Using trade marks as keywords and metatags on the internet: An Australian perspective

With the rise in prominence of the internet as both an advertising medium and a vehicle for online retailing services, there has been much worldwide controversy by trade mark owners surrounding the use by competitors and counterfeiters of their trade marks as a keyword and/or metatag in internet advertising.

Keywords and metatags can be explained in simple terms as computer code contained in a web page that is not visible to internet users but provides indexing information for internet search engines. Keywords are often purchased by website operators from internet search engines in order to have their website prioritised in search results for that keyword. These results appear before the genuine search results and are usually identified by descriptions such as "sponsored links" (Google).

In Australia, the question to be addressed in determining whether trade mark infringement has occurred is whether use of the trade mark as a keyword or metatag is use of a sign to indicate the origin of goods and/or services. The answer to that question has not yet been clearly established in Australia. Despite this, the use by a trade mark owner's competitors or counterfeiters of its trade mark as a keyword or metatag remains a source of frustration and continues to be perceived as providing an unfair commercial advantage.

Trade mark owners should therefore bear in mind that relief may be available to them by utilising the complaints procedure of the relevant internet search engine. For example, in Australia upon receipt of a complaint from a trade mark owner that its trade mark is being infringed, Google will investigate the content of the identified website and any related keywords and require removal of any unauthorised use of another party's trade mark.

What this issue does clearly highlight is the need for trade mark owners to remain diligent in monitoring the market place for use by other parties of its trade marks and to take active steps to protect their intellectual property.

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.