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Sunday, 12 February 2017 11:24
Note: This is Part 2 of my discussion of the B.C. Court of Appeal’s decision in Vancouver Community College v. Vancouver Career College (Burnaby) Inc. Part 1 can be found here. The initial post considered issues around official marks as well as the first element of the tort of passing off in which the plaintiff must establish that they have acquired goodwill/reputation in a mark. This post considers the remaining two elements: the likelihood of confusion and the likelihood of damage.
As noted in my earlier post, the B.C. Court of Appeal found that the appellant, the Vancouver Community College had considerable goodwill in the mark VCC. I was critical of this decision as it seems to conflate the official marks protection obtained by the Community College with the acronym as a trademark for the purposes of the passing off analysis. The Court of Appeal’s finding regarding the scope of the Community College’s rights in the mark VCC influences its reasoning with respect to the issue of confusion, which is the second element in the tort of passing off.
The alleged passing off in this case arose out of new marketing strategies adopted by the respondent Vancouver Career College in 2009. At that point it adopted VCCollege as a trademark and registered VCCollege.ca as a domain name for its website. The appellant Vancouver Community College objected to the use by the respondent of the acronym VCC in its “internet presence”. It also objected to the Career College’s bidding on keywords that included “VCC” and “Vancouver Community College.” It argued that the result of these activities was passing off. Because the official marks arguments had been separated from the passing off claim, the Court of Appeal considered only the issue of passing off with respect to the use of “VCC”.
The Court of Appeal summarized the essence of keyword advertising for the purposes of this case in these terms: “a bid on a keyword will make it more likely that the bidder’s advertisement with its domain name, linking to its website, will appear on the first search page revealed to the searcher.” (at para 19). The Court acknowledged that bidding on keywords in order to drive traffic to one’s website is legitimate, so long as it stays within the bounds of what is permissible. In the passing off context, the issue is whether the use of the keywords results in consumer confusion. When presented with a link in an ad on a search results page, the searcher has the option of following the link to the website to which it resolves. American case law on keyword advertising has focussed on the issue of confusion, rather than on the simple use of protected words as keywords. These cases have considered how the resulting ads are displayed on the page (e.g., whether they are in a location or font that distinguishes them from search results) and whether their content or presentation is misleading. The Court of Appeal does not address this case law or these issues in its confusion analysis.
The Court of Appeal found that “”VCC” was the keyword that generated the most “clicks” to the respondent’s website, such that the respondent’s advertisements appeared almost always in searches for VCC (over 97% of the time), and the respondent’s text advertisements always displayed VCCollege.ca in the web address line of the advertisement.” (at para 22) However, as I noted in Part 1 of my discussion of this case, VCC is an acronym shared by both the respondent and the appellant. As an acronym, it is a weak mark. The Community College led evidence of confusion among some students searching for the Community College. The trial judge had given this evidence relatively little weight, particularly in a context in which VCC was also the acronym for the respondent’s name. He noted that the respondent’s web site made it evident that it was the site for the Career College.
The Court of Appeal was critical of the trial judge for assessing confusion at the moment at which a student searching for VCC arrived at the landing page for the Career College – as opposed to when the student received the results of a browser search using VCC as a key word. According to the Court of Appeal, the authorities support a finding that first impressions are what matters in the confusion analysis. The Court of Appeal relied heavily upon Masterpiece Inc. v. Alavida Lifestyles Inc., a Supreme Court of Canada (SCC) decision involving an assessment of confusion under the Trade-marks Act. In that case, the SCC appeared to confirm that so-called “initial interest confusion” was actionable. In the internet context, initial interest confusion arises where a party’s trademarks have been used in such a way (in domain names or metatags, for example) that a person searching for the products or services of one company ends up at the website of another by mistake. In the early days of the internet, courts were more likely to find initial interest confusion to be actionable per se; more recently, courts in the United States have given searchers more credit for being able to find their way around the internet, and have looked for other evidence of uses of the marks that contribute to confusion. A searcher who quickly realizes they have made their way to a website other than the one for which they were searching is not confused. However, some have still maintained that initial interest confusion should be actionable because even if the consumer is not confused, they might still decide, once presented with similar goods or services from an alternate source, that they are happy enough to acquire them from that source rather than the one for which they were originally searching. In such circumstances, the use by a defendant of a competitor’s trademarks to draw business away from them is said to cause harm that should be actionable. In Masterpiece, the SCC stated that the diversion of consumers “diminishes the value of the goodwill associated with the trademark and business the consumer initially thought he or she was encountering in seeing the trademark. Leading consumers astray in this way is one of the evils that trademark law seeks to remedy.” (at para 73) While this has been taken by some to address initial interest confusion on the internet, it should be noted that Masterpiece did not deal with either the internet context or with passing off.
