A new problem has emerged involving the use of trade marks
belonging to others on Internet sites. "Meta-tagging" as it is
known, has been prevented by the US courts but has not yet been the
subject of legal action in this country.
Meta-tagging is a subtle way of using an attractive or well known
mark to encourage Internet users to visit an unrelated Web site.
Many of the search engines commonly used by Internet users to
locate sites allow Web site owners to list a series of key words
applicable to the contents of their site. These key words are not
visible on the face of the site but are embedded into lines of
coding and highlighted by search engines.
In the US there have been several cases in which Web site owners
have deliberately planted other people's trade marks as meta-tags
into their site to ensure that their site is brought to the
attention of anyone searching for the trade mark. For example, it
has been reported that owners of pornographic sites used the word
MIR as a meta-tag to divert users searching for Web sites about the
Mir space station. Also a US law firm has commenced trade mark
infringement proceedings against several site owners for using its
firm name as a meta-tag.
It remains to be seen whether meta-tagging would constitute trade
mark infringement in the UK. One legal problem is that the meta-tag
would not usually appear in relation to the same or similar goods
or services for which the mark was registered, in which case it
would have to be shown that the mark was a mark with a "reputation"
under Section 10(3) of the Trade Marks Act. Further, passing off
seems an unlikely remedy given that the typical Internet user is
accustomed to trawling through irrelevant information and almost
certainly will not be confused into believing that there is a
trading connection between the site owner and the trade mark