A lot of trademark law revolves around the geographic area where the trademark is known.  Centuries old legal tests (like passing off still used today) try and figure out whether two trademarks can co-exist in the same geographic area when one of the parties thinks the trademarks are confusing with one another.  This basic analysis has had to adapt to the online use of trademarks in the marketplace.

Below we’ll look at the impact of using trademarks in different ways in the online environment, in particular, in social media accounts/websites, as metatags, and in keyword advertising.

1. Social Media Accounts

Many businesses are quick to secure social media accounts once they’ve decided on a new brand for their product or service.  Social media services such as Twitter, Instagram, and Facebook, are accessible in most countries in the world.  That means that consumers, wherever they’re located, can at least be exposed to your product and service offerings.  The great advantage of giving your business an online presence is that it puts you in touch with a massive audience in multiple countries.  The legal effect however is that if you offer goods or services to anyone in a particular place, then you are using your trademark in that place.

Before adopting for use or using a trademark in a new marketplace it is worthwhile to conduct a search and find out whether the trademark may be adopted in the new marketplace without infringing on anyone else’s rights.  This level of due diligence is quite common for international expansion.

When registering a social media account, businesses rarely perform a search in all the countries where the account may be accessible.  In fact they rarely perform a search in the main country where they intend to use the account.  As a result, simply by registering the social media account, an argument can be made that they are using their trademark in any of the countries where the social media account is viewable.

Many companies including Canadian ones have been sued in the U.S. when they adopted a trademark and began using it on the internet or social media accounts.  U.S. companies with registered trademarks in the U.S. alleged trademark infringement because the accounts registered by Canadians were viewable in the U.S.  Whether a Canadian company in such a situation would be found guilty often depends on the facts surrounding their use of the trademark online.  Here are some key tips you should employ if you wish to bolster your case that your use of your trademark only applies to Canada:

  • Do not accept any orders from or conduct e-commerce with anyone from outside of Canada;
  • Note on your social media account and website that you only provide goods and services to those based in Canada;
  • State that your website and social media account are intended only for Canadian-based consumers and businesses;
  • List Canadian addresses and telephone numbers, and do not provide any information in the contact section for those people based outside of Canada, for example by providing international calling code numbers; and
  • Do no solicit for advertisers or money from companies doing no business in Canada.

2. Use of Metatags

A metatag is a word or phrase embedded into a website that is supposed to describe the webpage or its contents.  Search engines automatically make a record of what metatags are associated with a website.  As a result when someone uses a search engine to search for those terms that are the same or similar to those metatags, the search engine displays in the search results those websites having the same or similar metatags.  The owner of the website designates what metatags are associated with its website.  The metatags are not typically visible on a website. 

In a court case involving Red Label Vacations v. 411 Travel Buys Limited, 411 inserted into its metatags on its websites the trademarks of its competitor Red Label, namely, “redtag.ca”, “redtag.ca vacations”, and “Shop. Compare. Payless!! Guaranteed.”  As a result Red Label sued 411 for passing off and trademark infringement among other matters.  Passing off means where one party directs attention to its goods, services, or business in a way that causes confusion with another party’s goods, services, or business. 

In the decision, the judge ruled that the use of a competitor’s metatags in your own website does not constitute passing off because when looking at the search results the consumer is still free to choose and purchase the goods or services from the website he initially searched for.  That said, the court did leave open the door to finding that in some instances the use of a competitor’s trademarks in your website’s metatags would constitute infringement. 

In the U.S., some courts have held that the use of metatags as 411 did can cause “initial interest confusion”, where confusion is caused in the customer before actually purchasing a good or service; this confusion arises when the customer seeks a particular brand of goods or services, but is drawn or enticed to a competitor’s goods or services through the competitor’s use of the first company’s trade name or trademark.  The Canadian court said that this approach is not used in Canada when assessing confusion.

3. Purchase of Search Engine Keyword Advertising

For certain search engines such as Google, parties are able to purchase certain key words or phrases to associate with their website.  When someone searches for the keywords using the search engine from whom you bought the keywords, because you own those keywords, your website will be displayed in some prominent fashion, for example as a sponsored link, in the search results. 

In Vancouver Community College v. Vancouver Career College, Vancouver Community College claimed that it has gained a reputation in the words VCC.  Vancouver Career College purchased the acronym VCC from Google as keyword advertising with the effect that anytime someone searched for VCC on Google they would be shown the website link for Vancouver Career College.  Vancouver Community College sued the other party for passing off. 

The court found no passing off.  In its ruling, the court said passing off did not exist because the only thing the purchase of the keywords would cause is perhaps a more prominent place for the subject website in the search results.  When the search results are displayed, the searcher can choose whichever link he wants to follow.  The searcher is not compelled to go to any website irrespective of whether a party has purchased certain keywords.  The court could not conclude that the defendant caused confusion by taking advantage of keyword advertising via Google, even if those keywords contained a term associated with the defendant’s competitor.

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Ryan K. Smith is a Lawyer and Trademark Agent at Nakano Smith Law Group.  He is a corporate and commercial lawyer and also has expertise in all manner of intellectual property matters including trademarks, copyrights, domain names, and confidential information.  Ryan is the author of Intellectual Property in Commercial Transactions (Thomson Reuters).  You can reach Mr. Smith at (647) 806-6133 and [email protected]. This article is provided for information purposes only and is not legal advice and may not be relied upon.