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TRADE-MARKS - Passing off and unfair competition - Confusion as to wares and services - Business trade name - Procedure - Appeals

Thursday, February 23, 2017 @ 10:55 AM  

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Appeal by the plaintiff, Vancouver Community College, from dismissal of its passing off and official mark infringement action against the defendant, Vancouver Career College. The plaintiff was a public post-secondary education and the defendant was a private vocational institution. Their educational programs overlapped. The plaintiff's claim sought damages with declaratory and injunctive relief arising from alleged actions by the defendant to direct online search traffic to its website. In 2009, the defendant adopted VCCollege as a new trade-mark and launched a new website at The plaintiff contended that the phrases "VCC" and "Vancouver Community College" were long associated with it as a public post-secondary institution. The plaintiff alleged the defendant's online presence and bidding on search engine keywords that included its name was a form of internet poaching that constituted passing off and trade-mark infringement. The trial judge dismissed the action. The plaintiff appealed.

HELD: Appeal allowed. The trial judge erred in fact and law with respect to passing off and official marks. The law of passing off did not require the plaintiff to establish continuous and unvarying use in an advertising sense. Instead, the test involved consideration of recognition by the relevant marketplace of whether the indicia designated the plaintiff. The judge failed to have regard to a substantial body of evidence as to the goodwill, identification, and association of VCC in the public mind with the plaintiff by misstating the year the plaintiff established its domain name, and by erroneously finding abandonment between 1990 and 2013. In addition, the trial judge erred in assessing confusion by delaying consideration to an online searcher's arrival at a webpage rather than at the time the search results appeared. Confusion was fully established by proof the defendant's domain name was equally descriptive of the plaintiff and contained the acronym long associated with it. The interference with the plaintiff's goodwill was sufficient to establish damage. The plaintiff was entitled to a permanent injunction in respect of its passing off claim. In addition, the claim based on official mark infringement required return for fresh determination, as the trial judge's reasons were silent on the timing, scale and nature of prior use. The order below was set aside in its entirety.

R. v. Johansson, [2017] B.C.J. No. 119, British Columbia Court of Appeal, M.E. Saunders, D.M. Smith and J.E.D. Savage JJ.A., January 26, 2017. Digest No. 3639-009