Use of Competitor’s Trademark as a Keyword Not Infringement
Is use of a competitor’s trademark as a keyword or metatag[1] for search engine optimization (SEO)[2] infringement? Does the trademark owner have any recourse? The Courts have found that use of a competitor’s trademark does not constitute infringement or passing off. In Canada, recent decisions have found such use not to be actionable under trademark law as online shoppers are unlikely to confuse brands based on search engine results alone. Whether the use of a competitor’s metadata constitutes copyright infringement would be fact dependent and may differ in each case.
The Courts have provided decisions in two recent cases, Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411travelbuys.ca), 2015 FC 19 (currently under appeal) and Vancouver Community College v. Vancouver Career College (Burnaby) Inc., 2015 BCSC 1470.[3]
Red Label Vacations
Red Label Vacations concerns two competing web based travel agencies. The Plaintiff Red Label Vacations owns three registered trademarks: “redtag.ca” (TMA657,520), “redtag.ca vacations” (TMA657,750), and “Shop. Compare. Payless!! Guaranteed” (TMA675,219). The Defendant 411 Travel Buys set up a competing website that contained within the description and keyword metatags two of the Plaintiff’s trademarks: “red tag vacations” and “shop, compare & payless”. The allegedly infringing content was not visible to potential clients visiting the Defendant’s website as the content was located only within the webpage’s metadata.
The Court found that use of the Red Label trademarks by the Defendant did not constitute trademark infringement under section 20 of the Trademarks Act[4], or passing off and depreciation of goodwill, contrary to section 7(b), 7(c) or 22 of the Trademarks Act.
The judge reasoned that the use of metatags for search engine optimization provided shoppers with a choice of independent and distinct results that he or she could choose at will, rather than directing a prospect to a particular competitor. Even if the prospect was searching for a particular website connected with the trademark or trade name, once that prospect reaches the website there must be confusion as to the source of the entity or person providing the services or goods in order for the claim to stand. Thus, as metatags are not clearly visible on any website use of a competitor’s trademark or trade name in the metadata does not on its own constitute trademark infringement on the ground of likelihood of confusion. The prospect in the above scenario is still free to choose and purchase goods and or services from the website she initially was searching for.
As there was no use of any of the plaintiff’s marks, trademarks, or trade names on the Defendant’s visible website there was no likelihood of deception or confusion as to the source of the goods and or services provided by the Defendant’s website, and prospects were free to redirect their search to the Plaintiff’s website.
Vancouver Community College
In Vancouver Community College the Supreme Court of British Columbia considered whether the use of Vancouver Community College’s (the “Plaintiff”) trademarks “VCC” (Application 0910482) and “Vancouver Community College” (Application 0916687) by the defendant Vancouver Career College (the “Defendant”) in keyword advertising including Google AdWords[5], constituted trademark infringement on the grounds of passing off.
In a similar result to Red Label Vacations the Court found use of a competitor’s trademark in keyword advertising was not trademark infringement for three reasons:
- Prospects retain the ability to choose which website to visit from the results found through a search engine;
- The visible content of the Defendant’s website did not contain any of the Plaintiff’s trademarks or trade names;
- The keywords and AdWords are not visible to prospects.
The Court acknowledged that confusion is assessed as a matter of “first impression”, and held that a “first impression” in the context of keyword advertising does not arise until a prospect has actually accessed the website displayed in the search results. There, the prospect must first access the displayed website before the issue of confusion can be made out.
Comment
The case law protects competitors from being found liable of trademark infringement for use of a competitor’s trademark within keyword advertising or the metadata of a website to obtain search engine optimization so long as that competitor refrains from displaying any confusing material on the website.
[1] Meta elements provide information about the web page, which can be used by search engines to help categorize the page correctly.
[2] Search engine optimization (SEO) is the process of affecting the visibility of a website or a web page in a search engine’s unpaid results – often referred to as “natural,” “organic,” or “earned” results.
[3] Full decisions to Red Label Vacations and Vancouver Community College can be found here and here respectfully.
[4] The Trademarks Act can be viewed here.
[5] Google AdWords is an online advertising service that enables advertisers to compete to display brief advertising copy to web users, based in part on keywords, predefined by the advertisers, that might link the copy to the content of web pages shown to users.
Daniel Nashid
Barrister & Solicitor
416.892.2509
[email protected]