Meta Tags - Passing Off

padser

Hey, looking for thoughts on whether or not meta tag usage of registered or unregistered trade marks constitutes passing off. Im almost certain there is caselaw on the subject indicating that it can. I will be checking up Bob Clarkes book on the subject but was wondering if anyone has any other ideas. Primarily interested in Irish, UK, EU or WIPO rulings or articles however will read anything.

Also wondering if you are for example pay a search engine for an add whether using a trade mark here could or would constitute passing off.

Thanks

EDIT: Just found Playboy Enterprises, Inc. v. Calvin Designer Label

focusing

Well, the Case Law from the courts in these islands is non-existant, but the decision of Nominet UK Dispute Resolution Service in Seiko UK Limited v. Designer Time/Wanderweb (DRS 00248) is interesting:

Meta-tags, however, are not exclusive. They are lists of keywords included in the coding of a web-page for the benefit of search engines, although they are not normally visible to a user when the web-page itself is displayed. They may nonetheless be considered as fulfilling the function of the virtual equivalent of shop window adverts. Any legitimate trader, therefore, might reasonably use trade marks of the goods it sells as meta-tags. Such use would appear to properly fulfil the purpose of identifying the kind of goods or services on offer (cf. TMA 1994 s11(2)(b). Any legitimate retailer can use meta-tags and there is no inherently unfair exclusive advantage for one relative to another.

If you sell a product legitimately, you can use the Meta Tag.

I'd say if you sold a competitor's product, there'd be a stateable case for passing off though.

sh_o

This has been considered a few times in the UK - Out-law.com carries regular reports on these.
Take a look at the following which sets the tone:
http://out-law.com/page-6776
http://out-law.com/page-5139
http://out-law.com/page-677
http://out-law.com/page-4355

Some US authorities:
http://www.internetcases.com/archives/2006/05/court_enjoins_u.html
http://www.internetcases.com/archives/2006/03/buying_competit_1.html

Hope this helps

padser

focusing wrote:

If you sell a product legitimately, you can use the Meta Tag.

To clarify, I am asking about the situation where for example you set up a website selling books, and encode the meta tag 'amazon' into your site. Thus a search for 'amazon' and 'books' would turn up your website (albeit in this example as well as amazon.com).

I am not referring to a situation where you set up for example where Tesco.ie encodes 'cadbury' as a meta tag to indicate that they sell cadbury chocolate.

Sh_o, thanks I will read those cases now

focusing

focusing wrote:

If you sell a product legitimately, you can use the Meta Tag.

I'd say if you sold a competitor's product, there'd be a stateable case for passing off though.

So if you are an agent for Amazon, its ok.

If you're a competitor, with no relationship with Amazon, it's not ok.

Mortmain

Padser, I don't know if the situation you mentioned (amazon, books etc.) would constitute passing off. Whilst there is considerable judicial and academic debate regarding the requirements of misrepresentation (look at the move towards misappropriation in Australia - Hogan cases and the U.S.) and a common course of trade (seems to have been done away with in Irvine v Talksport) the requirement to show damage to goodwill seems to be gaining strength. In the example you give, unless you putting yourself forward as being somehow connected with Amazon and your actions contributed to a diminution or dilution of Amazon's goodwill, I can't see that a valid cause of action would lie.

Despite the fact that many people - myself included - believe that passing off, as a judge made tort which seeks to protect the ever-changing face of commerce, should be capable of adapting to keep abreast of such changes, I doubt the courts would be willing to find that a cause of action exists in the situation you envisage, absent the use of a trade mark or get up, one would simply be using a word. This would undoubtedly prove a step too far for this jurisdiction.