Google AdWords and Canadian Trademark Law

This article aims to answer two questions: should business competitors be allowed to use each other’s goodwill in this way and, if so, can trademark law police the program without stifling competition? Part I examines the technical aspects of the AdWords program. Part II explores the underlying rationales of trademark law to start developing a normative position. Part III reviews the American jurisprudence and commentary to hone that normative position and to identify a compatible legal framework. Part IV compares that framework against Canadian law. This article endorses the work of Misha Gregory Macaw who, unlike some trademark expansionists, argues that keying is permissible provided that it does not confuse buyers as to source. The implications of his position are that trademark law should apply to all instances of keying to prevent abuse, but that intervention depends on the likelihood of confusion, not simply one seller profiting from another’s goodwill. A survey of Canadian commentary and jurisprudence suggests that Canadian trademark law is compatible with Macaw’s thesis: the tort of passing off appears well suited to disciplining trademark use on the Internet and, although some provisions of the Trademarks Act could be expanded to prohibit socially beneficial uses of competing marks, Canadian courts have applied them reservedly, especially compared to some of their American counterparts