Reed Executive plc v Reed Business Information Ltd 20 May 2002 (unreported). We’d have settled for a straightforward “word stuffing” case, such is the lack of judicial comment on the subject in the UK. Instead this High Court judgment gives us metatags with a twist. The claims for trade mark infringement and passing off brought by the Reed Recruitment Group against Reed the publishers succeeded only to the extent that the uses made by the publishers did not accord with honest practices in industrial or commercial matters so as to deny them the own name defence under s 11(2) of the Trade Marks Act 1994. However, the publishers’ attempt to rely on the defence allowed the judge, Pumfrey J, to explore the boundaries between the honest and dishonest uses of non-generic metatags and key words in the content of a web site, and in relation to banner advertising and other contractual arrangements with search engines.
The dispute
Reed the recruitment agents owned the trade mark “REED” registered in respect of employment agency services in class 35. They issued proceedings for trade mark infringement and passing off in relation to the use of their mark in connection with a web site at www.totaljobs.com run by Reed the publishers. The word “REED” was used initially on the web site as part of the combinations of “Reed Elsevier” and “Reed Business Information”, both to indicate the origin of the web site and as an indication of the copyright owner. The word “REED” also appeared in the source code of the web site as one of the list of metatags. As the dispute unfolded Reed the publishers took steps to remove Reed from the web site but according to the claimants did so far too slowly with the result that they acquired goodwill in part by trade mark infringement and by passing off.
The claimants also objected to certain other activities of the publishers distinct from those relating to the content of the web site. These consisted of contracting with various search engines to display either banner ads or “fake” search results specifying totaljobs.com when a user of the search engine in question typed in certain words reserved by Reed the publishers. In one case, on Yahoo!, the word “REED” was reserved. In other cases, Reed the publishers paid to have their banners or fake search results displayed when the user typed in words like “jobs, job vacancies, job search, CV, employment agencies, curriculum vitae, jobs UK, job centre, job agencies, employment agency, recruitment agencies, graduate recruitment, or recruitment”.
The issues
You may have guessed by now that Reed the publishers had decided to branch out into recruitment, a form of business which lends itself particularly well to the internet. However, the unorthodoxy that internet trading often brings to traditional business models led Reed the publishers to argue that the claimant’s trade mark was not wide enough to catch the services provided by them on totaljobs.com, so as to defeat an “identical goods, identical mark” claim under s 10(1) of the 1994 Act. Apart from this issue, the publishers also argued that there was an insufficient likelihood of confusion to give rise to a claim under s 10(2) for use of the mark in relation to similar services, and that their use of the word REED, in the context in which it was used, did not make a relevant misrepresentation to the interested public resulting in damage to the claimants’ goodwill. Additionally, the publishers argued that they were entitled to the own name defence under s 11(2) of the 1994 Act, an issue which the judge found complex enough to suggest that it warranted a reference to the European Court of Justice at some stage.
Metatags and search engines
At this point it is worth reminding ourselves of the use to which metatags are put. Search engine indexes are generated by spiders, programs which crawl over the web collecting information including words and web addresses which are stored and used by the search engine to locate web pages containing a specified word or words. Metatags are codes which form part of the HTML language in which web pages are written. Metatags are not displayed by the browser. One of their purposes is to provide lists of words for spiders to index. Web sites can be structured so that they come high in rankings for certain specified search terms. This is called “web site optimisation”. In this way, were a web site owner to place a competitor’s name in his list of metatags, that might enable his site to appear even on an unambiguous search for the competitor’s name.
Reed the publishers had been using the word REED as part of the phrase “Reed Business Information” in the title, description and keywords metatags for this purpose. On the evidence, the judge thought that it would probably improve the ranking of totaljobs.com if the user carried out a search merely using the word “REED”. However, the searches relied on by the claimants were against “Reed Jobs” which the judge conceded caused some difficulty because of the inclusion of the word “jobs”. The web site also used banner advertising extensively. This sort of advertising can be arranged with a search engine provider on the basis of a certain number of page impressions of an advertisement in respect of prescribed keywords. Reed the publishers took advantage of this service so that if a user typed the phrase “Reed Recruitment Agency”, “Reed Employment” or “Reed Jobs” in a search engine window, he or she might be presented with a totaljobs.com banner ad. However, the judge was at pains to emphasise that this was not because of the use of the word “REED”. It was because of the use of the reserved words like “jobs”, “job vacancies”, etc.
