International Law

ICBC gearing up for trademark battle(s)?

By Doug Jasinski

Several articles are hitting the wires yesterday and today about the Insurance Corporation of British Columbia's decision to sue Stainton Ventures Ltd. the owner of the www.icbcadvice.com website for unauthorized use of ICBC's official marks. The website offers free advice to the public on dealing with ICBC, links to a variety of "recommended service providers" including plaintiffs' counsel, doctors, chiropractors, physio and massage therapists, and also offers for sale an ICBC advice Claim Guide book for $19.95.

According to ICBC's official news release the Corporation does not object to the content of the website or the manual but rather "it is concerned about the unauthorized use of its official marks and brand for commercial purposes."

In this Vancouver Province news story, ICBC spokesman Mark Jan Vrem says "the issue is they are using our name in their website address".

The Globe and Mail and CBC have also has also picked up the story - find the Globe article here. Find the CBC article here.

The story seems to have hit a public nerve, with over 80 comments on the CBC story online already but there are a couple of aspects that seem particularly relevant to the Plaintiff Personal Injury Bar in BC:

First, in answer to the "why now?" aspect of this lawsuit, it is interesting to note that in the Province story, the Corporation's spokesperson references the fact "ICBC is our registered trademark". A search of the CIPO trade-mark database indicates that the formal trade-mark application for the actual term "ICBC" was allowed by CIPO less than a month ago.

Second, ICBC's own press release as well as the news reports to date suggest there is more to come on this front, potentially setting the stage for a series of hotly contested legal battles with plaintiff lawyers who are using the term "ICBC" in their website urls or otherwise. Consider the following:

From the ICBC press release: Owners of several other websites have adopted and used ICBC's official marks for commercial and other purposes. ICBC considers each situation on a case-by-case basis, but always with the objective of doing what is required to protect its brand and the public."

From the Province story: "ICBC is our registered trademark, it is definitely something we have to protect going forward." [emphasis added] "He added ICBC is contemplating going after other websites like Stainton's that have 'ICBC' in their domain names."

From the Globe: "Mr. Vrem said the car insurer, in the future, will take a harder line against websites that use its name."

I have a sneaking suspicion we haven't heard the last of this one.

Full post as published by Legal Marketing Canada on August 07, 2009 (boomark / email).