Use of a competitor’s trade mark as a meta tag

Meta tags are lines of code embedded in web pages containing keywords. These keywords are used by search engines such as Google, Yahoo! and Bing to index web pages. How a web page is indexed (based on the words it contains) influences the web page’s ranking in organic searches.

In the early days of internet search engines, unscrupulous search engine optimisers used popular brand names in meta tags to divert internet traffic to their websites. These websites either provided products or services in competition with the popular brand, contained irrelevant content or were disparaging and damaging to a brand.

In response, internet search engine companies changed their algorithms to limit the influence of meta tags when ranking web pages during organic searches. These days, content, relevance and popularity are given more weight in organic search rankings. Regardless, there are still marketers who recommend and use a competitor’s brand name as a meta tag to take advantage of its popularity.

Meta tags cannot function as a badge of origin

Historically, use of another’s trade mark as a meta tag was unlikely to constitute trade mark infringement because it was not considered to be use as a badge of origin. It has been argued that since keywords in meta tags do not appear in the corresponding web page itself, they do not act as a badge of origin. This argument failed, however, in Accor Australia & New Zealand Hospitality Pty Ltd (Accor) v Liv Pty Ltd [2015] FCA 554.

This case related to the registered trade marks HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS, owned by Cairns Harbour Lights Pty Ltd (CHL). CHL licensed its trade marks to Accor, who provide on-site letting services. CHL and Accor accused Liv Pty Ltd (Liv) of infringing CHL’s rights under the Trade Marks Act 1995 (Cth). One of things complained of was Liv’s use of phrases that were substantially identical to CHL’s trade marks in the source data of one of Liv’s websites.

The primary judge, Rangaih J accepted a print out of the website’s source data as evidence showing that the phrase HARBOUR LIGHTS was used three times in the source data.  The first use of the phrase was next to the ‘title’ command which referred to “Cairns Luxury Accommodation – Waterfront Apartments – Harbour Lights – Cairns Queensland”. The second use of the phrase was after the ‘keyword’ command together with other phrases. The third was use of the phrase was in this way:

“content = Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short term rental”.

It was found that use of the phrase HARBOUR LIGHTS in the title and as a keyword was merely descriptive and did not constitute trade mark infringement. However, use of the phrase HARBOUR LIGHTS APARTMENT following the content command is use of the phrase as a business name. It represented that Harbour Lights Apartments was a business offering accommodation and short-term rentals and operates as a badge of origin to distinguish Liv’s services from those of others.

In relation to the argument that the phrase HARBOUR LIGHTS APARTMENT was not visible to consumers on the actual web page, Rangaih J indicated that the phrase “was visible to those who know what to look for, underlay Liv’s website and influences search results”.

On the argument that the words within the source data were not within Liv’s control, Rangaih J highlighted the following:

  • Liv engaged an IT consultant to create the website;
  • Liv operated the website; and
  • Liv changed the website’s content from time to time.

Based on the above, Rangaih J inferred that the IT consultant must have included those words with Liv’s acquiescence.

On appeal, the Full Federal Court affirmed Rangaih J’s decision, demonstrating that in some circumstances use of another’s trade mark as a meta tag may constitute trade mark infringement.

Conclusion

The decision in the Accor cases has understandably piqued the interest of commentators, especially in relation to trade mark law’s applicability in online environments. Website owners, website developers and digital marketers should be cautious when implementing digital marketing campaigns. A website owner should seek further advice if it uses a competitor’s brand or trade mark in its website. If there is new branding, it is the website owner’s responsibility to conduct clearance searching to ensure that the use of new branding does not infringe somebody else’s intellectual property rights.

The key takeaways are:

  1. Use of a trade mark as a meta tag or in the source data may constitute trade mark infringement.
  2. The owner of a website may infringe a trade mark regardless of lack of evidence of control over the words used as a meta tag or in the source data underlying the website.
  3. It is the website’s owner’s responsibility to ensure that its use of any brand or trade mark does not infringe somebody else’s intellectual property rights.

If you have any queries or would like further information regarding this article, please contact:

Simon McDonald
Partner
M: 0402 843 198
E: smcdonald@pageseager.com.au

Raya Barcelon
Lawyer
M: 0414 202 704
E: rbarcelon@pageseager.com.au

Published: 15 November 2017

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