The Top 10 Trademark Cases Of 2017

McMillan LLP's Intellectual Property group welcomes readers into 2018. Our gift is a “top 10 list” of trademark cases from Canadian case law from 2017.

1. Google v. Equustek Solutions, 2017 SCC 34

   The first decision in this list only tangentially relates to trademarks, but its ramifications are so significant that it merits inclusion anyway.

   Datalink was alleged to have rebranded one of Equustek's products and passed it off as its own. An injunction was granted in favour of Equustek. Datalink abandoned the proceedings and left the jurisdiction without complying with Court orders.

   The issue before the Supreme Court of Canada was whether Equustek was entitled to an interlocutory injunction to enjoin Google from displaying any part of Datalink's websites on any of its search results worldwide. The order was originally granted by the Supreme Court of British Columbia. The British Columbia Court of Appeal upheld the order.

   On appeal, Google raised arguments that: a) non-parties cannot be the subject of an interlocutory injunctions; and b) an interlocutory order could not be made with extraterritorial effect.

   The Supreme Court of Canada rejected both arguments. It held that the website listings allowed harm to come to Equustek. The injunction was the only effective way to mitigate the harm to Equustek.

   Now the question is whether other Courts will enforce the injunction. A U.S. district Court judge in California quashed an order enforcing the injunction there in November 2017.1

2. Vancouver Community College v. Vancouver Career College, 2017 BCCA 41

   This British Columbia Court of Appeal decision considered whether the use of keywords in online advertising constitutes passing off.

   The decision involved two post-secondary education institutions: the plaintiff, Vancouver Community College (a public institution) and the defendant Vancouver Career College (a private institution). The plaintiff, Vancouver Community College, asserted common law trademark rights in “VCC”. The defendant, Vancouver Career College, used the domain name “VCCollege.com” for its website and purchased “VCC” as a keyword for the Google and Yahoo search engines.

   Users who searched for “VCC” received a sponsored link to the defendant's website which displayed the domain name VCCollege.com. The defendant's website did not display “VCC”. A user who clicked through to the defendant's site would likely realize that the website was that of the defendant and not the plaintiff. Nevertheless, the plaintiff alleged, inter alia, passing off of its common law trademark VCC and filed evidence of confusion by prospective students.

   The Court of Appeal held that the proper time to assess confusion was when the “first impression” with the confusing mark was made, which was at the time the user encountered it in the sponsored link. Confusion was not measured at the time a user clicked through to the landing page from the link. The Appellate Court considered this to be consistent with past decisions of the Supreme Court of Canada2, in that confusion should be assessed on the moment of “first impression”. As the misrepresentation occurred at the time that the user encountered the sponsored link, and there was no other content shown at that moment which distinguished the defendant's college from the college of the plaintiff, the passing off claim was successful.

   Both levels of court agreed that the mere purchasing of a competitor's trademark as a keyword for advertising was not sufficient to constitute passing off as that step alone does not deliver a message to a consumer.

3. Venngo Inc. v. Concierge Connection Inc., 2017 FCA 96

   In this case, the Federal Court of Appeal underscored the limitations in adopting generic or descriptive terms in one's trademark. The plaintiff, Venngo, was the registered owner of a family of marks including “WORKPERKS” “MEMBERPERKS” and “ADPERKS”. Around the same time, the defendant, CCI, had registered “PERKOPOLIS”. The marks were registered to be used in association with discount benefits and incentive programs to Canadian organizations for their employees.

   The Federal Court denied Venngo's claim that CCI had engaged in passing off, appropriation, confusion and depreciation of goodwill, largely because it found there was no confusion between the marks as both the plaintiff and the defendant had registered trademarks incorporating the generic termperk...