Australia: Revisiting Meta Tagging With Intent — Sharp Practice Or Smart Practice?

Last Updated: 27 June 2008
Article by Catherine Logan

First published in LexisNexis Internet Law Bulletin, June 2008

Your client is a big corporate with a big reputation in the real world — its brand is very valuable. It doesn't need to rely on website optimisation to attract new customers.

Its trading name is a registered trade mark and is frequently used by its competitors when meta tagging their own websites. The effect of this is has been (though it is becoming less significant as search engine technology becomes more sophisticated), that when somebody searches your client's trading name, search engines such as Google will include competitors' sites in the search results, with the possibility that searchers (among them potential new customers) will be effectively diverted to the competitors' offerings.

Your client's trademark is being used as a keyword trigger

More importantly, your client's trademark is being used as a keyword trigger in the competitors' paid advertising, like Google AdWords, with the effect that the competitors' sites come up in the 'sponsored links' in the search results.

While not wanting or needing to engage in a similar practice, your client is put out by this. In fact, that is an understatement. In any real-world scenario where a third party (particularly a competitor) wants to ramp up their business by using your client's valuable intellectual property, such as its registered trading name, it would be doing it only with the consent of your client, and paying handsome licence fees or royalties for the privilege.

Your client's reputation, after all, has been built up over years of hard work and the idea that just because it is the world wide web someone else can piggyback on it is galling, to say the least. Surely, your client says, this conduct is an infringement of our trade mark or some other legal requirement and can be stopped? After all, this practice has been around now for nearly as long as the internet, well over a decade – surely I'm not the first one to complain? This article attempts to answer that question in light of current cases.

What are meta tags and keyword triggers?

Meta tags are HTML source code behind the user interface on a web page. They contain various pieces of information about the page. These may be keywords but can also include descriptions of the page and ratings.

Meta tags are invisible, unless you deliberately choose to view them by selecting 'source' or 'page source' from the view menu on a webpage. But the meta tag is what search engines have used in the past to select particular web pages in response to a user's search request. Use of meta tags, and keyword triggers in paid advertising, will determine whether that web page will be brought up in the list of results for the search of the tagged word or phrase.

Not use 'as a trade mark'

Meta tags are therefore not, in the trade mark sense, being used use as a badge of origin of the goods. In other words there is no 'use as a trade mark' such as would found an action for infringement of a registered trade mark under the Trade Marks Act 1995 (Cth) (assuming your client's trade name is a registered trade mark, of course).

The current position under UK trade mark legislation would seem to be the same in that, despite some early cases in which the practice was viewed as trade mark infringement1, it has been suggested by the full Court of Appeal in Reed2 as possibly not being a use 'in the course of trade' as the legislation requires because of the invisibility of the tags themselves, though the court reserved its opinion on this point.

In that case it was necessary for the claimant, if it was to succeed, to also show user confusion had been caused, because the phrase used as a meta tag was not identical to the claimant's tag (and was in fact a trading name of the respondent). The trial judge's finding of infringement was overturned because 'causing a site to appear in a search result, without more, does not suggest any connection with anyone else'3 and will not confuse users because they expect the results of their web searches to be littered with rubbish results. The court further stressed that the intent of the tagger is irrelevant in the context of trade mark infringement.

Passing off?

The momentary confusion and uncertainty in the mind of the consumer that this practice in its simplest form creates, is traditionally not sufficient to found a claim in what is, after all, a tort. For a claim in passing off to have any chance of success, claimants are required to prove that users have been deceived into thinking that the two competitors are connected, or at least that the alleged wrongdoer deliberately set out to mislead, deceive or cause confusion in the mind of the user, even if confusion was dispelled when the user eventually realised that he or she has accessed the competitor's website instead.

In Reed4, the first instance finding of passing off was overturned on appeal because 'No-one is likely to be misled — there is no misrepresentation'5. It was noted in the judgment that the respondent's website (which had a completely different name to the complainant's), came up below the complainant's in the search results.

Trade practices to the rescue?

If a user is directed to a competitor's web page by the use of your client's trade mark, is this misleading and deceptive conduct such as would found an action under the Trade Practices Act 1974 (Cth) (the TPA)?

The answer to this will almost certainly depend on the particular facts and circumstances of your client's case.

If, for example, the meta tag used is a trading name, and all that is achieved by the use of the meta tag is that a competitor's website comes up in a list of search results, including your client's site, then it is hard to say that the user has been misled, especially if the competitor's website is clearly marked as such.

If, on the other hand, the search results are not clear in that regard, but the competitor's listing in the results somehow suggests a connection between the competitor's listing and your client or your client's website, this is akin to the competitor hanging your client's shop front sign out the front of its online business, and as such is not only sharp practice, but amounts to engaging in misleading and deceptive conduct and making false or misleading representations in contravention of ss 52 and 53 of the TPA.

The deception has to be fairly convincing as it has often been held that a reasonable web user will not normally treat the results of a web search with any particular reliability.6

Using a product or service name as a meta tag, another common practice, is also likely to be similarly unlawful if the product or service is not actually available through the competitor's website or business, but the results suggest that it is.

