• Decision on Passing Off and the Use of Internet Keywords is Reversed on Appeal
  • March 22, 2017 | Authors: Jillian Brenner; Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Vancouver Community College v. Vancouver Career College (Burnaby) Inc., 2017 BCCA 41

    The B.C. Court of Appeal has overturned a lower court decision that had dismissed a trademark passing off claim against the Defendant Vancouver Career College brought by the Plaintiff Vancouver Community College. (2015 BCSC 1470, previously summarized here)

    The Plaintiff alleged passing off its VCC mark.

    The two schools offer programs that overlap to a degree. It was alleged that in 2009 the Defendant used keywords to direct traffic to its website VCCollege[.ca], including VCC, Vancouver Community College, and other educational institutions.

    The Court of Appeal found that the trial judge had erred in appreciating the evidence of goodwill, finding that the Plaintiff had goodwill in the VCC mark, which was recognized in the relevant market-place as a public provider of post-secondary education. It was further held that confusion is to be assessed while the user is still on the internet, so it does not matter whether the user's misconceptions would be set straight later. Damage was inferred from the unauthorized use of goodwill, and thus the passing off claim was found to succeed.

    The Plaintiff also has two official marks, VCC and VANCOUVER COMMUNITY COLLEGE. The Court of Appeal held it could not perform an appellate review of the order dismissing the claim of breach of official marks. This was remitted to the trial court for determination.

    The issue of damages for the passing off claim was also remitted.