Supreme Court Denies Leave to Appeal in ICBC v. Stainton Ventures Ltd.
February 23, 2015
By Adam Bobker and Nathan Haldane
On February 5th, the Supreme Court of Canada announced that it would not grant leave to appeal to the Insurance Corporation of British Columbia from the British Columbia Court of Appeal (BCCA) in the trademark case, Insurance Corporation of British Columbia v. Stainton Ventures Ltd., 2014 BCCA 296. The Court of Appeal upheld the British Columbia Supreme Court’s earlier decision, refusing to grant an injunction or an order requiring the transfer of domain names from Stainton to ICBC.
ICBC is a provincial crown corporation established to provide universal automobile insurance to British Columbia motorists. At issue was whether Stainton infringed the official marks of ICBC by operating the commercial website icbcadvice.ca and icbcadvice.com. In addition to the websites, ICBC sought an order requiring Stainton to rename its ICBC Claim Guide which the trial judge had granted. Stainton subsequently renamed the guide the ICBCadvice Claim Guide and the issue was not cross-appealed.
The BCCA reviewed the jurisprudence regarding confusion with official marks and found that the proper test for assessing confusion was whether ICBCadvice.com “so nearly resembles as to be likely mistaken for” ICBC. ICBC argued that the relevant person would be likely to mistake ICBCadvice for one of the ICBC Official Marks as the dominant portion of both marks was ICBC and that the addition of the descriptive word “advice” did nothing to distinguish ICBCadvice from ICBC.
The Court of Appeal did not accept this argument, finding that it did not give the “relevant consumer” credit for even the most basic understanding of the function of a domain name. The Court found that the relevant consumer would understand that a domain name that contains the name of a business does not necessarily mean the domain is affiliated with the business and that they would have to go to the website itself in order to determine whether there is an affiliation. The average Internet user understands that domain names are often descriptive of the content of the website and do not always indicate affiliation, source or endorsement. Therefore, it is unlikely the average consumer would be confused into think ICBCadvice is affiliated with ICBC.
In regards to the passing-off claim also brought by ICBC, the Court declined to analyze the issue in detail, as their reasons were the same as for the infringement claim, discussed above.
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