Meta tags, banner adverts and trade mark use
This article was written in April 2004. There is a chance
that the law has changed, or the facts of this article may have
been superseded. It is based on UK law.
On 3 March 2004, the Court of Appeal considered the question of
whether the use of trade marks in meta tags and banner
advertisements on web sites constitutes trade mark infringement.
The appellants were Reed Business Information Limited, Reed
Elsevier (UK) Limited and totaljobs.com Limited (
RBI
).
RBI
is a leading publisher and in 1999 developed the
totaljobs.com web site to exploit the job advertisement market.
Until June 2000, two logos appeared on totaljobs.com
incorporating the words Reed Elsevier and Reed Business
Information. However, after June 2000, the only visible reference
to either Reed Elsevier or Reed Information on the site was the use
of a copyright notice '© [year] Reed Business Information Ltd' at
the bottom of web pages on the site.
The words Reed Business Information, nevertheless, appeared in
the meta tags of the totaljobs.com web site in various forms, and
until late 2000,
RBI
paid Yahoo to run a number of
banner advertisements for the totaljobs.com web site linked to the
search terms 'recruitment' and 'jobs'. Yahoo gave
RBI
a free extra search term of their own name, with Yahoo choosing the
word 'reed'.
The Respondents, Reed Executive plc and Reed Solutions plc
(Reed), is one of the UK's leading employment agencies and
instituted proceedings for trade mark infringement against
RBI
for all forms of the use of the word REED, whether
that was in visible form or in meta tag form, on the basis of a
trade mark registration for employment agency services. The judge,
Mr Justice Pumfrey, found for Reed on all counts.
Although
RBI
did not appeal Pumfrey's decision on
the visible use of Reed,
RBI
did appeal the decision
with regards the use of Reed in the copyright notice, as a meta tag
and the banner advert use. The Trade Marks Directive states:
"The Registered trade mark shall confer on the proprietor
exclusive rights therein. The proprietor shall be entitled to
prevent all third parties not having his consent from using in the
course of trade:
(a) Any sign which is identical with the trade mark in relation
to goods or services which are identical with those for which the
trade mark is registered;
(b) Any sign where, because of its identity with, or similarity to,
the trade mark and the identity or similarity of the goods or
services covered by the trade mark and the sign, there exists a
likelihood of confusion on the part of the public, which includes
the likelihood of association between the sign and the trade
mark."
Following on from the European Court of Justice decision in LTJ
Diffusion against Sadas Vertbaudet (the Arthur test), the Court of
Appeal found the differences between the word Reed on the one hand,
and Reed Business Information on the other would not "go unnoticed
by the average consumer" and thus identity between the marks had
not been established under the Arthur test and the use of Reed did
not fall under paragraph (a) of the above section of the Act.
In order to succeed in the trade mark infringement claim Reed
would have to prove that use of the word ' Reed' by
RBI
would cause confusion under paragraph (b).
Copyright notice
No direct evidence was produced which indicated any confusion
arising from the use of the copyright notice alone (i.e. without
any other use of 'Reed' on the web site). It was held that it was a
matter of pure speculation as to whether the copyright notice alone
would cause confusion. A copyright notice was held not to be an
explicit notice as to who owns a web site.
Given that 'Reed' was not being used in a visible way on the
totaljobs.com web site apart from in the copyright notice at the
very bottom of any web page—which had to be scrolled down to
view—it was felt unlikely that any confusion would result from the
use of 'Reed Business Information' in the copyright notice alone.
No infringement was found in relation to this argument.
Meta tag use
The use of 'Reed Business Information' in the meta tags of the
totaljobs.com was held not to be trade mark infringement. Causing a
site to appear in a search result, without more, did not suggest
any connection with anyone else in the court's mind. Justice Jacobs
implied that users of search engines are used to the clutter on
search engine results.
Interestingly, Lord Justice Jacob raised the question of whether
meta tag use counted as trade mark use at all? He made the point
that it must be remembered that use is important not only for
infringement but also for saving a mark from non-use. In the latter
context Jacob found it odd that a wholly invisible use of a trade
mark could defeat a non-use attack. Uses of trade marks only read
by computers may not count as 'trade mark use' as they never convey
an indication of trade origin to anyone.
Banner adverts
The use of the word Reed by
RBI
in relation to
banner adverts was held not to be trade mark infringement. The
adverts only referred to totaljobs and no 'visible' reference was
made to the words Reed at all. Jacob found that the public knows
that all sorts of banner ads appear when they conduct a search and
such ads may be triggered by something they have typed in the
search. However, the public is educated to these "fuzzy results"
with "results with much rubbish thrown in". Jacob found the idea
that a search under the name 'Reed' would make anyone think there
was a trade connection between a totaljobs banner making no
reference to the word 'Reed' was fanciful.
Conclusions to be drawn
The Reed case does indicate the use of 'invisible' trade marks
in the form of meta tags or banner advert search terms cannot be
considered in isolation from the associated 'visible' uses of the
same trade marks on web sites, which are associated with such
'invisible' use.
In cases where similar marks are under consideration and thus
confusion must be proved to establish trade mark infringement, both
the visible and invisible use of the trade marks have to be
considered together. If a defendant can show that as a result of
their visible use of terms or trade marks on a web site that
purchasers are not being confused into thinking that they are the
plaintiff, then trade mark infringement now appears hard to
establish.
It appears that the simple use of a mark similar to a registered
trade mark in 'invisible' form as a meta tag or banner search term
will not in itself establish infringement. However, the Reed case
must be prefixed by two important provisos. The first is that Jacob
made it explicitly clear that if
RBI
had been deemed
to have been using a mark identical to the registered mark Reed,
then his decision could have been very different, as the question
of proving confusion would not have arisen under Article 5(1)(a).
Presumably the identity test is only applied to 'visible' use and
not 'invisible' use, given Yahoo's free 'Reed' search term.
Secondly, it was apparent from the case that
RBI
was in no way attempting to deliberately trade on Reed's goodwill
and reputation. The unfortunate circumstances of this case came
about because two large companies, which happened to have the
common surname Reed as part of their names, had traded for many
years side by side but had slowly moved into similar spheres of the
market. It can be speculated upon that if
RBI
had
acted in a 'dishonourable' way that the outcome of this case would
have been different with the same facts before the Court. Jacob
made it clear that as well as defeating the infringement claim
under Article 5(i)(b),
RBI
could have successfully
availed itself of the 'own name defence' which he made clear
applied to company names, as well as personal names. In cases where
meta tags are deliberately being used to confuse, a court might not
be so understanding.
Summary
The controversy concerning the use of trade marks in meta tags
and banner search terms is not completely over as a result of this
case, but it has shed a considerable amount of light on these murky
questions of trade mark law.
Our services
Pinsent Masons has a dedicated Trade Marks & Designs Team,
which consists of qualified Trade Mark Attorneys. We can file and
prosecute trade mark applications across the globe and conduct
searches on potential brands and advise on risks to use in terms of
infringement.
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