Citation:

Private Career Training Institutions Agency

v. Vancouver Career College (Burnaby)
Inc.,
2011 BCCA 69
Date: 20110211
Docket: CA038219

Between:
Private Career Training Institutions Agency
Appellant
(Petitioner)
And
Vancouver Career College (Burnaby) Inc.
d.b.a. Vancouver Career College and CDI College,
Vancouver College of Art and Design
Respondents
(Defendants)
Before:

The Honourable Madam Justice Prowse

The Honourable Madam Justice Kirkpatrick
The Honourable Mr. Justice Chiasson

On appeal from: Supreme Court of British Columbia: May 28, 2010,

(Private Career Training Institutions Agency v. Vancouver Career College (Burnaby),
2010 BCSC 765, Vancouver Docket No. S096031
Counsel for the Appellant:

N.T. Mitha and D. Rideout

Counsel for the Respondents:

L.P. Brasil and A. Lawrenson

Place and Date of Hearing:

Vancouver, British Columbia

January 10, 2011

Place and Date of Judgment:

Vancouver, British Columbia

February 11, 2011

Written Reasons by:

The Honourable Mr. Justice Chiasson
Concurred in by:
The Honourable Madam Justice Prowse
The Honourable Madam Justice Kirkpatrick

2011 BCCA 69 (CanLII)

COURT OF APPEAL FOR BRITISH COLUMBIA

Private Career Training Institutions Agency v. Vancouver

Career College (Burnaby)

Page 2

Reasons for Judgment of the Honourable Mr. Justice Chiasson:

[1]

The appellant is a regulatory body created by the Private Career Training

Institutions Act, S.B.C. 2003, c. 79 [the Act]. The respondent Vancouver Career
College (Burnaby) Inc. provides career training in a number of fields through the
other named respondents.
[2]

The respondents paid Internet search engines such as Google or Yahoo for

the use of competitors names as a keyword. This resulted in one of the

respondents name appearing first or in another preferred position on a list of names
that appeared when a user searched the Internet using the competitors name.
[3]

The appellant sought an injunction to prevent the respondents from using the

names of competitors in its Internet advertising in contravention of the appellants

Bylaw 29(1) which states:
1)

[4]

An institution must not engage in advertising or make a representation

that is false, deceptive or misleading. Deceptive advertising includes
but is not limited to an oral, written, internet, visual, descriptive or
other representation that has the capability, tendency or effect of
deceiving or misleading a consumer.

The chambers judge refused the injunction because he concluded the

appellant had not satisfied him that the respondents use of their competitors names
was misleading or was likely to mislead. He held it akin to a business paying to
have its name placed next to a competitors name in the Yellow Pages of a
telephone book.
[5]

For the reasons that follow I would dismiss this appeal.

Background

2011 BCCA 69 (CanLII)

Introduction

Private Career Training Institutions Agency v. Vancouver

Career College (Burnaby)
[6]

Page 3

Internet search engines commonly sell the use of keywords to the highest

bidder for a period of time on the basis that the purchasers name will appear at the

user searches the Internet using the competitors name. The purchasers listing may
be identified as a sponsor, an ad or not at all. Other names appear in an organic
list below the purchasing companys name in an order of priority developed by the
search engine.
[7]

For example, a Google search of Sprott-Shaw Community College produced

a page with a box at the top right of the page containing a list of sponsored links
the first one of which was the respondent Vancouver Career College. Sprott-Shaw
also appeared on the page. A Google search of the term vanarts produced a page
on the top of which was the name Vancouver Art College, the internet address of
which was the respondent Vancouver College of Art and Design. This was identified
as a sponsored link. The respondents competitor, Van Arts school, was listed next
below the respondent.
[8]

Disagreement arose among career colleges over the use by the respondents

of competitors names and complaints were made to the appellant as a result of

which it issued a guideline interpreting Bylaw 29(1):
Internet Advertising
With respect to internet advertising, the [appellants] Board
agreed by motion at its meeting of June 18, 2009 that the use
of another institution's trademarks, logo, or business name, or
anything confusingly similar, by a registered institution in any
metatags (website or html), search engine AdWords, adCenter
keywords, or any similar medium for advertising purposes
shall constitute false, deceptive or misleading activity within
the meaning of Bylaw 29.1, and is prohibited.

