Summary

37498

Vancouver Career College (Burnaby) Inc., dba Vancouver Career College, also dba CDI College, also dba Vancouver College of Art and Design also dba Eminata Group v. Vancouver Community College

(British Columbia) (Civil) (By Leave)

Keywords

Intellectual property – Trade-marks – Confusion – Respondent bringing passing off action against applicant with respect to its trademarked name and acronym – In a passing off action concerning online activity, is the element of confusion to be assessed solely when an array of search results are presented to an internet user, or when the user actually visits a defendant’s website? – Does this Court’s holding in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 concerning “first impressions”, as applied to the internet search context, mean first impressions of the internet search results showing a defendant’s domain name, or first impressions of the defendant’s actual website?

Summary

Case summaries are prepared by the Office of the Registrar of the Supreme Court of Canada (Law Branch). Please note that summaries are not provided to the Judges of the Court. They are placed on the Court file and website for information purposes only.

The respondent, Vancouver Community College is a public post-secondary education institution designated as a college under the College and Institute Act, R.S.B.C. 1996, c. 52. It has operated under that name since 1974 and has two campuses in the Vancouver area. In January, 1999, it caused the Registrar of Trade-marks to publish notice of “VCC” as an official mark; and “Vancouver Community College” as an official mark in October, 2005 under the Trade-marks Act, R.S.C. 1985, c. T-13. The applicant, Vancouver Career College (Burnaby) Inc. is a private college. It is regulated under the Private Training Act, S.B.C. 2015, c. 5. Both entities share the same initials, “VCC”. Vancouver Community College brought a passing off action against Vancouver Career College with respect to the use of the initials “VCC” and for breach of its official marks. Vancouver Community College alleged that Vancouver Career College, principally through keyword advertising, misrepresented its educational services as those of the respondent. Vancouver Community College also alleged the applicant improperly use the initials “VCC” both internally and externally to the world at large. It further alleged the respondent adopted the domain name “VCCollege.ca” thereby creating public confusion.

Lower Court Rulings

August 20, 2015
Supreme Court of British Columbia

S112258, 2015 BCSC 1470
Respondent’s action for passing off dismissed
January 26, 2017
Court of Appeal for British Columbia (Vancouver)

CA43111, 2017 BCCA 41
Appeal allowed; Passing off established and respondent entitled to permanent injunction; Issue of quantum of damages remitted to trial court