When the dispute arose Reed the publishers began to dismantle some of these strategies and by the time of the trial a search on “Reed jobs” was unlikely to elicit totaljobs.com at all, and if it did all the evidence showed that it would be ranked well below the claimants’ own site, reed.co.uk. The judge, however, did draw the inference that the word “REED” was not finally eliminated from the working parts of the site until later and odd pages may have continued to contain it in a form in which it might be spidered. Another interesting point, although the judge did not discuss it in detail, was that it was recognised that the “inertia” of the search engines was undoubtedly part of the cause of the continued production of totaljobs.com in response to “Reed jobs”.
Infringement
He said that the correct approach in relation to the identity of the marks in question was to consider whether the defendants’ sign differed from the claimants’ mark only by additional matter which did not change the identity of the sign to the mark. He was clearly unsettled by the opinion of Advocate General Jacobs in Case C-291/00 SA Société LTG Diffusion v SA Sadas, specifically the notion that a mere change of type to one noticeably different from that registered would be sufficient to render the mark and the sign merely similar as would the addition of another name.
He also had difficulty in reaching a clear conclusion on whether totaljobs.com came within the specification of services for which the claimant’s mark was registered. Nevertheless, he decided that the better view was that the services provided by totaljobs.com were employment agency services, totaljobs.com acted as go-between between clients and candidates, whilst not providing individual matching by an independent consultant as was the claimants’ practice.
However, the judge was more confident in his assessment of the claim under s 10(2). He took the view that the services were similar and the mark and sign were similar, and that the claimants had demonstrated a substantial reputation in the word “REED” with the general public and the provision of job vacancies. On the evidence, the confusion as to origin caused by the defendants’ use of the word “REED” in the logos and copyright lines was capable of causing relevant confusion. With regard to these visible elements, the judge was also satisfied that there was no own name defence available since, whether or not the defendants intended to deceive, objectively the use of the word REED in these instances was deceptive and could not therefore be said to be in accordance with honest practices in commercial matters.
Invisible elements (more interestingly.)
Both ss 10(1) and 10(2) require use of the sign in the course of trade for there to be infringement. The judge was satisfied that the concept of use was wide enough to cover invisible use in metatags where that use was visible in the search results. However, the judge was uncertain of the relevance of the use if its only effect was to allow the defendants’ web site to appear in the list of search hits but lower than the claimants’ web site, provided that the defendants’ site did not use the word when it was accessed. The judge queried whether the user of a web search engine supposed that when he or she searched against “Reed jobs” the sites raised had any connection with the claimants. A search including the word “REED” would inevitably throw up results having no connection with the claimants at all.
In this vein, the judge was minded to place more significance on the use of words in description metatags since these would be displayed by the search engine alongside the result. He was satisfied that totaljobs had infringed the REED trade mark in this way. It was a question of whether the sign in the metatag was being used to suggest that the site was to be treated in a manner appropriate to the way in which the trade mark owner’s site should be treated. The short test, which the judge said should be applied with caution, was whether the sign told the truth about the site. The judge also felt that the s 11 own name defence would not be available in relation to an invisible use simply because of its invisibility.
The judge found the banner ads acceptable provided they were not triggered by the word “Reed” specified by the defendants. If they did not specify “Reed”, the fact that they purchased “jobs” and then came up in a search for “Reed jobs” with a banner was not due to any use of the sign “REED” by them and could not be infringement.
The judge also felt that it would not normally be possible to prove loss merely by virtue of the fact that the site appeared on a particular search, if nothing in the search results or in the site itself used the infringing sign. Merely to present the site at some point in a list of results would not be sufficient.
Passing off and conclusion
Finally, while the judge conceded that this was not a case of deliberate passing off in the sense of causing confusion in the hope of taking business away from the claimants, he felt that the defendants were aware of the possibility of confusion and had a duty to minimise or eliminate it when they moved into the field of recruitment. The judge felt that the evidence of a risk of passing off was strong in those cases where he had identified infringement, with the exception of the metatags. As far as the invisible uses were concerned, both infringement and passing off turned on the question of whether the defendants could be said to be responsible in any way for the appearance of the web site in response to a search against “Reed”, and, if so, what the nature of that responsibility was.
Apart from the own name scenario what is particularly interesting about the case is the distinction the judge draws between the different types of metatags and the importance he attributes to whether the metatag use caused the sign to pitch up visibly in the search results. The judge’s test appears to be, did the use of the sign result in a representation of the defendants’ site that was truthful? However, is this entirely helpful? Being economical with the truth is often the subtlest form of misrepresentation. But then being objectively truthful involves an element of chance. This point relates to web site optimisation. There are subtle differences in how search engines operate. Optimisation could mean different things for different search engines with the same strategy resulting in very high search result rankings on some and much lower rankings on others. How viable is it to place upon web site operators the burden of ensuring that the use of their own name in metatags does not, objectively, amount to misuse of a competitor’s sign? Mr Justice Pumfrey may have opened a can of worms.