[9]

The respondents persisted in their practice contending it did not contravene

the Bylaw. This led to the appellants application for an injunction pursuant to s. 24 of
the Act, which provides that on being satisfied there are reasonable grounds to
believe that an individual or organization has contravened or is likely to contravene

2011 BCCA 69 (CanLII)

top of a list of names or in a special section on the first page that appears when a

Private Career Training Institutions Agency v. Vancouver

Career College (Burnaby)

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the bylaws of the appellant, the Supreme Court may enjoin a person from
contravening or require compliance with the bylaws.
Included in the material supporting the application were affidavits from two

students. Ms. Patterson deposed that she Google-searched for Van-Arts and was
directed to an Internet page with the names Vancouver Art College and VanArts
School. She requested information from both schools thinking the web-sites were
for the same institution. She received telephone calls from both institutions and
realized they were not the same. She enrolled in VanArts School.
[11]

Ms. Eppele searched for Vancouver Community College. The first name on

the resulting Internet page was that of the respondent Vancouver Career College.
She accessed the web-site of this respondent, arranged for an interview and
ultimately enrolled at the respondent. She then discovered her mistake, cancelled
her registration and enrolled in Vancouver Community College. The respondent
refunded her registration fee.
The reasons of the chambers judge
[12]

The judge stated the approach to interpreting Bylaw 29 in para. 53:

The proper approach to the interpretation of Bylaw 29 is set out in E.A.
Driedger, The Construction of Statutes (Toronto: Butterworths, 1974) at p. 67
and affirmed by Iacobucci, J. in Bell ExpressVu Limited Partnership v. Rex,
[2002] 2 S.C.R. 559, 2002 SCC 42, at para. 26:
Today there is only one principle or approach, namely, the
words of an Act are to be read in their entire context and in
their grammatical and ordinary sense harmoniously with the
scheme of the Act, the object of the Act, and the intention of
Parliament ... [Driedgers Modern Approach].

[13]

He then turned to the definition of misleading:

[54]
In Director of Trade Practices v. Household Finance Corporation of
Canada, [1976] B.C.J. No. 1316 (S.C.) the Court was faced with an alleged
breach of s. 2(1) of the former Trade Practice Act, R.S.B.C. 1974, c. 96 (now
repealed), which read in part:

2011 BCCA 69 (CanLII)

[10]

Private Career Training Institutions Agency v. Vancouver

Career College (Burnaby)

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(a)

any oral, written, visual, descriptive, or

other representation, including nondisclosure; or

(b)

any conduct

having the capability, tendency, or effect of

deceiving or misleading a person.
[55]
In addressing the meaning of misleading, Hutcheon J. observed at
paras. 18 and 20:
[18]
There is no definition in the Act of deceiving or
misleading. A dictionary definition of mislead which seems
to me to convey the flavor of the representations stated in
s. 2(3) to constitute a deceptive act or practice is to lead
astray; to cause to go in the wrong direction (Dictionary of
Canadian English The Senior Dictionary).

[20]
Having in mind the examples of deceptive acts given in
s. 2(3), I conclude that an act having the tendency of deceiving
or misleading a person is one that tends to lead that person
astray into making an error of judgment.
[56]
The meaning of mislead was also considered in Lotte Enterprises v.
B.C. (Private Post-Secondary Education Commission), 2001 BCSC 1613. In
that case, Pitfield J. quashed an order of the Agencys predecessor, the
Private Post-Secondary Education Commission, which directed a registered
institution to refund the tuition fees of a student because of an alleged
misrepresentation on the part of the institution regarding the qualifications of
its instructors. When addressing the question of whether the student in
question was misled by the representation, Pitfield J. opined at para. 23:
There is no reason to give the word misled any meaning
other than that which it has in its ordinary context. In the
Shorter Oxford English Dictionary mislead is defined to mean
lead astray in action or conduct; cause to have an incorrect
impression or belief; lead or guide in the wrong direction. In
another authority to which I was referred, mislead is
described as caused to have a wrong impression about
someone or something.

[14]

The judge observed that he had been referred to no cases in Canada that

had addressed keyword advertising. Reference was made to decisions made in the
courts of the United States which had done so. After reviewing these cases, the
judge stated in paras. 61 - 63:

2011 BCCA 69 (CanLII)

2 (1) For the purposes of this Act, a deceptive act or practice

includes

Page 6

[61]
Although apparently no Canadian court has opined on the propriety of
Keyword Advertising that uses the business name of competitors, in my view
resort can be had to the Canadian jurisprudence that has developed in the
area of trademark law in order to glean what is meant by the term confusing
or misleading in the context of alleged improper advertising. An essential
element to a claim of statutory passing-off under s. 7(b) of the Trade-marks
Act, R.S.C. 1985, c. T-13 is the presence of confusion.
[62]
To determine whether trademarks are confusing, the Court must
make a determination of their effect on those persons who normally comprise
the relevant market. The average consumer will not be the same for different
products, and will not have the same attitude at the time of purchase: United
Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247
(F.C.A.).
[63]
Moreover, in assessing the likelihood of confusion, the Court ought to
give the average consumer a certain amount of credit. Consumers are not
generally completely devoid of intelligence or of normal powers of
recollection; nor are they totally unaware or uniformed as to what goes on
around them. The overriding consideration regarding the likelihood of
confusion is all the surrounding circumstances. This allows the Court to
examine and assess any and all facts peculiar to the case before it: Mattel,
Inc. v. 3894207 Canada Inc., 2006 SCC 22.

