Online Advertising - Can I Sue Competitors for Copying My Trademark in Websites' Metatags (Source Code Tags) to Improve Rankings in Search Engines?

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Introduction
With the advancement of technology nowadays, companies are keen to promote their goods or services through the Internet. In particular, having a strong online presence is desirable for website owners as they always want their websites to appear as the first result at Google search when the keywords of their business interest are being searched for. A successful online presence would help consumers to easily identify their products so as to stand out from the crowd.

Many companies adopt “search engine optimisation” strategies as their marketing tactics to attract online traffic. By doing so, website owners may rely on metatags to improve their rankings in the search engines’ result pages. However, it raises the question of whether a website owner would be infringing others’ rights if the metatags (the invisible data on their website) they have chosen are other’s registered trademarks?

This article explores the potential liability of website owners in copying others’ trademarks as metatags for the purpose of achieving higher ranking in search engine results.

Use of others’ trademarks as metatags in online advertising

What are metatags?
Search engines have elaborative indexing systems which can take account not only of visible information in a website but also information that never appear visibly – known as “metatags”. Metatags are words in the hypertext markup language (HTML) of a website.  They are invisible data in a website which are recognisable by search engines but not visible on screen when an Internet user views the website. To illustrate, the following text box shows a sample webpage’s description of metatag (highlighted in blue) which gives search engines a summary of what the webpage is about – “intellectual property publications”.

Search engines (e.g. Google) might use the metatags as snippets for the webpages. For Google, the snippets (i.e. intellectual property publications) are highlighted in red when they appear in the user’s query, as shown below. This would give the Internet users ideas whether the content on the website matches with what they are searching for.

Operation and significance in advertising
In Belgian Electronic Sorting Technology NV v Peelaers and another [2013] All ER (D) 191 (Jul), the Court of Justice of the European Union summarised the operation and significance of metatags in advertising as follows:

1.         they constitute a factor enabling search engines to rank the websites according to their relevance to the search term entered by the Internet user.

2.         the consequences for the use of metatags corresponding to the names of a competitor’s goods and its trade name include:

a.         when an Internet user looking for the goods of that competitor enters one of these names or that trade name in a search engine, the result displayed by it will be changed to the advantage of the user of those metatags and the link to its website will be included in the list of those results.

b.         when links to websites offering the goods of a competitor of that company are displayed, in the list of natural results, the Internet user may perceive those links as offering an alternative to the goods of that company or think that they lead to sites offering its goods.

c.         it is suggested to the Internet user who enters one of the names of a competitor’s goods and its trade names as a search term that that website is related to the search, such use must be considered as a form of representation.

Having said that, it is of no doubt that the use of metatags can be a powerful promotion strategy which aims to attract online traffic through taking advantage of the “fame” of their competitors.

Could metatagging lead to trademark infringement or passing off?
As metatags are invisible on the Internet users’ screens, would its use still be possible to amount to trademark infringement and/or passing off?

Trademark infringement
In a Court of Appeal case in the United Kingdom, Reed Executive plc and another v Reed Business Information Ltd and others [2004] R.P.C. 40, it was ruled that when no confusion was caused by the use of metatags, there would be no infringement. 

However, in a recent Hong Kong case of China National Gold Group Corporation v China (HK) Gold Group Shares Ltd HCA 699/2013 (unrep., 17 September 2013), where the plaintiff sue the defendant for using its website “www.chngold999.com” to promote retail business in the PRC. The plaintiff alleged that the defendant infringed their trademark “China Gold” by using that website and relevant metatags. The Court of First Instance held that the defendant’s act constituted trademark infringement and passing off. 

In that case, Deputy High Court Judge Mayo indicated that the case was aggravated by the material contained in the defendant’s website that included “metatags” which had the effect of giving prominence to the defendant’s material in a search engine on the Internet, and this of itself constituted trademark infringement.

In this regard, it appears that using others’ trademarks in metatags so that the website ranks higher in search engines could result in trademark infringement. 

Passing off
In Reckitt & Colman Products Ltd v Borden Inc.[1990] 1 WLR 491, the essential elements of passing off are as follows (adopted by the Court of Final Appeal in Re Ping An Securities Ltd (2009) 12 HKCFAR 808):

1.         the goodwill of the plaintiff;

2.         misrepresentation by the defendant; and

3.         the likelihood of damages.

It is Important to note that the use of metatags on its own is unlikely to constitute passing off, unless there are situations which increase the risk of confusion.  

In relation to the passing off claim in Reed Executive plc,Jacob LJ pointed out that there was evidence that if a search under the phrase “Reed jobs” was made, totaljobs (the defendant’s website) would appear below the claimants’ website in the search results.  In other words, anyone looking for Reed Employment would find the claimants rather than totaljobs, the defendant. The appeal by the defendant was allowed as Jacob LJ indicated that he was unable to see how there could be passing off. 

Discussion on the use of metatag in Hong Kong cases is scanty and it is uncertain whether Hong Kong courts would follow the principles laid down in Reed Executive plc. However, it appears from the foregoing cases that the effect of the use of metatags in generating search results is crucial in determining whether confusion is caused, and whether there is trademark infringement and/or passing-off.

Conclusion
In internet marketing, there is increasing use by advertisers of search engines to identify goods and services. Online shopping is convenient for consumers, yet, it also creates legal issues to advertisers in the use of others’ trademarks in metatags. That said, advertisers should be cautious of the risk of trademark infringement and passing off in creating the metatags. For trademark owners, they should closely monitor the use of their trademarks by other parties by conducting internet search from time to time.

 
IMPORTANT:
The law and procedure on this subject are very specialized and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
 
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Published by ONC Lawyers © 2014