Trademarks, Domain Names, and Interferences
Author | Robert G. Howell |
Profession | Professor. Faculty of Law University of Victoria British Columbia |
Pages | 130-176 |
130
CHAPTER 3
TRADEMARKS,
DOMAIN NAMES, AND
INTERFERENCES
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 with trademark law in general, nor with
infringements that simply happen to occur in telecommunications
media. Rather, it is concerned with trademark issues that 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, copyright 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 infringement was found but
was reversed on appeal, when a US entity with a trademark in the United
States substantially common with a trademark in Canada embarked on
a marketing drive that caused the Canadian entity to be overwhelmed
with electronic inquiries to an extent that its system 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 Interferences131
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 trademark infringement
demonstrates the paucity of available legal responses for interference
with communications media. If the defendant’s conduct had been to
damage the plaintiff’s website and business intentionally it might have
been characterized as a “denial of service” (DoS) activity. Might this
then have invoked relief for tortious activities? Could this 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 demand 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 the 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 take information (for example,
spyware) constitute trespass and privacy infringement?
Perhaps these issues call for comprehensive sui generis legislative
measures, providing for both criminal 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 discussed in Chapter 1, and (in the absence of international treaty
arrangements) challenges for the extraterritorial dimensions that must
arise in a telecommunications context and will invoke an application of
private international law (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.
TELECOMMUNICATIONS LAW
132
This chapter will consider these matters primarily from a common
law perspective, drawing upon fledgling developments in the United
States. However, before visiting these 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 KirkbiAG 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 torts of passing off and the equivalent pro-
ceedings under the Civil Code of Québec.5Section 7, Trade-marks Act6
provides federal statutory relief in situations that mirror proceedings
at common or civil law. Historically, this has compromised the scope
of relief under section 7 with issues of constitutional validity.7 The Su-
preme Court in Kirkbiremoved doubts from section 7(b), which rec-
ognizes a federal proceeding in the nature of passing off.8 The benefit
of this is the ability to seek an order throughout all Canada from the
Federal Court.
Sections 19 and 20, Trade-marks Act9provide for infringement of
registered trademarks. Section 19 gives the owner of a registered trade-
mark the “exclusive right to the use throughout Canada of the trade-
mark” in respect of the wares and services for which it is registered.
This section relates to use of the actual mark with the actual wares
and services for which the mark is registered. A mere use of the mark
as a trademark with the relevant wares and services may constitute an
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.
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