The Attributes of an Internet User
By: John McKeown
Two recent decisions have considered the attributes of an Internet user in the context of a claim for trademark infringement. The ICBC
case was decided in the British Columbia and the Interflora v. Marks & Spencer
case in the United Kingdom.
Insurance Corporation of British Columbia v. Stainton Ventures Ltd.
Insurance Corporation of British Columbia ("ICBC") is a provincial Crown corporation, established by statute in 1973 to provide universal automobile insurance to British Columbia motorists. It is the predominant automobile insurer in British Columbia as the owners of vehicles registered in the province must obtain basic insurance coverage from it.
ICBC is a "public authority" under the Trademarks Act
and has adopted a number of "official marks", including the acronym "ICBC". In total, it has adopted 23 official marks that incorporate "ICBC", including some that have a design component.
ICBCadvice.com is a commercial website operated by Stainton Ventures Ltd. ("Stainton ventures") and used as a marketing tool by a lawyer who acts for persons involved in claims against ICBC. It also owns the internet domain names icbcadvice.ca and icbcadvice.com, both of which resolve to the ICBCadvice.com website. The site offers free advice on dealing with ICBC and contains links to "Recommended Service Providers" under the followings headings: Plaintiff Lawyers; Doctors; Chiropractors; Physiotherapists; Massage Therapy; and MRI Clinics. At times, it has also contained a link to ICBC's website.
In 2009, ICBC commenced an action against Stainton Ventures in the Supreme Court of British Columbia seeking a declaration that Stainton Ventures was using its official mark without authorization, and a claim for passing off, including an order requiring the transfer of the domain names noted above to it. The purpose of bringing the action was to gain control of the ICBCadvice.com website and the related domain names.
The action proceeded to a summary trial. ICBC's evidence included an affidavit which attached as exhibits screenshots of the ICBCadvice.com homepage on various days in 2007, 2008, and 2011. It was readily apparent from those pages that the website was not affiliated with ICBC. This was made clear through the use of a number of written disclaimers. Stainton Venture's evidence included an affidavit that showed approximately fifteen other websites were operated in association with domain names that included as a first component the letters ICBC.
Official marks seem to be unique to Canada. Section 9 of the Trademarks Act
provides that no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, any mark adopted and used by any public authority, in Canada as an official mark for wares or services. This protection is only available if the Registrar has, at the request of the public authority, given public notice of the adoption and use of the mark.
The determination whether a mark has been adopted contrary to section 9 is not the same as that applied in determining if rights associated with a regular trademark have been infringed. If the mark in use by a person so nearly resembles the official mark as to be mistaken for it, the use of that mark may be prohibited even if there is no likelihood of confusion. The test is restricted to the resemblance between the official mark and the adopted mark.
The Trial Decision
The judge said that the onus of establishing mistake or confusion based on resemblance was on ICBC but the evidence presented by ICBC did not discharge that onus. ICBC could have presented direct evidence from those alleged to have been led into mistake or confusion, but they did not. Further it was open to ICBC to present their own independent survey evidence and they chose not to do so.
The judge said that ICBC was a very large institution that is the subject of widespread commentary. The relevant public in British Columbia would likely conclude that ICBCadvice.com identified the subject matter of the site not who owned the site.
The claim for passing off was also dismissed. The judge said that he could not see how an average customer would be deceived into thinking that the website was associated with or approved by ICBC. There was no evidence of either actual confusion or the likelihood of confusion, and a likelihood of confusion was not so obvious that evidence was unnecessary.
ICBC appealed to the British Columbia Court of Appeal. In substance it was argued that the relevant consumer, having familiarity but imperfect recollection of the ICBC Official Marks, would likely be led to believe that ICBC itself was offering advice on its business, wares and services, when viewing such marks as a matter of first impression.
The court refused to accept the argument. They said it failed to give the "relevant consumer", i.e., an Internet user, credit for even the most basic understanding of the function of a domain name. Even though there was some resemblance between ICBCadvice.com and ICBC's family of marks, the average Internet user with an imperfect recollection of ICBC's marks would not likely be mistaken by the domain name. They would understand, for example, that 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. As well, they would understand that it is necessary to view a website to determine whose site it is. It was not correct to proceed on the assumption that average Internet users were completely devoid of intelligence or of normal powers of recollection or are uninformed as to what goes on around them.
Interflora Inc. v. Marks & Spencer Plc
Marks & Spencer displayed advertisements on the internet in response to the entry into the Google search engine by internet users of search terms or keywords consisting of or comprising the word "interflora" or minor variants of it. Interflora alleged that Marks & Spencer's activities infringed its trademarks.
Interflora operates the Interflora flower delivery network in the United Kingdom. The network comprises over 1,600 members who conduct business through over 1,800 florist shops. Customers may contact one of the network florists and place an order, either for delivery in the local area by that florist or for transmission to another network florist out of the area if the recipient is further afield. A substantial number of orders are also placed on the Internet using Interflora's website and by telephone using Interflora's central telephone numbers. Such orders are then fulfilled by the network florist closest to the place where the flowers are to be delivered. Interflora have always had a substantial reputation both in the United Kingdom and in other member states of the European Union for their flower delivery services.
Marks & Spencer
Marks & Spencer is one of the best known retailers in the United Kingdom. It trades under the brand names "Marks & Spencer" and" M&S" through over 700 stores and, since 1999, through the Marks & Spencer website.
M&S has sold flowers in its stores since 1986. It began operating a telephone flower delivery service in 1992 and has provided an on-line flower delivery service since 2000. It has never been part of the Interflora network. M&S advertises its flowers on the internet and one of the ways it does this is by use of the Google AdWords service.
The dispute between the parties has been to European Court of Justice and on at least three occasions to the U.K. Court of Appeal. All of the courts have agreed, based on the relevant Directives that the owner of a trademark is entitled to prevent a competitor from advertising - on the basis of a keyword which is identical to the trademark and which has been selected in the Google search engine by the competitor without the owner's consent - goods or services identical with those for which that mark is registered, where that use is liable to have an adverse effect on one of the functions of the trademark. Infringing use includes use that adversely affects the trademark's function of indicating origin where the advertising displayed on the basis of a keyword does not enable reasonably well-informed and reasonably observant Internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned economically linked to that owner or, on the contrary, originate from a third party.
The most recent decision of the U.K. Court of Appeal ordered a retrial so the case has not been finally determined.
The ICBC case is unfortunate in that it seems to have been brought without providing the necessary evidence to support the claims. The statements made by the judges who heard it are interesting.
In addition, while the legal tests are different in Canada and Europe it seems there is some commonality on the part of judges in both countries in giving an Internet user credit for having at least a most basic understanding of the function of a domain name or being reasonably well-informed and reasonably observant, as the case may be.
It remains to be seen whether this is what takes place in the real world.
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