Here at WebFuel, we love inviting guest bloggers. Why? Because they bring fresh ideas to the table, while providing great insights from their specific area of expertise. This week we welcome back Lawyer and trade-mark agent Kathryn Szymczyk. In the past Kathryn has blogged for WebFuel about Google’s new Canadian AdWords policies as well as protecting your brand on the Internet. This week Kathryn will be writing about Google AdWords and trade-mark laws from a Canadian perspective.

Guest Post by Kathryn Szymczyk

In a recent post, I blogged about Google’s new trade-mark policy in Canada with respect to Google AdWords advertising. In that blog post, I brought your attention to the fact that Google, in response to recent case law in Canada, amended its policy regarding the use of third party trade-marks in advertisements. The result was a less restrictive policy for Internet advertising through Google. Google’s AdWords trade-mark policy has not changed in 2011. However, a recent Court of Appeal decision has made Canadian law on the subject less clear.

One of the cases that appeared to lead Google to a less restrictive policy, was the 2010 decision of the British Columbia Supreme Court in Private Career Training Institutions Agency v. Vancouver Career College (Burnaby) Inc. (2010 BCSC 765, aff’d 2011 BCCA 69). In that case, the court sought to determine whether use by the Respondent of its competitor’s names as advertising keywords was “misleading advertising” under a governing bylaw. Not finding any previous jurisprudence on the subject in Canada, the judge equated “misleading” to “confusing” and resorted to an analysis based on trade-mark law. On that basis, the judge found that the Respondent’s use of its competitors names as advertising keywords, did not constitute false, deceptive or misleading advertising.

Many considered this decision to be judicial confirmation that use of a competitor’s trade-mark as an advertising keyword was not trade-mark infringement. Google’s policies appeared to be amended on this basis. However, as I noted at the end of my previous blog post, simply adhering to Google’s policies, which are based on its understanding of the law, would not be a defense to trade-mark infringement or passing off in the Canadian courts.

In 2011, Google’s policies remain the same. However, as a result of the decision on Appeal of the above noted case, Canadian law is not as clear. Although the British Columbia Court of Appeal came to the same basic conclusion as the Supreme Court of British Columbia, Chiasson J.A. notes at the end of his decision that the case was not a trade-mark dispute but rather a regulatory matter. The only issue that was determined in the case was whether or not the Respondent contravened the governing bylaw which prohibited false, deceptive or misleading advertising.

With this decision, it is again unclear whether use of a competitor’s trade-mark as an advertising keyword could ever be considered trade-mark infringement or passing off in Canada. As such, Internet advertisers would do well to be cautious. Care should be taken not to use the trade-marks of competitors in any way which could be construed as causing confusion amongst the average consumers as to the source of the associated goods and/or services.

Are you bidding on your competitor’s trade-mark as a keyword in Google?

Kathryn Szymczyk, Lawyer and Trade-mark Agent with the national law firm Borden Ladner Gervais LLP, has been practicing trade-mark law for the last 13 years both in Canada and Europe. She has a special interest in the effect that the Internet has had on the use and protection of trade-marks and copyrights.

Disclaimer: The contents of this Blog post, and associated opinions  are those of its Author, and do not necessarily represent the opinions of WebFuel, or its employees.

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