Trademarks, Domain Names, and Interferences

• Author: Robert G. Howell
• Profession: Professor. Faculty of Law University of Victoria British Columbia
• Pages: 130-176

130

CHA PTER 3

TR ADEMARKS,

DOMAIN NAMES, AND

INTER FER ENCES

A. INTRODUCTION

Trademarks are infringed routinely in the telecommunications media.

A prime context is in advertisements on radio and television. However,

this chapter is not concerned w ith tradem ark law in general, nor with

infringements that simply happen to occur in telecommunications

media. Rather, it is concerned with trademark issues th at have specif‌ic

application to telecommunications media. Invariably, these occur in

the medium of the Internet, including domain name exclusivity in

comparison with trademark protection.

Furthermore, trademark and, to some extent, copy right law, are

sometimes used in an attempt to accord relief for what is essentially an

interference with a website or digital electronic system. For example, in

Pro-C Ltd. v. Computer City Inc. trademark infr ingement was found but

was reversed on appeal, when a US entity with a trademark in the United

States substantial ly common with a trademark in Canada embarked on

a marketing drive that caused the Can adian entity to be overwhelmed

with electronic inqui ries to an e xtent that its s ystem failed.1 Certainly,

there was some user or customer confusion in a general sense, or the

Canadian business would not have been accessed, but this confusion

1 Pro-C Ltd. v. Computer City Inc. (200 0), 7 C.P.R. (4th) 193, [2000] O.J .No. 2823

(S.C.J.), rev’d (2001), 14 C.P.R. (4th) 441 (Ont. C.A.), leave to appeal to S.C.C.

refused, [2002] S.C.C.A. No. 5 [Pro-C Ltd.].

Trademarks, Doma in Names, and Interferences 131

was not of the nature applicable in trademark or passing off to draw

customers from one entity to the other. In effect the situation ref‌lected

a general tortious context of either intentional or negligent conduct by

the defendant that caused loss to the plaintiff. In this instance, the

conduct was not intentionally directed at the plaintiff’s business,2 so

any relief would ordinarily be of the tort of negligence if the requisite

duty and breach of the standard of care could be established, subject to

limitations of remoteness of damage.3

The attempt in Pro-C Ltd. to cast relief as tr ademark inf ringement

demonstrates the paucity of ava ilable legal re sponses for i nterference

with communications media. If the defendant’s conduct had been to

damage the plaint iff’s website and busi ness intentionally it might have

been characterized as a “denial of service” (DoS) activity. Might t his

then have i nvoked relief for tortious activities? Could t his be argued

equally with respect to other disruptions such as spamming or prolifer-

ation by “pop-up” notices that disrupt use? The intentional inf‌liction of

a virus to a system would certainly seem to dem and a response. Could

any or all of these situations constitute trespass? A related context is the

intentional placement of “worms” that might not only destroy media

and data but also surreptitiously usurp the use of an infected computer

for the purposes of t he usurper (for example, to transmit spam or en-

gage in a denial of service with respect to a third party). Might this be

both trespass and conversion? Might deposited sequences that track

or monitor (for example, “cookies”) or t ake inform ation (for example,

spyware) constitute trespa ss and privacy inf ringement?

Perhaps these issues call for comprehensive sui generis legislative

measures, providing for both crimin al and civil responsibilities, in

these contexts. Or ought relief be left to be crafted judicially through

a caselaw mechanism with reliance on civil code, common law, and

equitable principles? This is far from a seemingly straight forward

choice. It raises directly issues of constitutional legislative competence,

as di scussed in Chapter 1, and (in the absence of international treat y

arrangements) challenges for the extrater ritorial dimen sions that must

arise in a telecommunications context and will invoke an application of

private international l aw (conf‌lict of laws), discussed in Chapter 6.

2 Ibid. at 193, para. 148 (S.C.J., cited to C.P.R.).

3 Possibly proceedi ngs in nuisance might be contempl ated on the basis of Mother-

well v. Motherwell (1976), 73 D.L.R. (3d) 62 (Alta. S.C. (A.D.)) [Motherwell],

involving multit udinous daily telephone cal ls to an occupier of land causi ng

harass ment that amounted to an unlaw ful interference with t he enjoyment of

land.

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132

This chapter will consider the se matters primarily from a common

law perspective, drawing upon f‌ledgling developments in the United

States. However, before visiting t hese nebulous topics, Internet-related

features of trademark and passing off infringement, along with issues

of domain name identif‌ications, are considered.

B. INFRINGEMENT

In 2005, the Supreme Court in Kirkbi AG v. Ritvik Holdings Inc. empha-

sized that Canadian trademark law is a single system,4 being a com-

posite of federal statutory trademark law and provincial common law

proceedings such as the tort s of passing off and t he equivalent pro-

ceedings under the Civil Code of Québec.5 Section 7, Trade-marks Act6

provides federal st atutory relief in situations that mirror proceedings

at common or civil law. Historical ly, this has compromised the scope

of relief under section 7 with issues of constitutional validit y.7 The Su-

preme Court in Kirkb i removed doubts from section 7(b), which rec-

ognizes a federal proceeding i n the nature of passing off.8 The benef‌it

of this is the ability to seek an order t hroughout all Canada from the

Federal Court.

Sections 19 and 20, Trade-marks Act9 provide for infringement of

registered trademarks. Section 19 gives the owner of a registered trade-

mark the “exclusive r ight to the u se th roughout Canada of the trade-

mark” in re spect of the wares and services for which it is registered.

This section relates to use of the actual mark with the act ual wares

and serv ices for which t he mark is registered. A mere use of the mark

as a trademark with the relevant wares and ser vices may constitute an

4 Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65 at para. 31 [Kirkbi].

5 Art. 1457 C.C.Q. (formerly art. 1053 C.C.L.C.) is interpreted as pr oviding relief

in circums tances similar to t he common law torts.

6 Trade-marks Act, R.S.C. 1985, c. T-13, s. 7.

7 For the historic al diff‌iculties concer ning the constitutional v alidity of all or

parts of th is section, see MacDonald v. Vapor Canad a Ltd., [1977] 2 S.C.R. 134

[MacDonald]; Asbjorn Horgard A/S v. Gibbs/Nortac Ind ustries Ltd., [1987] 3 F.C.

544 (C.A.); Dumont Vins & Spiritue ux Ind. v. Celliers du Monde Inc., [1992] 2

F.C. 634 (C.A.); and Smith & Nephew Inc. v. Glen Oak Inc., [1996] 3 F.C. 565 at

574–79 (C.A.), leave to appeal to S.C.C. ref used, [1997] S.C.C.A. No. 433 [Smith

& Nephew].

8 Kirkbi, above note 4 at par a. 36.

9 Trade-marks Act, above note 6, ss. 19 & 20.