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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.

Jordan Furlong, intrepid editor of the Canadian Bar Association’s NATIONAL magazine has launched a search for Canada’s best law firm websites. He has hand-picked a group of judges to make the call, with the results being released this fall. Categories include:

1. Big Firm (national/multi-jursidictional
2. Small firm/solo
3. British Columbia
4. Prairies
5. Ontario
6. Quebec
7. Atlantic Provinces
8. Blogs [i.e. best blog(s) incorporated within a firm site]
9. Multi-media
10. Student/recruiting

The Financial Post/Legal Post’s Mitch Kowalski is one of the judges and in a recent blog post invites you to contact him with your firm’s site if you think you’ve got the right stuff. Deadline for submission to him is August 14, 2009.

Came across a terrific blog post today from Jordan Furlong (Editor-in-Chief at CBA’s National magazine) today on his Law21.cablog entitled “We are all solos” about the rising importance for lawyers of cultivating a personal brand as we move increasingly towards a milieu in which lateral movement and declining loyalty between firms and lawyers (both directions) is a fact of life.
I was struck by the intersection of this thought with an article that appeared in the Vancouver Sun today entitled “Self-promotion may be key to getting more women on boards.” The basic tenet of this latter article is that women are continuing to be under-represented on corporate boards in Canada in part because they are under-exposed to the executives doling out board positions. In the article lawyer Elizabeth Watson of Watson Advisors inc. attributes this to women being less-inclined to blow their own horn as it were, and choosing instead to attribute success as a team effort. As a result, a website has been established (womeninthelead.ca) to identify and profile women in Canada suitable for consideration for board positions – a list which which has grown to include over 850 individuals.
But the message that emerges from both these sources is clear – male or female, lawyers need to start doing more thinking about their own individual brand than has historically been the case. If you don’t, who will? And Furlong is bang-on when he points to the web (blogs, social networking sites like LinkedIn and other online applications (podcasts, Twitter feeds, etc.) as the place where this brand-building is increasingly going to occur.

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