[15]

The judge identified the issue to be decided in para. 65 as whether the

respondents use of Keyword Advertising and more particularly the use of

competitors names in that form of internet marketing is misleading.
[16]

He accepted the appellants position that the analysis must not lose sight of

the [appellants] consumer protection mandate and the fact that Bylaw 29 was
passed in order to protect any potential student from being deceived and potentially
harmed by misleading advertising.
[17]

He observed that the services being offered were post-secondary courses

that costs between $4,000 and $24,000 and that embarking on such a program
involves a serious decision by students. He then reviewed the evidence of
Ms. Eppele and Ms. Patterson and concluded they were not misled by the
respondents use of its competitors names as keywords.
[18]

The judge stated in para. 78 that the appellant has not persuaded me that

[the respondents] Keyword Advertising strategy has actually or could in the future

2011 BCCA 69 (CanLII)

Private Career Training Institutions Agency v. Vancouver

Career College (Burnaby)

Private Career Training Institutions Agency v. Vancouver

Career College (Burnaby)

Page 7

lead a potential student astray or into making a harmful error of judgment. He

[82]
I find [the respondents] advertising program, including its use of
Keyword Advertising that incorporates the names of competitor institutions,
was not designed to mislead anyone. The two situations of what the
[appellant] says were students who were deceived by [the respondents]
advertising are, in my opinion, actually examples of students who made
mistakes and it was their own actions or inactions that prompted the errors.
Had they been more cautious in their reviews of their search results they
would have realized that they were looking at a website of an institution other
than the one they were initially seeking.
[83]
In my opinion, [the respondents] internet advertising strategy
provided Ms. Eppele and Ms. Patterson with the opportunity to investigate
and consider other institutions besides the ones they were looking for. Not
only do I find there is nothing wrong with that, I think the option to examine a
number of institutions offering similar educational programs is a good one for
the consumer.
[84]
Having considered and incorporated the principles articulated in the
American jurisprudence on Keyword Advertising as well as the Canadian
cases that have dealt with allegations of confusing or misleading advertising
in the context of trademark disputes, I am satisfied that the impugned
advertising strategy of [the respondent] is not false, deceptive or misleading.
Consequently, I find [the respondent] has not breached Bylaw 29.

Positions of the parties

[19]

The appellant asserts that the judge erred by applying principles of trade-

mark law to the interpretation of a consumer protection statute.

[20]

The respondents contend the issue is whether the judge made an error of

mixed law and fact including that the [respondents] keyword advertising efforts did
not contravene Bylaw 29.
Discussion
Standard of review
[21]

The appellant asserted that this Court should defer to its interpretation of

Bylaw 29(1) because it is a specialized administrative tribunal. The contention is

misplaced.

2011 BCCA 69 (CanLII)

expressed his conclusions in paras. 82 - 84:

Private Career Training Institutions Agency v. Vancouver

Career College (Burnaby)
[22]

Page 8

The application before the chambers judge was for an injunction, not for the

judicial review of an administrative decision. The appellant was the applicant. It was

respondents arrangement with the search engines was misleading advertising. The
appellant could urge its interpretation of the Bylaw on the court, but the court was
obliged to interpret the bylaw and then to determine whether the appellant had
established the required reasonable grounds.
[23]

Because the appellant urged this Court to accept its interpretive guideline on

the basis of deference, the respondents sought to introduce fresh evidence to show
the course of dealings between the parties in advance of the hearing of the
appellants application. I would not admit the fresh evidence because I conclude
that no issue of deference arises in this case.
The issue
[24]

The judge identified the issue before him as whether the respondents form of

Internet marketing was misleading advertising. In my view, the statement places the
bar too high, but I am satisfied the judge did address the correct issue which is:
whether there were reasonable grounds to believe that the respondents form of
Internet marketing was misleading advertising.
[25]

This is apparent from the judges conclusion that the appellant did not

persuade him that the advertising could lead a potential student astray. He stated
that this was because the information available to students on the web-page was
more than adequate to alert them to the fact that the respondents Internet site was
not the site in which they were interested. In addition, the judge concluded that the
respondents keyword advertising did not mislead the two students because they did
not deal reasonably with the information that was available to them. In my view, the
judge was not satisfied that there were reasonable grounds to believe the
respondents contravened Bylaw 29.

