Metatags and Trade Mark Infringement Part One

19 September 2008

By Inam Ali

Metatags and the Trademark Law – Part I

This three-part series of articles briefly looks at the legality of Metatags in website design and considers the implications of trade mark law on situations of infringement and passing off.

The three articles are broken down as follows:

Part I: Introduction: What are Metatags?; The Problem; The Law on Metatags and relevant case law

Part II: Metatag Keywords and caselaw

Part III: Practical points for website owners and trade mark owners

PART I

What are Metatags?

‘Metatags’ are keywords or page description text which form part of Meta elements. Such elements are placed as ‘tags’ in the head section of an HTML or XHTML document and they provide structured metadata about a web page.

Meta elements aid search engines to categorize web sites correctly and list them in their search results page in order of their relevance and quality.

IT consultants often use Metatags in search engine optimization (SEO) to provide information about a given webpage. 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 (keywords used in hidden code specifically describe the web site and thus give the site a higher ranking). The end goal is to attract higher traffic to the client’s web site.

Maximising hits on a website is clearly good for sales of the website owner’s goods or services, but it can also increase advertising revenue since advertising space is often sold by reference to the number of hits on the site.

Metatags can be made visible through most internet browsers by clicking on the “View” menu and then on the “Source” button. In addition to Metatag keywords, some websites also include keywords in the actual text of the website, but in the same colour as the background of the relevant webpage so that they are invisible to users but will still be picked up by search engines.

The Problem

Although using Metatags is legal, care must be taken as to the specific text that you use as the Metatag.

Problems can arise where website owners use Metatags to divert traffic to their sites by the unauthorised use of a third party’s trade marks, logos or other materials (which may often have little or no relevance to the website’s contents).

The Law on Metatags

The legality of Metatags has been the subject of three cases in the UK.

Case 1. Roadtech Computer Systems v Mandata Ltd [2000] ETMR 970

This was the first English case on Metatags. The claimant objected to the defendant’s use of the words “Roadrunner” and “Roadtech” in the Metatags and hidden text of the defendant’s web site. The claimant had registered “Roadrunner” as a trade mark for computer software, programs and support services, and it used both this mark and its own name, “Roadtech”, in the course of its business as a supplier of software to the road haulage industry, in which the defendant was a competitor. On an application for summary judgment, the defendant was found to have admitted that its use of the word “Roadrunner” constituted an infringement of the claimant’s trade mark, and the court also found that the defendant’s use of the word “Roadtech” amounted to passing off.

Case 2. Reed Executive plc and another v Reed Business Information and others [2004] EWCA Civ 159

The claimant, Reed Executive, the recruitment business and owner of the REED registered trade mark, obtained a High Court judgment against Reed Business Information, the publisher of specialist magazines and journals, for trade mark infringement and passing off.

Reed Business Information had created a new web site “totaljobs.com” onto which it had transferred job advertisements from its industry-specific publications, and the site included the Metatag “Reed Business Information”.

In this Court of Appeal (CoA) case, the CoA overturned the High Court’s decision. The CoA denied that there had been trade mark infringement, since even if using a Metatag was to count as use of a trade mark, the Metatag would normally only be read by computers and would therefore not achieve the ultimate function of a trade mark (ie an indication to someone of trade origin). Therefore there was no confusion in this case. The CoA stated that making a site appear in search results does not necessarily suggest a connection with the search term itself, and that this is a common occurrence that is known by internet users.

The CoA also found (contrary to the High Court) that even if Metatag use was to fall within the infringement provisions of the trade mark legislation, then the own-name defence (section 11(2)(a) of the TMA) should be available.

Identical trade mark Metatags

The CoA reserved its position on whether invisible use of a trade mark might infringe where the marks and the goods or services of the parties are identical (section 10(1), TMA) (in this case, they had been held to be similar). Neither did it address the question of whether infringement might arise where the claimant's mark has a reputation in the UK (section 10(3), TMA). In those cases, it would not be necessary to prove confusion.

Passing off

In relation to passing off, the CoA found that, in all cases where the defendant's website was listed in search results, it came below the Reed Employment site which, as is usual, appeared with other results irrelevant to either party. Obviously, anyone looking for Reed Employment would find it rather than ‘totaljobs.com’, the defendant’s site. No one was likely to be misled and, consequently, there was no misrepresentation. This was equally so whether the search engine itself rendered visible the Metatag or not.

Conclusion

It has become clear from the Court of Appeal's decision that invisible uses of trade marks will not automatically constitute dishonest use such as to prevent a defendant relying on the own-name defence under the TMA. Further, to establish infringement, it will be necessary to show that the use suggests a connection between the two businesses, which does not exist. This may be difficult in the case of internet search results (picking up Metatags) which are notoriously inaccurate. In any event, if there is a risk of confusion (even if unintentional), liability can be avoided by the website owner taking steps to eliminate it (see Part III). Even so, as discussed, the Court of Appeal's decision does not exclude the possibility of bringing a claim for trade mark infringement in respect of the use of Metatags. Such a claim might succeed where there is no requirement to show confusion, although it is submitted that the prospects of success will be greater in the case of reserved keywords (see Part III) than in the case of Metatags.

In Part II, we will look at the legality of Metatag Keywords, which were considered in the Reed case by both the High Court and the Court of Appeal.

Inam Ali is s a solicitor who specialises in Information Technology law.