Trademarks, Domain Names, and Interferences

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

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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.

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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

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.