Meta tagging and trademark infringement

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The key function of a trademark is to indicate the source or origin of goods and services. Trademark is protected under the Trademarks Act, 1999 in India, where a registered trademark is infringed (Section 29 of the Act) by a person who not being a registered proprietor of the mark uses in the course of trade a mark similar or identical to such registered trademark, when in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark, or if the TM is identical with or similar to the registered trade mark [Sec 29(4) (a)].

Under the Lanham Act (Federal Trademark Act, 1946), a person can be liable for trademark infringement if he or she, without the permission of the trademark owner, “use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive ….” 15 U.S.C. §1114(1)(a).

Infringing Meta Tags

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High Court of Delhi, in the case of Yahoo v. Akash Arora, said that: “Even if an individual is a sophisticated user of the Internet, he may be an unsophisticated consumer of information and such a person may find his/her way to the defendant Internet site which provides almost similar type of information as that of the plaintiff and thereby confusion could be created in the mind of the said person who intends to visit the Internet site of the plaintiff, but, in fact reaches the Internet site of the defendant.”

InBrookfield Communications vs. West Coast Entertainment, site called ‘westcost' run by defendant, it used term “moviebuff” in its keywords, which was in fact registered in plaintiff's name (Brookfield). Even though the defendant owned the domain moviebuff.com, court held that the use of registered TM in keywords amounted to a distraction of traffic from plaintiff's site and amounted to unauthorized use of registered TM and thus amount to infringement.

In Oppedahl & Larson v. Advanced Concepts, defendant was using domain names of a firm (oppedahl and larson) as meta tags of it website without clear reasons and authorization. But it was with the impression that the defendant supposing to divert the traffic, that actually might not visit his site. Honorable court banned the use of such use without use of sufficient authorization and issued permanent injunction, on the basis of unfair competition under Lanham Act (US Trademark Act).

In Insituform Technologies Inc. v. National Environtech Group, L.L.C. the court imposed a prohibition on National Environtech, for using the claimant's name and trademarked products call ‘Insituform' and ‘Insitupipe' in its meta tags. Clear position on trade mark laws and related meta tags is provided in number of playboy (TM) related cases i.e. In Playboy Enterprises Inc. v. Calvin Designer Label playboy is already a registered TM of Playboy Enterprises Inc, the defendants sent multiple mails (messages) indiscriminately to multiple individuals and newspapers with their web pages with the trademarks Playboy and Playmate, for numbers of time on its websites called "playboyxxx.com" and "playmatelive.com". The court found that even if the violation was invisible to the public, there is trademark law violation under the trademark principles of the Lanham Act, on the basis of the intensity of trademark theory. In Playboy Enterprises Inc. v. AsiaFocus International and Internet Promotional a site called 'clickthrough', guiding people towards porn sites. Court held the defendant liable for Three Million USD, stated against TM violator that, ‘by through national and international advertisement and promotions, defendant has acquired a goodwill and secondary meaning, such that people has come to such conclusion and started associating "Playmate" and "Playboy" trademarks exclusively with [Playboy Enterprises]".

In the case Eli Lilly & Company v. Natural Answers, Inc., 233 F.3d 456 (7th Cir. 2000), Company called ‘Natural Answer' used to advertise its ‘Herbscriptions line' in its website very solely. Website also contains a column labeled “Think Herbs - not drugs!” that states, "Don't get your prescriptions filled with drugs . . . Get your Herbscriptions filled with Nature!", website also features a table "Herbs v. Drugs". In addition to that, until Dec, 1999 Natural Answer's products with a generic "Drug Alternative." In addition, until December 1999, Natural Answers'

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Web site contain a source code which incorporated the term "Prozac" as a metatag, and described HERBROZAC as "a authoritative, and effective all-natural and herbal formula alternative to the recommended drug Prozac." Internet search engines understand source codes, which are not straight away visible to an Internet user, in rejoinder to search queries. Natural Answers' use of "Prozac" as a metatag was an attempt to direct Internet users searching for information on PROZACþ to Natural Answers' Web site. This effort apparently was unsuccessful, however, because searchers entering the keyword "Prozac" were swamped with Web sites containing a greater number of references to PROZACþ. Natural Answers removed the term "Prozac" from its source codes in response to this lawsuit.”

Permissible Uses Of Trademarks In Meta Tags

“Not every meta tag use of another company's trademark is illegal.” When the trademark is used only to portray the goods or services of a company, or their geographic origin or defendant has used plaintiffs trademarks in good faith to index the substance of its website, this is permitted under trademark law as a "fair use", but, there is unfortunately no clear test for proving fair use.

For example, if a site called tropicalarts.com distributes literature and music from the Amazon region, it may use the word "amazon" in its meta tags. This use would not infringe the Amazon.com trademark because the term "amazon" is being accurately used to describe the goods offered at Tropicalarts.

In Playboy Enterprises, Inc. v. Welles, 7 F. Supp. 2d 1098 (Cal. S.D. 1998), a woman who was a former Playmate of the Year inPlayboymagazine was permitted to use those marks in the meta tags of her Web site to index and describe the content of her Web site, thus This use of Playboy's trademarks was permitted because Ms. Welles was using the terms to describe herself and to properly index the pages.

Conclusion

But is the TM is not registered, tort of passing off is committed (under sec 27), when offending trader (advertiser) applies an established trademark in such a manner so as to cause confusion or deception in the mind of the consumers regarding the source or origin of the goods. There has to be wrongful misrepresentation of product to ultimate customers and they (customer) must to maintain the case of passing off plaintiff must proof that:-

  • There is goodwill associated with the mark
  • There is misrepresentation of the mark and
  • There is confusion or likelihood of confusion or deception.