Whichever view one takes on initial interest confusion, the problem in this case is that the appellant used the appropriate acronym for its name as a key word and its domain name was one in which it would doubtless be found to have a ‘legitimate interest’ under domain name dispute resolution policies. According to the Court of Appeal, the confusion required for a finding of passing off “is fully established by proof that the respondent’s domain name is equally descriptive of the appellant and contains the same acronym long associated to it.” (at para 71) This approach gives excessive scope to what should be – in the context of passing off – relatively weak rights in VCC. The acronym is obvious and appropriate for both the Vancouver Community College and the Vancouver Career College. While the Community College may have acquired goodwill in the acronym, its highly descriptive nature necessarily limits the scope of the goodwill and does not, without more, allow it to preclude its use by the Career College, itself in business for 20 years. Weak marks deserve limited protection in passing off. Having tolerated the presence of the Vancouver Career College since 1997, the action in passing off with respect to its use of its acronym online seems misdirected.
The Court of Appeal found that the appellant had suffered damage to its goodwill. This flowed in part from “the lack of power to control the use of the marks to which the goodwill attached by unauthorized users” (at para 75). To characterize the Vancouver Career College as an “unauthorized user” of the appropriate acronym for its own name seems problematic. Essentially, the Court of Appeal would carve out an absolute monopoly for the appellant in VCC for use in association with education services notwithstanding the fact that the acronym is shared by two parties with names that are highly descriptive of similar services and that share the same acronym. In such circumstances, it is appropriate to require something more in the respondent’s conduct on which to base a finding of passing off.
Of course, the appellant is not without its nuclear option – the VCC official mark, although it is clear that there are other difficulties with the official marks claim. As noted in Part 1, official marks give the kind of absolute protection for entirely descriptive marks that the appellant is clearly seeking. While the official mark issues in this case have yet to be resolved, it is unfortunate that the passing off analysis seems to have been carried out under the shadow of the official mark. The result is an analysis peculiar to the circumstances of this case that would be dangerous to extend to other cases of passing off.
Published in Trademarks
Wednesday, 08 February 2017 08:38
Note: As I started to write this post, which comments on the recent B.C. Court of Appeal decision in Vancouver Community College v. Vancouver Career College (Burnaby) Inc., I realized that it was going to be far too long for a single post. I have decided to divide the issues in two. This first post will focus on the official mark question and the issue of goodwill (the first element in a passing off action). A second post will later deal with issues of confusion and damages in passing off.
The BC Court of Appeal has recently ruled in a case that involves allegations of online trademark infringement. The parties raised issues around the purchase of keyword advertising, the use of trademarks in metatags and domain names, and the infringement of official marks. However, the Court’s decision ultimately addresses only a subset of these issues, and refers the question of official marks back to the trial court because of deficiencies in the factual record. The Court of Appeal’s decision focuses on passing off. In doing so, it touches on some questions unique to the internet context.
The dispute involves two educational institutions with very similar names and a shared acronym. The appellant Vancouver Community College is a post-secondary institution with official designation under B.C.’s College and Institute Act. It began its existence as the Vancouver City College in 1964, changing its name to Vancouver Community College in 1974. The respondent is a private career college called Vancouver Career College. It has operated under that name since 1997. Over time it has expanded its operations considerably. It is regulated under the province’s Private Training Act. Not only do both institutions share the identical acronym VCC, the only difference in their full names is with respect to the middle of the three words used in each. Both names are highly descriptive, and, as such, are inherently weak trademarks.
Because of its links to government, Vancouver Community College has taken advantage of the official marks provisions of the Trade-marks Act. These provisions allow a “public authority” to circumvent the usual requirements for trademark registration in order to protect a name or mark. The protection available for official marks is more extensive and more enduring than trademark protection, and the scheme is controversial. While a business would not be allowed to register a trademark that is entirely descriptive without being able to demonstrate that it had acquired secondary meaning, the official marks regime is indiscriminate when it comes to marks. The Vancouver Community College claimed ‘VCC’ as an official mark in January 1999 and also holds the official mark ‘Vancouver Community College’ since 2005. Both dates are later than the adoption by Vancouver Career College of its name – and quite possibly its adoption of the acronym VCC. Case law supports the view that the rather generous protection for official marks is only prospective; uses of the same or highly similar marks that predate the publication of the official marks are permitted to continue, although their use cannot expand to new products or services. The trial judge had found that the prior use of its own name and acronym by the Vancouver Career College insulated it from claims that it violated the Vancouver Community College’s official marks. The Court of Appeal ruled that the factual record was not sufficient to decide the issue. They sought additional facts as to the extent and nature of the use of each of the marks, whether the use by the respondent of the acronym had so expanded as to negate the defence of prior use, as well as facts relating to whether prior use had been abandoned by the time the official marks were published. In addition, because the Court of Appeal had concluded that the Career College’s prior use was tortious, it speculated as to whether the tortious adoption of a mark could count as prior use. It is an interesting question, but as I will discuss below, the Court of Appeal’s conclusions on the tort of passing off are not entirely satisfactory. At this point, it should be noted that there is some circularity around the issue of passing off and official marks. The Community College’s ability to obtain an official mark appears to bolster its claim to goodwill/reputation in the Court of Appeal’s reasoning. Yet official marks receive no scrutiny by the Registrar; they can be descriptive, generic, or confusing with existing marks – there really are few boundaries. As a result, the two analyses must be kept distinct. There may be a violation of rights in an official mark without there being a sufficient factual basis to support a finding of passing off. The threshold for the first is much lower than the second since all that needs to be shown is the existence of an official mark. For passing off it is necessary to establish sufficient goodwill/reputation – in other words, a plaintiff has to show that a mark distinguishes it as the source of particular goods or services.
