Mere use of official mark in domain name insufficient to establish infringement

Canada

Section 9 of the Trademarks Act confers upon public authorities the ability to adopt and use any badge, crest, emblem or mark as an “official mark”. Once the trademarks registrar gives public notice of the adoption and use of an official mark, no person other than the public authority may adopt any mark consisting of, or so nearly resembling as to be likely to be mistaken for, the official mark.  The holder of an official mark is granted broader rights than those afforded to a regular trademark. 

In Insurance Corporation of British Columbia v Stainton Ventures Ltd (2014 BCCA 296), the British Columbia Court of Appeal has clarified the limits of an official mark under the Trademarks Act - namely that the mere use of an official mark in a domain name is not sufficient to establish infringement of the official mark.

In 1989 the Insurance Corporation of British Columbia, a provincial Crown corporation, adopted the acronym 'ICBC' as its official mark, along with 23 other official marks incorporating 'ICBC'. 

In 2005 Stainton Ventures launched the website 'fighticbc.com'. The website was subsequently renamed to 'ICBCadvice.com'. Stainton also owns the domain names 'icbcadvice.ca' and 'icbcadvice.com'. Stainton operates the website as a marketing tool for a plaintiff-side personal injury law firm. It offers advice about dealing with ICBC and also sells an ICBC Claim Guide booklet.

In 2009 ICBC commenced an action against Stainton, seeking to gain control of the website and the related domain names and to restrain Stainton from distributing the ICBC Claim Guide.  Following a summary trial, Mr Justice Grauer refused to grant ICBC an injunction or to require Stainton to transfer the domain names to ICBC. ICBC appealed on the basis that the trial judge failed to apply the correct test for determining breaches of Sections 9 and 11 of the Trademarks Act and with respect to passing off.

On appeal, ICBC argued that the website and related domains were a breach of Section 9 because they so nearly resembled the official marks so as to likely be mistaken for it. ICBC further argued that consumers would likely be led to believe, as a matter of first impression, that ICBC itself was offering advice on the website. In particular, ICBC argued that it was not necessary to apply the “source confusion” test typically applicable to regular trademarks to official marks.

The Court of Appeal rejected the notion that the “source confusion” test was not applicable to official marks, noting that ICBC’s submission that the relevant consumer would be confused suggested that ICBC appreciated that one of the objectives of the official marks provisions was to protect the public by prohibiting the use of a confusing mark.

The Court of Appeal, recognising that internet users have become quite sophisticated and adept at navigating websites, held that ICBC’s argument “fails to give the “relevant consumer” (ie, an internet user), credit for even the most basic understanding of the function of a domain name”. The court found that the average internet user would not likely be confused by the domain name, as they would appreciate that domain names are often merely descriptive of the website, and that they would have to look at the website to determine who owned the website. The court further held that a person who viewed the domain name would not, without more, mistakenly believe that the advice on the website was provided or endorsed by ICBC. 

The Court of Appeal rejected ICBC’s passing-off arguments for the same reasons given in respect of the official marks. The appeal was dismissed.

Samantha Chang, Fasken Martineau DuMoulin LLP, Vancouver

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