The Facts
The Claimant, Reed Executive, originally a high street business including Reed Employment was the owner of a registered trade mark for REED in class 35 for Employment Agency Services. Its main business was the provision of temporary staff and the introduction of potential employers to potential employees. More recently the Claimant had operated its business through the added medium of a web site at reed.co.uk.
The Defendants had been in the publishing business using the name Reed since 1983. It published approximately 50 magazines and ran approximately 30 web sites. An important part of the publications were the recruitment advertisements they contained, indeed some of the publications consisted predominantly of job vacancy advertisements rather than editorial. As the internet developed publishers began to move into on line publishing and web sites were recognised as an important new area competing with print publications for job vacancy advertising business.
The Defendants began to operate the web site totaljobs.com for an on line job vacancy service and initially used the mark REED as part of their trading names Reed Elsevier and Reed Business Information on the web site. “Reed Business Information” was used in the metatags of their site which it was acknowledged would have an effect in calling up the site in response to a search engine request for “Reed” alone.
There was already evidence of general confusion amongst the public that the Claimants and the Defendants were related companies even before the Defendants moved into the on line job vacancy business. The Claimants brought evidence that the move by the Defendants into the on line job vacancy business heralded a change of business for the Defendants which caused increased confusion for example at trade fairs about not only the fact that the businesses were thought to be related but about what each respective business did. The Defendants applied to register TOTAL JOBS for “advertising and business information services, employment agency services and consulting services” illustrating this change of direction from publishing to something much closer to the Claimant’s area of business.
There was unsurprisingly evidence of confusion of the Defendant’s web site with the Claimants and the Defendants wishing to avoid such confusion removed all relevant references to Reed in relation to their site and metatags as far as possible by the time of trial. It was still possible due to the inertia of some search engines and web directories that some of the Defendant’s old web pages would still be brought up by a request for “Reed” but these would have been ranked well below the Claimant’s site.
The Defendants had also made arrangements to have banner ads for their total jobs site pop up at the margins of web pages when various terms like “job vacancies” and “recruitment agencies” were put into search engines. In the case of one search engine Yahoo, such an arrangement was made for when the word “Reed” was typed in.
It was generally accepted that the Defendant did not want to trade off the Claimant’s reputation for REED, but wanted instead to build up its own goodwill for employment services through the use of totaljobs.com. However, the Claimants were unhappy at the Defendant’s use of the name “Reed” even as part of trading names like Reed Business Information in relation to the totaljobs.com web site and thought the removal of references to Reed from the web site had been too slow. They sued for trade mark infringement and passing off.
Decision In General
The Defendants were found to have committed both acts of trade mark infringement and passing off.
Trade mark Infringement
Mr Justice Pumfrey noted that it had been a difficult question for him, but he held that the Defendant’s activities for an on line jobs notice board were “employment agency services” and therefore fell within the ambit of protection afforded to the Claimant by its registered mark for REED. The judge thought that the mark or sign used by the Defendant e.g. Reed Business Information was similar to the mark or sign registered by the Claimant REED and was used in relation to similar services (if indeed not identical) for which the Claimant’s trade mark was registered in circumstances where confusion had been proven sufficient to constitute trade mark infringement.
Passing off
The Defendants did not wish to cause any confusion or deception, but were aware of its likelihood. On line job vacancy web sites such as totaljobs.com were a natural development of the Defendant’s job advertisement activities, but it was a different business to traditional publishing and by moving into the new area of web site job vacancy services the Defendant had become a direct competitor of the Claimants. There was evidence that members of the public were confused into thinking that the Defendant’s web site was associated with the Claimant’s. The three elements of passing off, reputation, deception and damage had been proven.
Banner Advertisements
To the extent that the Defendants had specified the use of “Reed” to search engines for the purchase of a pop up ad for totaljobs.com this was infringement. There are no previous
Use of Own name Defence
Mr Justice Pumfrey considered the own name defence in the Reed decision and confirmed received wisdom that a Defendant may not use his own name if this results in deception or passing off. If it does there will be no defence either to an action for passing off or trade mark infringement. For the trade mark infringement defence if passing off is proved the use of the own name cannot be “in accordance with honest practices in industrial or commercial matters” as required by the own name defence to trade mark infringement in Section 11(2) of the Trade Marks Act 1994.
