Canadian trademarks and keyword advertising : the unsettled debate over trademark keywords

The most expensive keywords in Google AdWords by average cost-per-click in 2015 was “mesothelioma attorneys tx” priced at $272.00. Keyword advertising is a lucrative business for advertisers and search engines. This thesis will contribute to the academic discussion on unauthorized trademark use in keyword advertising in Canada. Third party advertisers are bidding on competitors’ trademarks without authorization to trigger their sponsored advertisement when the keyword is included in a consumer’s Google search. Trademark infringement has been alleged against Google in the United States and the European Union for the role played by Google AdWords. Canadian trademark law received the first case on keyword advertising in 2015. Keyword advertising is a rapidly developing field: but deep uncertainties remain for the ideal scope of keyword advertising and the ability of ss 19, 20 and 22 of the Canadian Trade-marks Act to provide what will be argued as the ideal scope of keyword advertising. In this thesis I argue that the proper scope of keyword advertising is to prohibit the unauthorized bidding on registered trademark keywords and non-comparative phrases. A doctrinal analysis will be conducted of the current interpretation of ss 19, 20 and 22 of the Canadian Act to determine the extent to which those provisions can provide the ideal scope of keyword advertising. The key issues addressed are trademark use, a likelihood of confusion and depreciation of the value of goodwill of a trademark. A comparative analysis of case law and legislation from the United States and European Union pertaining to trademark use in keyword advertising will supplement the discussion of the Canadian law where there has been a lack of judicial opinion on the subject matter. Based on the current interpretations of ss 19, 20 and 22, it is unlikely that the provisions will provide the ideal scope of keyword advertising. Therefore recommendations to reform the Canadian Trade-marks Act will be set out to address the gaps in the law. The recommended legislative reforms will also include a provision on the extent of search engine liability for unauthorized trademark use in keyword advertising