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Digest of the Week — Does Same City Name = "Passing Off?"

Vancouver Community College v. Vancouver Career College (Burnaby) Inc. |
2015 CarswellBC 2390 |
British Columbia Supreme Court

Intellectual property | Trade-marks | Passing off and unfair competition | Scope of action

Plaintiff and defendant were, respectively, "community" and "career" college starting with same city name — Plaintiff brought action for passing off against defendant, alleging that defendant misrepresented its educational services as those of plaintiff — Action dismissed — Plaintiff's struggle to constrain defendant's ability to compete with it was motivated by concern that its own inability to invest necessary funds and expertise in sophisticated online advertising program left it at competitive disadvantage in comparison with defendant — Passing off action was not intended to be used by plaintiff to handicap defendant that had developed more effective means of marketing its goods and services than plaintiff — Bidding process in keyword advertising was well-established practice, and it would be inappropriate to preclude or limit practice where defendant bid on plaintiff's name for purposes of keyword advertising as that would disadvantage defendant in comparison to other online advertisers — Defendant did not cause confusion by taking advantage of service offered by providers of search engines — Any confusion that prospective student might experience between very similar names of plaintiff and defendant was irrelevant or chimera — Enrollment in defendant's college required in person attendance and completion of multiple forms bearing defendant's name such that there could be no plausible reason for confusion — Finding of plaintiff's extensive use of trademark VCC, made in rejecting defendant's application to register its domain name as trademark, was not available on facts of this case and was not relevant to issues in this action — Plaintiff enjoyed goodwill in educational services it provided but they had not achieved "secondary meaning" in marketplace — Defendant had not caused confusion by misrepresenting its services as those of plaintiff — It was unlikely that plaintiff suffered damage from defendant's conduct.
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