2011 BCCA 69 (CanLII)

obliged to satisfy the court that there were reasonable grounds to believe that the

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Career College (Burnaby)

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Analysis
[26]

In argument before the chambers judge and in this Court, the respondents

advertisement proximate to a competitors listing in the Yellow Pages of a telephone

book. The appellant rejects this contention as do I, but I do not accept the
appellants assertion that the proper analogy is to the white pages where individual
names appear.
[27]

These propositions seek to analyze the legal implications of the use of

modern technology with practice and technology that bears no resemblance to it.
The Yellow Pages are based on topics, not names. The white pages contain
names, but no choices. An Internet page gives choices, names and topics. It is
information technology carried far beyond the traditional.
[28]

The task for the chambers judge in this case was to consider whether there

were reasonable grounds to believe that the results of the use of todays technology
misled or were likely to mislead. That is, whether using a competitors name as a
keyword to electronically produce a web-page showing the respondents web-site in
priority on a list of possible career colleges was misleading or likely to mislead.
[29]

In its factum, the appellant contends that the judges reference to trade-mark

cases was an error because it led him to consider the effect of the respondents
keyword advertising on average consumers as opposed to vulnerable consumers,
potential students of the training institutions.
[30]

Notwithstanding its position on the judges use of trade-mark authorities, at

the hearing of the appeal, the appellant sought to support its contention the
advertising was misleading on the basis of cases that considered whether the use of
a trade-mark was confusing. The genesis of the appellant equating misleading
with confusing appears to be its interpretive guideline which was based on trade-

2011 BCCA 69 (CanLII)

contended that their keyword advertising is akin to advertising that places a business

Private Career Training Institutions Agency v. Vancouver

Career College (Burnaby)

Page 10

mark and confusion. The judge also focused to some extent on whether the
respondents keyword advertising was confusing.
In my view, cases that deal with confusion in the trade-mark context are not of

assistance in this case.

[32]

Bylaw 29(1) prohibits false, deceptive or misleading advertising. The

Concise Oxford English Dictionary, 11th edition, defines confusion as, the state of
being bewildered, the mistaking of one...thing for another. Mislead means cause
to have a wrong impression. The definition of deceptive includes misleading and
giving an appearance or impression different from the true one.
[33]

I do not accept the appellants argument insofar as it is based on equating

misleading with confusing. In my view, advertising that is misleading also likely is

confusing, but simply because advertising is confusing does not mean it is
misleading.
[34]

I am not satisfied that the judges reference to trade-mark cases undermined

his consideration of the appropriate consumer. As noted previously, in paras. 62

and 63, he discussed the approach to be taken to the average consumer.
[35]

He was alive to the need to consider the applicable consumer in context. He

did not err in concluding the consumer must be given credit for having normal
intelligence.
[36]

The judge was well aware of the composition of the potential student body,

but he was entitled to put the issue into context. He observed that the decision to
spend thousands of dollars and several years on a course of education was very
important. It was reasonable to expect that potential students would approach the
issue with some care. He found that the only two students whose evidence was
given to him did not exercise appropriate care. In addition, there was no evidence to
suggest that these students were particularly vulnerable. Although there was some
evidence that many potential students are international, for whom English would not

2011 BCCA 69 (CanLII)

[31]

Private Career Training Institutions Agency v. Vancouver

Career College (Burnaby)

Page 11

be their first language, the evidence also showed that these persons would be
familiar with the Internet.
The judge correctly focused on the definition of misleading. He did not need

to go beyond that to determine whether there were reasonable grounds to believe

that the keyword advertising of the respondents contravened Bylaw 29.
Conclusion
[38]

It is important to understand what this case concerns. It is not a dispute over

intellectual property and the result should not be considered in that context.
[39]

The application before the chambers judge was for an injunction. The burden

was on the appellant to satisfy the judge that there were reasonable grounds to
believe that the respondents use of keyword advertising was actually or potentially
misleading. He found as a fact that the appellant had not established that the
respondents keyword advertising was actually or potentially misleading. He stated
that the appellant had not persuaded him that the respondents use of its
competitors names in keyword advertising could...lead a student astray or into
making a harmful error of judgment. There was evidence to support those findings.
[40]

In my view, that evidence and the judges findings show that he was not

satisfied that there were reasonable grounds to believe that the respondents
contravened Bylaw 29(1). There is no basis on which this Court should or could
interfere.

The Honourable Mr. Justice Chiasson

I agree:
The Honourable Madam Justice Prowse
I agree:

2011 BCCA 69 (CanLII)

[37]

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Career College (Burnaby)

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2011 BCCA 69 (CanLII)

The Honourable Madam Justice Kirkpatrick