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 There is a chance that the law has changed, or the facts of this article may have been superseded.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.
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).
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.
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.
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.
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.