By David Ellis (partner) and Agnes Wong (consultant)
A recent case in England has confirmed that using another's trade name or mark in a metatag is still an infringement of that trade mark even though that trade mark did not appear in the website or in any search results. It also went further than previous cases by stating that the statutory defence of using one's own name did not apply when using the trade name in metatags.
Reed Executive plc & Reed Solutions plc v Reed Business Information Limited, Reed Elsevier (UK) Limited & totaljobs.com Limited (2002).
Metatags are hidden pieces of HTML (hypertext markup language) code usually used on website home pages to describe the contents of the site for the benefit of search engines which search by the metatags as one method of producing search results. Metatag abuse is usually where one site contains the names of its competitors in its metatags to throw up positive search results and hence to divert traffic to its own site.
The first case in which the High Court held that a trade mark could be infringed by use of metatags was Road Tech Computer Systems Ltd. v Mandata (Management and Data Services) Ltd. in May, 2002 in the UK. Two years later, in the Reed case the High Court examined the issue in more detail, whether the legal consequences would be different if the unauthorised use of a registered trade mark was "invisible" both on the website and in the search results. They also examined whether statutory defences were equally applicable in these circumstances.
In the Road Tech Computer Systems case, Road Tech was a supplier of computer software to the haulage industry. Mandata was its competitor which had used Road Tech's registered trade marks within its metatags. Mandata was found liable for trade mark infringement and passing off with Road Tech winning quite a considerable sum of damages.
In the Reed case, the claimants, Reed Executive plc and Reed Solutions plc, were operators of reed.co.uk and proprietors of the trade mark "REED", registered in respect of employment agency services. The defendants, Reed Business Information Ltd., Reed Elsevier (UK) Ltd. and totaljobs.com Ltd. were publishers which had recently started up totaljobs.com which advertised job opportunities.
Among various complaints made by the claimants, they particularly objected to their mark being used in the defendants' website's HTML codes as a metatag as part of the defendants' name. Although this was not visible to visitors to the defendants' website, the word "REED" was used in metatags so as to maximise exposure of the defendants' website on a search by a user.
If a person uses in the course of trade a sign which is identical with a registered trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the trade mark, he infringes that trade mark. Such use must also be "trade mark use" which means that the purpose or effect of use is to indicate the trade origin of the goods or services.
There are several statutory defences to infringement. One of the defences is that a registered trade mark is not infringed by the use by a person of his own name or address, provided that the use is in accordance with honest practices in industrial or commercial matters.
In the Reed case, due to the use of the word "REED" on the defendants' website in metatags, the word "REED" was revealed in a list of search hits. The court regarded that use as "visible". The court further held that even if the word "REED" did not appear in the search hits (or in the website), it was still an infringing use. The concept of use was wide enough to cover "invisible" use in metatags. The ultimate purpose was to use the word "REED" to suggest a connection which did not exist. Hence, there was a likelihood of confusion as to the origin of trade of the mark "REED" and infringement was found. Therefore, the short test for infringement (which by itself is not conclusive) was whether the sign told the truth about the website.
Once infringement was found, the court held that the defendants were left with the usual statutory defences except the "own name" defence. The court explained that such an "invisible" use would probably not meet the statutory requirement that it has to be an honest practice in industrial or commercial matters.
In Hong Kong, use in good faith by a person of his own name is a defence to infringement, similar to the UK defence. Therefore, it is likely that the Hong Kong courts would follow the principles laid down in the Reed case. Hence, care should be taken when trying to maximise exposure of one's website and one should avoid using other's trade mark without consent in metatags.
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