A plaintiff in a passing off case must establish three elements: goodwill, a likelihood of confusion and a likelihood of damage. The first element requires the plaintiff to prove that they have acquired goodwill in a particular mark (whether it be a name, design, acronym, or some other indicium). In this case, the mark at issue is VCC which is an acronym for both Vancouver Community College and for Vancouver Career College. The law of passing off is not particularly generous to those who lack imagination or forethought in coming up with names. Names that are entirely descriptive make poor trademarks. The law is reluctant to provide a kind of monopoly over terms that simply describe a product or service. Both college names share “Vancouver” and “College” – both institutions are based in Vancouver and are of a kind typically referred to as “colleges”. The middle word is different but starts with the same letter, leading to two identical acronyms. As a result, the Community College’s acronym, on the face of it, is very weak. It deserves almost no protection from the law of passing off unless it is able to show that it has acquired such a level of distinctiveness through use by the Community College, that the public now associates VCC with its particular services. Further, even if it succeeds in showing acquired goodwill, it is not necessarily entitled to have the defendant’s use of its mark enjoined. The defendant might still be capable of using the same descriptive mark so long as, in doing so, it takes steps to ensure there is no confusion.
The trial judge had concluded that the Vancouver Community College did not have goodwill in the VCC mark. This was in part based on his finding that ‘VCC’ had been little used by the Community College between 1990 and 2013. The trial judge referred to the added level of distinctiveness required for an entirely descriptive mark as “secondary meaning”, and he was correct to do so. Nevertheless, the Court of Appeal took issue with this approach. It opined that because what was at issue was the name of the college, it was not necessary to establish secondary meaning. Instead, it framed the question as whether the acronym VCC “carried sufficient distinctiveness in its primary sense to be recognized as designating the appellant and the educational services it provides.” (at para 40) This argument seems to either miss the point that the name of the college is entirely descriptive as well, or it conflates the name of the college with its status as a public institution. Unlike the B.C. University Act, which limits use of the term “university” to only specified institutions, the College and Institute Act gives no special protection to the term “college”. The Court of Appeal emphasized the public nature of the Community College and found that: “Its public character establishes a level of public awareness of the role it plays in the community” (at para 47). As a public institution, the Community College has access to official marks protection. Yet the huge boondoggle that is official marks protection should only count once – in the context of an official marks analysis – and should not be used to shape a passing off analysis that requires that marks be shown to be sufficiently distinctive to have acquired goodwill or reputation as a condition of their protection.
“Vancouver Community College” effectively describes a community college located in Vancouver. It is entirely descriptive. The acronym VCC similarly lacks inherent distinctiveness. In fact, it could stand for Vancouver Civic Centre, Vancouver Chamber of Commerce, Vancouver City Centre, or, in this case Vancouver Career College – to give just a few examples. The Court of Appeal’s decision sets a low threshold for goodwill/reputation in the face of a rather common acronym for a highly descriptive name. While it found sufficient evidence of an association by the public between VCC and the Community College, noting that the acronym was used in media reports, brochures, calendars and other materials, and it was the name of the SkyTrain station near the appellant’s campus. However, the extent of this association (or whether there is also a public association between VCC and the Career College) is not at all clear from the facts.
It may ultimately be that the Community College has acquired sufficient goodwill in ‘VCC’ to support an action in passing off. My difficulty with the resolution of this issue is with the road taken to get there. The Court of Appeal never acknowledged the weakness of either Vancouver Community College or VCC as marks in the context of the passing off analysis. While it is still possible to find that such a weak mark as VCC had acquired sufficient goodwill to provide a basis for an action in passing off, the inherent descriptiveness of the mark is relevant to the rest of the passing off analysis. For example, courts have found that minor differences in presentation of goods or services, or the use of disclaimers may sufficiently reduce any possibility of confusion between similar descriptive marks. The interweaving of the official marks issues with the passing off issues is perhaps to blame here. The Court of Appeal seems to be giving the Community College credit for being a public institution, and its burden of establishing goodwill seems to be lightened as a result. This approach ignores the very special (i.e., ‘anomalous ‘ or ‘problematic’) character of official marks.
Note: Part 2 of this comment is now available here.
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