Regular people ask “If a tree falls in a forest and no one is around to hear it, does it make a sound?”
IP lawyers ask “If a trade mark is used but no one can see it, has the trade mark been infringed?”
According to Justice Kenny of the Federal Court, in this recent decision, the answer to this philosophical IP question is, no.
In this case, the Applicant claimed (amongst other things) that its former employees had infringed the Applicant’s trade marks by using certain words as ‘metatags’ on their website. A metatag is a word inserted into a piece of website source code. While metatags are invisible to the internet user, a search engine can detect these words and use them for the purpose of generating search results.
By way of summary judgment, Kenny J found that while most of the Respondents’ conduct did amount to trade mark infringement (such as the use of the trade marks on invoices, quotations, business cards, letterheads and advertising) the metatags did not. After referring to conflicting US authority, her Honour held that this conduct was not ‘use’ as a trade mark as users could not see these metatags. Therefore her Honour held that it cannot “be said that the use in a metatag of CTI’s Registered Trade Marks is a use that indicates the origin of Green Energy’s services.”
This decision can be contrasted with the Mantra case that we have previously blogged on and posted an alert on. In Mantra, the applicants did not argue that the use of certain metatags amounted to trade mark infringement but rather, that this conduct demonstrated that the respondents could not rely on the defence of good faith use of a trade mark under section 122(1)(b) of the Trade Marks Act 1995 (Cth). The applicants were successful in this argument
and the respondents were permanently restrained from using these metatags.
Accordingly, this decision (although only a summary judgment) suggests that use of a metatag may not constitute ‘use’ as a trade mark capable of giving rise to trade mark infringement. However, it remains to be seen whether such conduct, on its own, will amount to passing off and/or a breach of the Competition and Consumer Act 2010 (Cth). In this decision, the Respondents’ conduct as a whole was held to amount to misleading or deceptive conduct, false representations and passing off. Unfortunately, Kenny J did not specifically address the use of the metatags in this context. Likewise, in Mantra, there was no discussion regarding whether the respondent’s conduct amounted a breach of the former Trade Practices Act 1974 (Cth) as the applicants had obtained sufficient remedies in their trade mark infringement claim.
This decision is also interesting in the context of the currently murky area of law regarding the purchase of Google ‘Adwords’, otherwise known as ‘Keywords’. It remains unclear in Australia as to the legal implications of purchasing a trade mark as a Google Adword when the purchaser does not own that trade mark (see our previous string of posts on this issue here, here, here, here and here). If a person purchases an Adword or Keyword and that word is never seen by internet users (in that it does not appear in the search result link) can it be argued that there has been no ‘use’ of a trade mark and therefore no trade mark infringement?