisting of the business names of competing educational institutions was confusing or misleading. Te analysis was made in the context of the Private Career Training Institutions Act, a provincial statute, rather than the Trademarks Act, but the court did consider the issue of confusion from a trademark perspective when it looked at the question of whether the use of the keywords constituted misleading advertising. Te evidence showed at least two students who claimed to be misled when conducting Internet searches. One of them was confused to the point of actually enrolling in a course at the rival institution before realising the error, and the other noticed a problem only aſter booking a tour of the rival institution. Te court had no prior Canadian jurisprudence to look to for guidance in this area, so it turned to US authorities for assistance and ultimately determined that where a competitor’s name is being used only as a keyword and not in the actual advertisement itself, there is no likelihood of confusion.
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Tis position allowed the court to discount the students’ claims and conclude that the mistake that led them to the defendant’s website did not result from keyword use. According to the court, it was not the keyword use per se that misled the students since the defendant’s advertisements did not misrepresent or misidentify who they were. Users of search engines such as Yahoo! and Google always have the opportunity to review the search results, in this case to determine or investigate which schools are listed in the search, and it was the students’ own carelessness in this regard that led to their errors.
As the Private Career Training case arose in the context of misleading advertising, its applicability may be limited in the context of infringement or passing off. However, a second Canadian case came to a similar conclusion at around the same time, this time in the province of Québec. In Chocolat Lamontagne Inc v Humeur Group-conseil Inc, the defendant purchased the business names of a competitor as Google AdWords, which were then used to direct users searching the competitor’s trade name (Chocolat Lamontagne) in a Google search to a sponsored AdWords link which led to the defendant’s website. Te sponsored link was identified in the search results as “Alternative to Chocolat Lamontagne”. Even though the evidence showed that some sales for the defendant were generated directly from the sponsored link, the court concluded that no actual damages or losses were shown to be suffered by the plaintiff, and there was no passing off, confusion or likelihood of confusion, since consumers were clearly being advised that the sponsored link was leading to an alternative to the plaintiff’s site.
Trademarks Brands and the Internet Volume 1, Issue 1
In both cases, the courts took the position that keyword use represents the evolution of competition and marketing practices to adapt to new technologies, and the practice of purchasing competitors’ trademarks as keywords is no more false, deceptive or misleading than intentionally placing print advertisements close to competitors’ advertisements in printed publications.
Te current Canadian position therefore seems to be that keywords are simply an aspect of “an economy of open competition” where “new ways of interacting with consumers” must be accepted and “information meant to provide an alternative to other business cannot be prohibited”. n
Dr Victoria E. Carrington is a partner at Shapiro Cohen. She can be contacted at:
vcarrington@shapirocohen.com
Victoria E. Carrington is a partner at Shapiro Cohen specialising in Internet and domain name law, as well as the acquisition, protection and enforcement of trademark rights and copyright matters.
www.worldipreview.com
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