Trademarks, Domain Names, and Interferences

AuthorRobert G. Howell
ProfessionProfessor. Faculty of Law University of Victoria British Columbia
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
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.
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.

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