Comment on Decision in General
The decision in general and overall outcome as outlined above is not controversial. Unfortunately the decision goes on to make specific comments in the context of metatags which have unfortunate consequences in the author’s view for further metatag cases.
The Decision on Metatags
The decision acknowledges that use of the word “Reed” in “Reed Business Information” is trade mark use, but puts forward the view that if the only effect of use in the metatags is to allow the Defendant’s web site to appear in the list of search hits lower than the Claimant’s site and the Defendant’s web site does not use the trade mark in its web site content, that this will not be trade mark infringement and there would be no loss.
The decision also put forward the view that there would be no own name defence for metatag use of one’s own name as metatag use is invisible and in the context of trade mark infringement may not satisfy the “honest business practices” proviso.
The decision then goes on to say that as far as invisible metatag uses are concerned the Judge’s conclusion on passing off mirror his conclusion on trade mark infringement.
In the
A previous decision in the UK on metatags Road Tech Computer Systems Limited v Mandata (Management and Data Services) Limited involved competitors in the provision of computer software and related services in the road haulage industry. Roadtech owned registered trade marks for “Roadtech” and “Roadrunner” and had an award winning web site which received over 1,000 hits a day. It estimated that its Web Site brought in about 30-40% of its £5 Million per annum business. The Defendant had included the keywords Roadtech and Roadrunner in its metatags which would have some effect in bringing the site to the attention of any users looking for Roadtech. It had also arranged for the Roadtech trade marks to be present on its site, although they were invisible to the eye on the screen until printed off (because they were shown in the same colour as the background on screen). However, of course, these words were not invisible to search engines which would be even more likely as a result to locate the Mandata site if users were to search on the net for Roadtech or Roadrunner.
The Court found that although the allegation of passing off was not admitted it was not seriously challenged in the evidence and he held Roadtech was entitled to summary judgement for both trade mark infringement and passing off. Master Bowman was of the opinion that “This was a deliberate, albeit unsophisticated appropriation of the Claimant’s rights for which some compensation ought undoubtedly to be paid.”
In terms of damages the Court awarded £15,000 for the use of the trade marks and £28,000 legal costs. Mandata also had to bear its own legal costs of £26,000. Roadtech had also asked for damages in respect of lost trade, loss of reputation due to the alleged poor quality of Mandata’s web site and to pay for advertising to correct the damage that Mandata had caused. However, the Court found that there was insufficient evidence that trade had actually been diverted for there to be additional damages awarded on these grounds.
Whilst the Road Tech case was not a particularly strong precedent in the sense that the Defendant had admitted trade mark infringement and it was the decision of a Master and not a Judge, it would seem to be the correct decision in the context of a competitor seeking to draw traffic from use of a competitor’s name in metatags.
The decision in the Reed case on the other hand would allow the defendant/competitor to indulge in such conduct provided that his site did not appear in search results above the Claimant/trade mark owner’s site and he did not use the trade mark in the content on the site which appeared as a result of his conduct in search results. (The decision does not discuss if such usage on the eventual site must be visible to the user to constitute infringement or if invisible same colour on same colour background usage as occurred on the wallpaper of the Roadtech site would satisfy this criterion.)
In the author’s view, there is no clear justification in the Reed judgement why use of a competitor’s distinctive trade mark in metatags should be permitted unless a defence to trade mark infringement or passing off applies in the ordinary way. The author does not believe that just because the Defendant’s site appears below the Claimants on search results that this should give the Defendant immunity from suit. There is also no way that a defendant in the real world would get away with selling his goods under a sign bearing his competitor’s distinctive trade mark, say Brand X (without qualification), just because he knew the customer had seen genuine Brand X goods before seeing his. Even if the Competitor’s trade mark Brand X did not appear on the Defendant’s goods, the fact that the Defendant had used the distinctive sign Brand X to attract customers to sell his goods would be enough to constitute infringement or passing off unless a defence was available in the ordinary way. For this reason the author believes that the approach in the Road Tech case is to be preferred to that taken by the Court in Reed.
