Keyword Ads — Only Infringing If They're Confusing

Neighbors can be helpful. Our Canadian neighbors may have just helped U.S. trademark owners who wonder about the legality of use of their trademarks in Google AdWords ads, and other search-engine keyword ads.

U.S. law on this subject was confused for a long time. But the British Columbia Court of Appeal got right to the heart of the matter in a January 2017 decision, in Vancouver Community College v. Vancouver Career College (Burnaby) Inc.

Indeed, a judge on that court succinctly explained keyword-based ads this way: "The critical factor in the confusion component is the message communicated by the defendant. Merely bidding on words, by itself, is not delivery of a message. What is key is how the defendant has presented itself, and in this the fact of bidding on a keyword is not sufficient to amount to a component of passing off."