The fact that the user often quickly overcomes their confusion and does not end up dealing with the competitor is not a defence for the competitor in these circumstances.7 It is well established that transitory effects do not affect the fact that the conduct is misleading and will only be relevant in considering whether or not an injunction should be granted.8

It has been suggested that the requirement for the conduct to be 'in trade or commerce' may defeat such claims, but as the use of meta tags is a marketing activity it seems to have the requisite trading or commercial character to fulfil this requirement. To suggest the use of meta tags is not conduct in trade or commerce is to fail to recognise its importance to the overall marketing strategy of the businesses that use it.

It may be a form of unpaid advertising, but is of no less significance than spam, or other direct marketing practices, and in some businesses is much more so, particularly in start-up situations where there is no access to an existing mailing list. As for it being 'unpaid', this certainly does not mean there are no resources allocated to it. On the contrary, search engine optimisation, including meta tagging, is often outsourced to specialists and the appropriate fees paid. In some businesses it may be undertaken in-house utilising dedicated staff.

The major issue for complainants to overcome in making out a misleading and deceptive conduct claim will be the substantive one of whether in fact the overall effect of the conduct is, or is likely to, mislead or deceive.

It is submitted that in this way the TPA will allow complainants to address the truly unlawful instances of this conduct (those that are likely to confuse consumers), while not outlawing those that result in the user simply being provided with more information about the market allowing comparisons to be more easily made between competitors.

Australian case study - Kailash Center for Personal Development Inc v Yoga Magik Pty Ltd

Legal precedent in Australia is thin on the ground, but it is interesting to note that in one case, Kailash Center for Personal Development Inc v Yoga Magik Pty Ltd, 9 where the owners of a website (Yoga Magik Pty Ltd and Meghan Stevens aka Gayenand) were found to have engaged in misleading and deceptive conduct in associating a third party (Jonn Mumford aka Swami Anandakapila Saraswati) with their website and the material on it.

In its final claim at the hearing the claimant did not specifically seek, and accordingly the relief ordered did not include changing the meta tags on the website so that they no longer contained Mumford's name. This was because by the time of the hearing this had already been done. The respondent had, in the period leading up to the hearing, agreed to 'remove "offending" meta tags' as part of an attempt at 'accommodating the demands of the applicants'.10

It is interesting that the meta tags aspect of the claim (which was but one of many) was recognised by the respondent as being something that she was prepared to address before the hearing.

Do those who engage in this practice recognise it as a short-term game, one which they will readily forfeit at the first sign of trouble?

The author's personal experience bears this out. I was asked to demand on behalf of a client that a website owner change their meta tagging, and found they had done so before I had the chance to send a letter of demand. This was done apparently on the strength of my client's earlier email to the website owner.

Contrast the US position

The US has been a fertile source of case law on this subject since the late 90s owing to the Lanham (Trade mark) Act (15 USC) (the Lanham Act) and what has become known as its statutory unfair competition provisions. The doctrine of initial interest confusion developed in these cases has allowed claimants to make out a prime facie case even where confusion was transitory only, though in some cases defendants have been successful in claiming fair use in their defence, where the claim was based on the trade mark infringement section of the Lanham Act.11

Section 1125 of the Lanham Act on the other hand, while it is part of a trade marks statute, to Australian eyes blends elements of ss 52 and 53 of our Trade Practices Act in a provision that prohibits the use of 'any word, term, name, symbol or device, or any combination thereof' which is likely to cause confusion as to the origin of the goods or services, or misrepresent the 'nature, characteristics, qualities or geographic origin' of the goods or services.

This section has, not surprisingly, provided a cause of action for complainants in cases where confusion is likely to arise through a party's conduct even though the elements of trade mark infringement have not been made out.

That part of the section that contains the wording giving rise to the statutoryright of civil action does not even mention trade marks. This section has been described as providing a statutory right to claim unfair competition, but it is really a much narrower remedy, relying on either confusion or misrepresentation in commerce in connection with goods and services. In other words, it is a remedy that is more akin to ss 52 and 53 of the Australian TPA than anything in the Australian trade mark law, but in fact much more prescriptive than TPA remedies.

It does appear that the US law has provided stronger protection for owners of trade names in this area over the years, but it is submitted that the existence of the TPA remedies obviates the need for Australian trade mark reform along the lines of the US trade mark legislation, particularly given the declining significance of meta tags in recent years to the way in which search engines operate.

Comparative advertising

There is no doubt that in the process of legitimate comparative advertising the addition of meta tags to a web page referring to the competitor who is being compared to a web page is unassailable under our trade marks law12 but if the content of the comparison is deleted from the web page, it is surely illegitimate to retain the meta tags.

If the remedy is not to be found under trade marks law, it is likely that the failure to remove the tags will qualify as unlawful misleading and deceptive conduct, depending of course on the overall effect of the conduct, as discussed above.

