Trade mark not abused by meta tag and search ads, says UK court

Recruitment agency Reed Executive plc sued publishers Reed Business Information Ltd. and others (RBI), which had moved into the on-line recruitment market with the totaljobs.com venture. The site used the "Reed" mark among the names and logos in the site's copyright notice and also as a meta tag for the site.

Meta tags are hidden words to describe the content of a web site for the benefit of search engines. However, some engines, most notably Google, do not pay attention to meta tags because so many site operators have abused meta tags over the years. Many sites would choose words simply to maximise traffic, even if the words had nothing to do with the content of the site. One form of this abuse is to use a competitor's name in your own meta tags to divert their traffic to your site.

Reed Executive argued this and also that its internet traffic had dropped after totaljobs.com launched as a result of the appearance of totaljobs.com's banner ads in search results.

Uses of the trade mark on the web site had stopped by the time the case was heard in the High Court in 2002 – but Reed Executive argued that the removal of the mark had been too slow. It added that the word "Reed" remained in the meta tags and was still being picked up by search engines.

The High Court considered that a search for "Reed jobs" or "Reed recruitment" might well lead to the appearance of totaljobs.com in the results or a banner advertisement, but that was not because of inclusion of the word "Reed", but rather the search engine's treatment of generic terms such as "jobs" or "recruitment".

As such, there was nothing legally objectionable, even if the user mistakenly thought that the result was connected to "Reed".

However, the High Court noted that totaljobs.com had used the word "Reed" as a reserved term with at least one search engine, and that would have triggered totaljobs.com's banner ad to be displayed.

RBI appealed that part of the ruling, and on Wednesday the Appeals Court found in its favour.

Lord Justice Jacob, giving the Appeal Court decision, ruled that the sign "Reed Business Information" was not identical to the registered trade mark "Reed". He wrote: "The composite is not the same as, for instance, use of the word 'Reed' in the sentence: 'Get business information from Reed.'"

In his opinion, "the average consumer would recognise the additional words as serving to differentiate the defendant from Reeds in general – this one calls itself 'Reed Business Information' because it supplies information to businesses in some unspecified way or ways."

The Court also found that although both companies published job vacancies on-line, they did not offer identical services.

It then considered the various uses of the trade mark, to see if the use could create confusion as to which company the totaljobs site belonged to.

RBI had used the term in its copyright notice – "© [year] Reed Business Information Ltd" – which was generally found at the foot of the home page on the totaljobs web site. Lord Justice Jacob found no evidence of infringement in respect of the copyright notice alone.

The term "Reed" was also used to trigger a Yahoo! banner ad. Lord Justice Jacob reasoned, "The banner itself referred only to totaljobs – there was no visible appearance of the word Reed at all."

He continued:

"The web-using member of the public knows that all sorts of banners appear when he or she does a search and they are or may be triggered by something in the search. He or she also knows that searches produce fuzzy results – results with much rubbish thrown in. 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' and Reed Employment is fanciful. No likelihood of confusion was established."

With regard to the meta tag use, Lord Justice Jacobs pointed out that even if totaljobs.com came up in a search using the words "Reed jobs", it was always underneath the reference to Reed Executive's site. He wrote:

"Obviously anyone looking for Reed Employment would find them rather than totaljobs. I am unable to see how there could be passing off. No-one is likely to be misled – there is no misrepresentation. This is equally so whether the search engine itself rendered visible the metatag or not."

Nor did the Court find any evidence of trade mark infringement – there was simply no confusion.

Finally the Court considered the use of the term in invoices, press releases and in advertising.

Again the Court found no infringement: invoices are sent to people who had used the RBI service, and would not be confused; the press releases contained "true and honest" details and were clear as to which company had released them; and the promotional material was sent only to RBI's clients, who again would not be confused.