Recently, the Insurance Corporation of British Columbia (“ICBC”) lost a trade-mark dispute against Stainton Ventures Ltd. (“Stainton”), which owns the website <ICBCadvice.com>. A full version of the decision is available here.
As a brief summary of the trial case, ICBC claimed that Stainton had violated ICBC’s trade-mark rights under sections 9 and 11 of the Trade-Marks Act. Sections 9 and 11 refer to “official” trade-marks, or trade-marks which are owned by government or public authorities (more discussion here), and aim to prevent others from using these official marks. The trial judge ruled against ICBC, an appeal by ICBC was unsuccessful, and a further appeal to the Supreme Court was also denied. The Court ruled against ICBC for many reasons including:
1. ICBC failed to discharge its onus to prove that there were mistakes or confusion resulting from users looking for the ICBC official website and mistakenly directed to Stainton’s website.
2. The mere use of the official mark as a portion of the website address was not enough to prove that Stainton was attempting to redirect traffic from users looking for the ICBC official website (i.e. there was no intention of passing off).
3. An average internet user would not associate Stainton’s website as owned by ICBC, but merely come to the impression that it had something to do with ICBC. Appeal judge: “a domain name which, in part, contains the name of a business or its acronym will not necessarily be affiliated with or endorsed by that business and may, instead, be the subject matter of the website or entirely unrelated to that business” (at 37).
4. Stainton was not using the official mark “as a trade-mark or otherwise”, and not holding itself out to be offering services under that name (i.e. no infringement).
5. The mere use of the official mark in the website address is not determinative in and of itself, and the website as a whole must be analyzed (at 37).
6. There is a plethora of other websites containing the official mark as an indirect reference such as <sueicbc.com>, <icbcinjurylawyers.ca>, or <ihateicbc.com>.
The Court (at 38) also suggested that the analysis of this case might also apply to non-official trade-marks, and I tend to agree. What should also be taken from this case is that while Stainton may not have successfully defended this case, it should not be taken as a blanket approval to use any trade-marks in website addresses or within the text of a website. The Court alludes to the fact that if the website does misdirect traffic or essentially offer a business or services which competes with the owner of the trade-mark, that website may be held to be infringing. One should also consider that although the mere use of the trade-mark in line with the Stainton case may not be infringing, one should still not use the trade-mark in such a way as to depreciate the goodwill of the registered owner, or defame, or slander the owner in any way.
For more information on trade-marks, contact me.