Passing Off and Trade-Mark Violations on the Internet

When can you refer to someone else's trade name or trade-mark on a webpage and not run afoul of trade-mark infringement or passing off? The issues of passing off and trade-mark violations in relation to domain names and metatags on the Internet were recently considered in the decision of the British Columbia Supreme Court in British Columbia Automobile Assn. v. O.P.E.I.U., Local 378 (2001), 10 C.P.R. (4th) 423 (B.C.S.C.) ("BCAA v. O.P.E.I.U").

The plaintiffs in this case alleged trade-mark infringement and passing off with respect to three versions of the defendant's website. The court determined that there was a passing off in relation to the defendant's first website, but not the sec-ond and third websites, and that there was no depreciation of the plaintiff's goodwill relating to the three websites. The case is thus useful in set-ting out the required elements to support a claim of passing off and trade-mark infringement in the context of websites.

The legal issues in BCAA v. O.P.E.I.U.arose in the context of a labour dispute between the Canadian Automobile Association (the "CAA"), its regional association, the British Columbia Automobile Association (the "plaintiff"), and the trade union representing certain of the plaintiff's employees (the "Defendant").

The CAA and the plaintiff owned certain registered trade-marks and certification marks including BCAA, CAA, and the CAA logo. The plaintiff had the authority to use these trade-marks through a license agreement with the CAA.

In 1997, the BCAA developed a website which could be accessed under its domain names "bcaa.bc.ca," "bcaa.com," and "bcaa.org," which allowed people to apply for membership and subscribe for travel services to the BCAA.

In January 1999, certain of the plaintiff's employees, represented by the defendant, began a lawful strike against the plaintiff.

In March 1999, the defendant established a web-site, accessed under its domain names "bcaaon-strike.com" and "picketline.com." The defendant posted three different website designs on its web-site from March 1999 until the present. In their action, the plaintiff alleged passing off and depreciation of goodwill in relation to all three of the defendant's website designs.

Passing Off

The court noted in its decision that there are two broad categories of passing off; one in which par-ties are competitors engaged in a common field of activity, and the other in which a defendant creates a false impression that in some way its...