Brands: Internet developments - meta-tagging - using a well-known mark to attract web users to an unrelated site

United Kingdom

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 owner.