The author also fails to see why use of your own name in metatags should not be permitted as contrary to honest practices or because of invisibility. After all the invisibility in this context is not due to any subterfuge but is simply a feature of the way the Internet works. It is not even true invisibility as metatags on any site can be viewed by anyone by clicking on view and then source on the menu bar.
In the
(It should be noted perhaps that the own name defence would not have saved the Defendants in the Reed case from a general finding against them for trade mark infringement and passing off anyway, because they had got too close to the Claimant’s business such that their use of “Reed” for their activities was passing off and would not have been in accordance with honest practices. The own name defence would therefore not have applied to them in any event. So the author’s views on the decision on the own name defence in the context of metatags do not change the stated view of the author that the overall outcome of the decision in terms of a finding of trade mark infringement and passing off in favour of the Claimant should not be disturbed and is correct).
There are several authorities on metatags worldwide which acknowledge that there may be circumstances where use of another’s trade mark in metatags may be legitimate:
USA – Playboy v Terri Welles[3], (the glamour model Terri Welles was permitted to use Playboy’s trade marks Playboy and Playmate in metatags to indicate that she had been a former Playboy Playmate of the year)
USA – Bihari v Gross[4] (where the defendant was permitted to use the plaintiff’s mark in its metatags to bring people interested in Bihari to its site where the defendant’s intent was to criticise the plaintiff i.e. it was a free speech type case). See also similar Bally Sucks case[5]
Canada – BCAA v OEPEIU (British Columbia Automobile Association v Office & Professional Employees International Union[6] where trade union allowed to refer to claimant in metatags to indicate a strike was to take place at the Claimant’s premises).
USA – Transunion Case (where the defendant had a contract with the claimant allowing some use of trade marks and use of Claimant’s trade mark once in the metatags was allowed given the fact that the Defendant did offer credit reports from the Claimant as a legitimate part of its business.[8])
However, it is possible that overuse i.e. repetitive use of a mark many times with the aim of coming higher than the official site in any search engine results may no longer be considered merely descriptive use. See:
So competing and unfairly competitive practices will be stopped but descriptive or other fair use may not according to usual principles applicable.
In the author’s view these cases have struck the right note in finding that the usual trade mark and unfair competition laws in any particular country and any defences thereto should apply to metatag usage, just as it applies to any other kind of usage of a trade mark in the course of trade. The Trade Marks Act 1994 contains various defences such as honest descriptive and own name use which in the author’s view should apply equally to metatag usage in the
The judge seemed affected by the fact that many unrelated sites came up when the search for “Reed” was made on the Internet. In the author’s view this is irrelevant. If a bunch of clarinet sites came up in the search for “reed” this would not be infringing use. However, if someone uses a distinctive mark of a competitor in metatags for a site selling the same type of goods as the competitor or similar to goods for which the competitor has a registered trade mark without a defence e.g. descriptive use, this is clearly, in the author’s view, infringement even if the web site’s visible contents do not contain the trade mark.
The author sincerely hopes that the Reed case is appealed and that the points affecting metatag cases on needing to have the search results web site contain another infringing use of the trade mark to constitute infringement and the denial of the own name defence as a matter of course to metatag usage will be overturned on appeal as soon as possible. This would not disturb the overall correct findings in the decision of trade mark infringement and passing off in favour of the Claimant.
Dawn Osborne
Partner
Willoughby & Partners
email: dosborne@iprights.com
tel: +44 (0) 20 7345 8888
url: www.iprights.com
[1] Business Publications BV v Monster Board BV [2000]ETMR 111
[2] Nissan Motor Co., Ltd. v. Nissan Computer Corp. 289 F. Supp. 2d 1154 (C.D. Cal.), aff’d, 2000 U.S. App. LEXIS 33937 (9th Cir. Dec. 26, 2000)
[3] Playboy Enterprises Inc. v. Welles 7 F. Supp. 2d 1098 (S.D. Cal.) (preliminary injunction), aff’d, 162 F.3d 1169 (9th Cir. 1998), and 78 F. Supp. 2d 1066 (S.D. Cal. 1999) (summary judgment)
