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Trade Mark Infringement 
Does using a mark as a metatag or as a key word for banner advertising amount to infringement?

As most of us now use the internet to look for and purchase things it has become a significant way in which we become aware of, and see the use of, trade marks and logos identifying the origin of goods and services.

 
Businesses are concerned to ensure that their websites appear as high up any search list on the likes of Google as possible, so that they can attract more customers or advertising revenue.  The results of a search depend not only on the visible content of a website, but also on sponsored links based on keywords and the use of metatags that searchers cannot see. 

Metatags consist of keywords or other text which are embedded in the hypertext mark-up language (html) in which webpages are generated. The more often a keyword appears on a site, particularly in hidden code, the higher a search engine will rank the site in its search results against that keyword. 

The benefits of attracting internet traffic to a website through metatags and sponsored links has led to some website owners creating metatags and paying for sponsored links using a competitor's trade mark or logo.  While some may view this as a legitimate commercial practice ensuring that consumers are aware of alternative sources for goods and services, others are concerned to prevent their competitors from using their trade marks to divert customers away from their website.

 
This issue is becoming more common place, but whether or not it is unlawful for a website owner to use a third party's trade marks in order to attract traffic to its website is uncertain.   Although there have been a number of decisions in the US supporting trade mark owners' rights against the use of their marks as metatags and sponsored links there was, until recently, little judicial authority in the UK.  The first in depth analysis of the issues under English law was made by the Court of Appeal in the case of Reed Executive plc and another v Reed Business Information and others [2004] EWCA Civ 159 . 

Under the Trade Marks Act 1994 (TMA), the owner of a registered trade mark is granted the exclusive use of the mark within the UK in connection with the goods or services for which it is registered. (A Community Trade Mark gives similar rights throughout the EU.) The registered owner has the right to sue any person for trade mark infringement where a sign is used without his consent and:

• that sign is identical to the registered trade mark and is used in relation to goods or services which are identical to those for which the trade mark is registered (sections 10(1), TMA);
• that sign is identical to the registered trade mark and is used in relation to the goods or services which are similar to those for which the trade mark is registered, or the sign is similar to the registered trade mark and is used in relation to goods or services which are identical or similar to those for which the trade mark is registered, and in each case there exists a likelihood of confusion on the part of the public, which includes a likelihood of association (section 10(2), TMA); or
• that sign is identical or similar to the registered trade mark, the trade mark has a reputation in the UK, and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark (section 10(3), TMA).

Under the TMA there are various defences to infringement, including where the defendant can show that use of the mark in question has been to describe the contents of a website or to identify the goods or services provided by the website owner to offer a substitute product as part of legitimate comparative advertising or even to criticise the owner of the trade mark or its business.

Does it create confusion on the part of the public?

In the Reed case the claimant, Reed Executive (a recruitment business and owner of a registered trade mark for REED) obtained judgment at first instance against Reed Business Information (a publisher of trade journals), for trade mark infringement and passing off.  Reed Business Information had moved job advertisements from its industry-specific publications onto a new website called "totaljobs.com", and the site had the name "Reed Business Information" as part of its metatags. The court could not decide whether the goods or services were identical and approached the case on the basis that confusion had to be established to prove infringement where there were similar goods under section 10(2), TMA.  The court stated that use of a trade mark in metatags, which actually causes a visible display of the mark in question in the search results, could infringe where the purpose is to suggest a connection which does not exist. 

The decision was overturned by the Court of Appeal which held that even if a metatag could count as use of a trade mark, there was no confusion caused by that use. The fact that a site appeared in search results did not in itself suggest a connection with the owner of the trade mark. 

In relation to the question of whether sponsored links could amount to infringement the Court of Appeal also disagreed with the trial judge’s finding that, when the banner was displayed by searching the word "Reed", there was trade mark infringement. Jacob LJ described it as "fanciful" that a "web-using member of the public" would connect a totaljobs banner, which made no reference to the word "Reed", to Reed Employment. He found that there was no likelihood of confusion and therefore no infringement. The Court of Appeal expressed the view that the public are used to a random selection of sites being displayed on a search and do not necessarily assume there is a connection between the search terms and the sites.

Is it "use" of a trade mark?

Unfortunately the Court of Appeal reserved its position on whether the invisible use of a trade mark might infringe where the marks and the goods or services of the parties are identical because it did not need to decide that question in the Reed case.  Where there are identical goods and marks it isn't necessary to prove confusion; the only question is whether a metatag or use of a sponsored link would amount to "use" in the course of trade as required under the TMA.

The Court of Appeal said that it was doubtful whether a metatag counted as "use" of a trade mark as the metatag would normally only be read by computers and so could not act as an indication of trade origin.  Even so, the Court of Appeal's decision does not exclude the possibility of a successful claim for trade mark infringement in respect of the use of sponsored links because those work in a different way from metatags and it could be argued that the prominence of the sponsored link in relation to the search term does act as an indication of trade origin.

Defences

There haven't been any cases dealing with the defences that could be employed in a trade mark claim for use of a metatag or sponsored banner, but in theory it could be possible to use a third party trade mark in a metatag for the purposes of comparative advertising so long as the use is honest. However, it is questionable whether an invisible reference to a competitor's mark for the purposes of comparison of prices will be seen as honest since it is not there for users to see. 

Conclusion

The Court of Appeal's decision in the Reed case shows that infringement of a trade mark will only be established if the use of a metatag or sponsored link suggests a connection with the trade mark owner's business. 

The Court of Appeal reached a very different view from that of the trial judge and much of the Court of Appeal's decision was based on a more realistic understanding of how inaccurate search results are and how internet users view banner advertising.   Even so, the Court of Appeal's decision does not exclude the possibility of a successful claim for trade mark infringement in respect of the use of metatags or sponsored links if an identical mark is used in relation to identical goods.  Such a claim might succeed as there is no requirement to show confusion on the part of the public, but there will be quite a lot of uncertainty until there is more authority from the courts on the issue.

Contact Details

If you would like further advice about any of the issues considered above please contact Paul Northwood on 01869 331753 or email him at paul.northwood@northwoodreid.com

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This article is not intended to be, and should not be taken as being, legal advice. The law often changes and it varies from jurisdiction to jurisdiction; the information in this article is generic in nature and specific legal advice should be taken before acting on any of it.

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