Summary
Website operators will often embed hidden keywords known as ‘metatags’ into webpages in an effort to improve their rankings in searches for those terms. Until recently Australian courts had not deemed use of a competitor’s trade mark as a metatag to be infringement, but the recent Federal Court decision of Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 suggests a change in this approach. The decision departs from previous authority, as the court found that metatags can amount to use of a trade mark sufficient to support an infringement claim.
Decision
Metatags are short sections of text or keywords embedded in the source data of the website. This source data or HTML code is invisible to the ordinary internet user but can be used by search engines to index content and rank search results. Businesses use the keywords to attempt to improve their search rankings for relevant keywords, but this practice can prove controversial where competitors’ brand names are used in the metatags.
The case in Accor surrounded use of the plaintiff’s registered trade mark for an apartment-letting business. The defendants were sued for trade mark infringement and misleading and deceptive conduct. There were many claims of infringement, including the use of marks as part of domain names, websites, advertising, email addresses, business names and metatags. In order to make out each infringement claim, the defendant must have used the relevant name as a trade mark for the purposes of the Trade Marks Act.
At first instance, Justice Rangiah was satisfied that the defendant’s use of the plaintiff’s registered trade mark ‘Harbour Lights’ as a business name in the source data of the website constituted use as a trade mark, as it was used to distinguish its services. Further, this amounted to trade mark infringement as the trade mark used was ‘substantially identical with or deceptively similar’ to the registered trade mark and was used in a similar class of services.
Ultimately the key distinction to previous decisions is that the court found that, although the metatag was not visible to the ordinary internet user, the metatag ‘was visible to those who know what to look for’, and this source data could be printed. This line of reasoning was upheld by the Full Court on appeal without further deliberation.
Previous position
Previously Australian courts have held that use of a registered trade mark as a metatag cannot constitute trade mark infringement. Accor stands in stark contrast to cases such as Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319, where Justice Kenny stated that ‘Metatags are invisible to the ordinary internet user’ and, despite the metatags directing the user to a competing business’ website, the use of this metatag was not use as a badge of origin and therefore not use as a trade mark.
Similarly, other cases such as Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2013] FCA 563 have also discussed that metatags are invisible, as opposed to visible marks on the website, and declined to make findings of infringement.
Further afield, the courts in New Zealand have reached a different position to that in Accor. The Court of Appeal in Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd [2015] NZCA 602 found that the HTML code of a website and the metatags therein could not infringe a registered trade mark. The word ‘BATTS’ in the HTML code could not amount to use as a trade mark and could not be infringing. Even if an internet user did access the source code, the ‘words would appear to be entirely random and essentially meaningless’ amongst many other lines of code.
We have previously reported that in the recent Federal Court decision of Veda Advantage Limited v Malouf Group Enterprises Pty Limited (2016) 241 FCR 161, Justice Katzmann held that the use of trade marks as keywords in Google ‘AdWords’ did not constitute trade mark infringement. The references to the competitor were used in a descriptive sense, not as a badge of origin to indicate a connection between the two parties. Importantly, it was found that use of a sign not visible to the public is not use ‘as a trade mark’ within the meaning of the Act.
Conclusion
The new approach in Accor suggests the Court has broadened the instances where it will be willing to find trade mark infringement. Although the inherent focus appears to remain on the visibility of the trade marks, in this case the Court was satisfied that the metatags were sufficiently visible in the source data. The decision means that use of a registered trade mark as a metatag could possibly result in trade mark infringement. However, in Accor there were many uses of the registered trade mark beyond metatags which more clearly amounted to trade mark infringement, and it will be interesting to see whether future decisions may be decided on a different basis if use as a metatag is the only alleged infringement.
Irrespective of whether use of a competitor’s trade mark as a metatag strictly constitutes infringement under the Trade Marks Act, it demonstrates an intent to appropriate that competitor’s reputation, and is unlikely to be viewed favourably by the Court.
Recommendations
We recommend that businesses review the metatags in their HTML code and remove any third party trade marks.
We also recommend businesses monitor how their brands are being used by competitors, and take prompt action if they believe that their rights are being infringed.
HWL Ebsworth’s Intellectual Property team has considerable experience helping clients protect their brands by registering trade marks in Australia and abroad. Please contact a member of our team for further information on how we can assist you.
This article was written by Luke Dale, Partner, Daniel Kiley, Senior Associate and Megan Peake, Law Clerk.