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Vol. 5 Issue No. 1

Trademarks & Brands

 United Kingdom

UK Court holds that using another's trade name or mark in a metatag is an infringement irrespective of the trademark appearing on the website or in search results

Reed Executive plc & Reed Solutions plc vs. Reed Business Information Limited, Reed Elsevier (UK) Limited & totaljobs.com Limited

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 occurs usually where a website uses the names of competitors in its metatags with the intention of diverting traffic to its own site.

The Case:

Claimants, Reed Executive plc and Reed Solutions plc, were operators of the website 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 who advertised job opportunities on website totaljobs.com.

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.

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 which the court regarded "visible" and that even if the word "REED" did not appear in the search hits (or on the website), it was still an infringing use.

The Court further held that :

  • If a person uses in the course of trade, a sign, which is identical with a registered trade mark and 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.
  • Such an "invisible" use would also probably not meet the statutory requirement of an honest practice in industrial or commercial matters.