Is It Legal To Use Competitors' Trademarks As Part Of SEO Strategies? Canadian Court Finds Use Of A Competitor's Trademark As A Keyword Is Not Actionable

In Canada, there have been only a few Canadian cases dealing with use of competitors' trademarks in search engine optimization (SEO), for example as keywords and metatags. The recent trend is that such use is not actionable under trademark law on the basis that consumers are unlikely to be confused by search engine results alone, and also to reject "initial interest" confusion type arguments. The issue, however, is not settled at Canadian law.

In Vancouver Community College v. Vancouver Career College (Burnaby) Inc., 2015 BCSC 1470, the Supreme Court of British Columbia considered whether the defendant's use of the plaintiff's trademarks VCC and VANCOUVER COMMUNITY COLLEGE in keyword advertising, including Google AdWords, constituted passing off. The Court found it was not, based on users retaining the ability to choose from the results returned by a search, the content of the defendant's website not containing any "confusing material", and on the keywords not being visible to users. The Court found that search results alone are not likely to lead to confusion since a user controls what terms are searched and can still pick and choose between results, so devices that manipulate search results (such as keywords) are unlikely to cause confusion. Acknowledging that confusion is assessed as a matter of "first impression", the Court held that a "first impression" in the context of keywords or AdWords does not arise until a user has actually accessed the website located by the search. Therefore, a user must actually go to a website before the issue of confusion can arise. The Court also found that that since metatags are not displayed on screen, they have "no potential cause for confusion" and are "irrelevant". In this case, the defendant's website itself did not display the plaintiff's marks, so there was no risk of confusion.

This follows the recent Federal Court decision in Red Label Vacations Inc. v. 411 Travel buys Limited, 2015 FC 19 (currently under appeal) where the Court found use of other's trademarks in metatags not to be passing off or trademark infringement. The Court found that since the metatags were not visible to the searcher, there was no potential for a misrepresentation "to the public". The Court also commented that whether or not there was "initial interest" confusion was immaterial, since that theory of trademark infringement or dilution had not yet gained foothold in Canadian law. Further, since all metatags do is...