Trade secrets: How trade mark law deals with metatags and adwords

Trade mark law is still playing catch-up with e-commerce. Modern forms of trade mark protection have been in existence since the mid nineteenth century and are perfectly capable of regulating the use of brands in conventional trading situations, but are they good enough to deal with the use of brands in e-commerce?

Advertisement

The importance of the interaction of trade mark law and the worldwide web is aptly shown by the example of Google, one of its success stories. Google’s main revenue stream is the sale of adwords via its search engine. However, Google has become involved in a series of legal disputes in the US and Europe, when the adwords it has sold consisted of registered trade marks. Your website is often your portal to the world and enables you to promote your brands across the globe. Can you then use your competitors' trade mark in the metatags on your website? More importantly what can you do to stop your business becoming a victim of such practices?

Trade marks buried in metatags
Trade mark registrations are powerful legal weapons. A trade mark registration gives the proprietor of the registration the exclusive right to use that term in the course of trade. Subject to a number of limitations, a trade mark registration is infringed by using a term which is identical or similar to the registered trade mark in relation to goods and services which are identical or similar to the goods and services for which the registration is granted.

Straightforward you might say. But it is not. What happens when the trade mark is not being used in the visible text of the website, but is invisible in a metatag? What happens when an adword triggers the appearance of a website in a Google search list or as a sponsored link which makes no visible reference to the registered trade mark?

A number of recent cases across the globe have shed some light on these tricky questions.

Sites triggered by trade marks in adwords
In the US, Google has had some success in defeating various adword actions. At the end of last year, Google was partially successful in defeating a claim from Geico Corp, an insurance firm, concerning the sale of Geico’s registered trade marks as adwords. However, the claim was only defeated in relation to the triggering of sites which made no visible use of the registered marks or Geico. The case continues with regards the triggering of sites which make visible use of Geico’s trade marks. Actions in the US against Google have also been launched by American Blind and Wallpaper and Pets Warehouse.

Google’s troubles don’t stop there. Infringement actions have been launched in Germany against Google and the picture is even bleaker in France where Google has recently lost two adword cases.

In April, the Court of Appeal in Versailles upheld a decision against Google regarding its sponsored links programme. Online travel agents Luteciel and Viaticum operated websites La Bourse Des Vols (“flight market”) and La Bourse des Voyages (“travel market”) and Google had sold the term ‘bourse des voyages’ and ‘BDV’ to Lucteciel’s competitors as a trigger for sponsored links to the competitors websites. Google suffered a similar defeat when it sold the trade marks of Louis Vuitton Malletier’s SA as search terms to a trader which triggered links to sites selling counterfeit Louis Vuitton products. Overture Inc also lost an adword case in January of this year in France.

What conclusions are to be drawn from these adword cases? Well in the US and the UK it would appear that the sale of trade marks as adwords to competitors is allowable, where that adword triggers sponsored links to sites which do not make any references to the trade marks under consideration or that of the proprietor of those marks. The courts seem to accept that there is much clutter in search results and the public does not make an automatic association between the sponsored link and the adword term.

Nevertheless, a warning does come with this conclusion in that the outcome of adword cases does seem to be very dependent on the circumstances of individual cases. If a trade mark proprietor can show that the public is making some form of association between the trade mark proprietor and the triggered site, then infringement can be found. In France this would definitely appear to be the case and even adword sponsored links to sites which make no reference to a registered trade mark whatsoever would appear unlawful.

Undoubtedly, where an adword triggers a link to a site which does make reference to the mark and/or its proprietor then it is quite possible that this will be held as trade mark infringement.

So what do you do to protect yourself from falling victim from a competitor appropriating your brand as adword terms? Well at the very least you should register your brands as registered trade marks. If you do not register your marks then you lose one important weapon in your legal armoury. Further, in the case of most of continental Europe which does not follow common law systems, the only way to protect your brand is it to register it. Also, keep an eye out in search listings for competitors websites and ask the question why are they there? Are they triggered by the use of your brands?

A famous example: the Reed case
In the United Kingdom probably the most well known case concerning the use of trade marks in metatags is that of Reed Executive plc and Reed Solutions plc vs. Reed Business Information Limited (“the Reed Case”).

The Reed case established that the use of a registered trade mark in a metatag does not always constitute trade mark infringement or passing off. Reed concerned the case of the use of the mark Reed Business Information in a metatag on a website entitled totaljobs.com which made no visible use to the word Reed, apart from in a small copyright notice at the foot of the website. The mark Reed was a registered trade mark of Reed Solutions plc, which formed part of the same group of companies as Reed Executive plc and was used in relation to its Reed Employment website.

When the marks under consideration are not identical, as in the case of Reed Business Information and Reed, you have to prove confusion in the marketplace to succeed in an infringement action. It was found no such confusion occurred because of the existence of the word Reed Business Information in a metatag on the totaljobs.com website.

The totaljobs.com website never appeared above the Reed Employment site, when the search term “Reed Employment” was used in search engines. The judge hearing the case placed great emphasis on the “clutter” of irrelevant sites, which often appear in search engine results. Further, Reed Executive and Reed Business Information had traded for many years side by side in different markets.

The Reed case indicates that the use of ‘invisible’ trade marks in the form of metatags cannot be considered in isolation from the associated ‘visible’ uses of the same trade marks on websites. If a defendant can show that as a result of their visible use of terms or trade marks that purchasers are not being confused into thinking that they are the plaintiffs, then trade mark infringement appears hard to establish.

Similar conclusions appear to have been upheld in various US cases, the United States Court of Appeal for the Seventh Circuit in a case concerning the use of the trade mark Copitrak emphasised that use of trade marks in metatags was not objectionable per se.

“It is not the case that trade marks can never appear in metatags, but they may only do so where a legitimate use of the trade mark is being made”.

Although the Reed and Copitrak cases imply that the use of a competitor’s trade mark in a metatag is fair game, this would be a rash conclusion to draw.

In the words of the US Victoria’s Secrets Judgement, if a defendant is using a metatag term in a “bait and switch” scheme to lure users who are searching for the plaintiff’s goods, then infringement and passing off is likely to be found. It was very apparent that the Reed case did not concern the deliberate use of a trade mark of another trader to “lure” traffic to a particular website and also the outcome may have been different if the Reed Business Information mark had been identical to the registered mark Reed and thus confusion need not have been proven in the marketplace.

If you find a competitor using your brand in a metatag with the deliberate intention of drawing custom to their website, then you will have a cause for action. Furthermore, it goes without saying that you should register your brand as a registered trade mark at the very least.

Complicated, but filing a trade mark is not expensive
The interaction of trade mark law and the web is complicated by the fact that trade mark law is by definition limited to particular jurisdictions and this means that case law is to an extent contradictory across the globe - just compare the tough stance of the French courts against the more liberal US and UK viewpoints.

However, the golden rule is to keep an eagle eye out for the appearance of competitor websites in search results for your brands - and above all register your brands. The cost of filing a trade mark application in the UK for example covering a limited range of goods or services is only around 400 pounds, and in most cases such an application can be taken through to grant for no more than 200 pounds.

Your name may take years to build up, but it only takes a single click on a competitor's website to destroy it, and for a few hundred pounds you can go a long way to stop this happening.

This article was written by Lee Curtis, a trade mark attorney at Pinsent Masons.

Any comments on this article? Email the editor at Editor@TheChilli.com

© Chilli Publishing Ltd 2004

05MAY2005