Meta data

As usual, just when the law finally starts to catch up, the use of meta tags for search engine optimisation starts to wane as search engines develop different methods of searching for and ranking search results.

However, the concepts discussed in this article may continue to be instructive when applied to meta data generally. The interactivity of modern web-based applications is giving rise to more and more services that allow subscribers to upload information onto a profile or portfolio which can then be utilised by others who are searching the site, looking to procure goods or services. 'Utilising' in this sense does not mean looking at the profile, as the full profile may be in the form of meta data, and therefore invisible to the user.

The user enters a search term, for example the name of a product or service, and because of terms that the subscriber included in the profile, is directed to a brief entry and a link to the subscriber. The use of product names as part of the profile by the subscriber in this context where the subscriber does not in fact supply those products must qualify as misleading and deceptive conduct, (if not a false and misleading representation such as would found an action under s 53 of the TPA).

To suggest that this type of conduct is acceptable because the average web user knows you can't trust search results on the internet13 is to settle for mediocrity and a lack of integrity in terms of the internet where the importance of the medium to commerce demands that the same standards be applied to it as are applied in the tangible world of business.

Sponsored links

This article has so far focused on unsponsored links, or 'organic' search results. A recent court settlement suggests that a quick look at sponsored links might be warranted.

Recently, (8 April 2008) Telstra admitted to misleading and deceptive conduct in its Trading Post business organising sponsored links via Google. The background to this litigation is neatly summarised in the ACCC's press release when it launched the case in mid - 2007:

'The ACCC is alleging that Trading Post contravened sections 52 and 53(d) of the Trade Practices Act 1974 in 2005 when the business names 'Kloster Ford' and 'Charlestown Toyota' appeared in the title of Google sponsored links to Trading Post's website. Kloster Ford and Charlestown Toyota are Newcastle car dealerships that compete against Trading Post in automotive sales.

The ACCC is also alleging that Google, by causing the Kloster Ford and Charlestown Toyota links to be published on its website, engaged in misleading and deceptive conduct in breach of section 52 of the Act.

Further, the ACCC is alleging that Google, by failing to adequately distinguish sponsored links from 'organic' search results, has engaged and continues to engage in misleading and deceptive conduct in breach of section 52 of the Act.'

Google maintains that the ACCC's claims against it in this litigation are without merit and will continue to defend them vigorously.

Where Trading Post went wrong, of course, is that the relevant trading names appeared in the headlines of the sponsored links, not just in the 'invisible' keyword triggers.

Google has long had a policy in many countries (including Australia) of investigating trade mark complaints by registered owners and if upheld, disabling the relevant keyword triggers from the ads complained of, but it will not review keyword triggers in the US and Canada, and has recently extended the US and Canada policy to the UK and Ireland.14

This policy change appears to be a reaction to the 'Mr Spicy' case recently decided by the English High Court15 in which it was held that Yahoo had not infringed the claimant's registered trade mark Mr Spicy by allowing a search for 'Mr Spicy' to produce sponsored links to two supermarkets. In that case the keyword used was actually 'spicy' but the Court held that Yahoo was not using the mark in the relevant sense and even if it had been, the trade mark owner's interests were not being affected in the relevant way to support a trade mark infringement. Note the search results did not refer at all to the claimant's business or products.

As part of the policy change, previously disabled keywords in the UK and Ireland will be reinstated (effective 5 May 2008). Google will, however, still investigate complaints against trademark use in ad text (as opposed to keywords) in all these jurisdictions.


Traders who have developed a business reputation, whether in the traditional business world or online, should be able to stop incidences of meta tagging where it infringes the consumer protection provisions of the TPA. If the result produced does not and is not likely to confuse the user, but merely provides them with an alternative source of the goods and/or services to consider, this is something that the trader with the established brand might just have to put up with, whether or not the tags used are registered trade marks.

In paid advertising, such as Google AdWords, the aggrieved trader can still (except in the US, Canada, the UK and Ireland) lodge a trade mark complaint with Google in respect of keywords that are trade marks.

Finally, it is interesting to note that Google itself advises that, apart from paid advertising, 'the best way to ensure a results listing on Google is for many other sites to link to you'. This has become the focus of those wishing to optimise organic search results, rather than relying on meta tagging.


1 Reed Executive Plc v Reed Solutions Plc [2002] EWHC 1015

2 Reed Executive Plc v Reed Business Information Ltd [2004] EWCA Civ 159.

3 Above at [148].

4 Above.

5 Above, at [147].

6 Above.

7 ACCC v Telstra Corp Ltd [2004] FCA 987; BC200404708 .

8 United Telecasters Sydney Limited v Pan Hotels International Ltd (1978) ATPR 40-085.

9 [2003] FCA 536; BC200302768.

10 Above, paragraph 36.

11 Lanham (Trademark) Act (15 USC) s 1114.

12 Trade Marks Act 1995 (Cth) s 122(d).

13 Above n 2.


15 Victor Andrew Wilson v Yahoo! UK Ltd and Overture Services Ltd [2008] EWHC 361 (Ch.) 68

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Catherine Logan
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions