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Article: Does Use of Trademark as Meta Tag Amount to Trademark Infringement?
Author: Aditi Roy Chowdhury
Introduction
In the age of internet and online shopping, for most businesses, the importance of owning a website has increased so much that it can almost be termed as a prerequisite. Websites and web-based marketing are crucial in increasing and maintaining customers. More likely than not, customers search for the relevant information using keywords in search engines like Google, Yahoo, etc. Further, customers are likely to visit the webpages reflected on the first page of search results. Therefore, using relevant and suitable meta tags becomes key in attracting footfall to a webpage. The question that arises here is that does use of third-party trademarks as meta tags amount to trademark infringement?
What are Meta Tags and why are they Important?
Meta tags are snippets of text that describe and index a webpage’s content and they form a part of the HTML code. Meta tags are not visible on the webpage per se; however, they can be found in the page’s source code. These can be of different types and not all have the same function or importance, such as “Title Tag” which forms the “title” of a webpage, “Meta Description Attribute” which reflects as a brief description of the contents of the page in the search results, etc.
Use of Third-Party Trademarks
Section 29 of the Trade Marks Act, 1999 (“Act”) deals with infringement of a trademark. Particularizing therefrom, Section 29 (8) of the Act states inter alia that a registered trademark is infringed by any advertisement of that trademark if such advertising takes unfair advantage of and is contrary to honest practices in industrial or commercial matters.
If a trademark is used as a meta tag, the website comes up whenever a customer searches for that trademark. Therefore, if business owners incorporate their competitors’ marks as their own meta tags, they can draw business away from their competitors’ websites. Since meta tags are not visible on the webpage itself, the question arises whether use of a third-party trademarks as a meta tag amounts to infringement under Section 29 of the Act.
While internationally there has not been a uniform answer to this question, in India, the Courts have answered in affirmative. For instance, in the landmark case of Kapil Wadhwa v. Samsung Electronics Co. Ltd. [194 (2012) DLT 23], a Division Bench [Pradeep Nandrajog, J. and Siddharth Mridul, J.] of the High Court of Delhi upheld the Single Judge Bench’s decision which discussed meta tagging in detail. It was held that use of third-party marks as a meta tag is illegal as it enables the defendant to ride on the reputation of the plaintiff. The trade mark used in the code as a keyword is invisible to the end-user or customer. Such use, though invisible to the customer, was held to be illegal.
Another such case is People Interactive (I) Pvt. Ltd. v. Gaurav Jerry [MIPR 2014 (3) 101], before a Single Judge Bench [G.S. Patel, J] of the High Court of Bombay, wherein the plaintiff – owner of the website Shaadi.com, approached the High Court of Bombay to restrain the defendant from using the domain name and mark ‘ShaadiHiShaadi.com’ for identical service. The Court observed that the defendant was using the plaintiff’s proprietary mark ‘shaadi.com’ and its domain name <www.shaadi.com> as part of its “meta tags”. While highlighting the role of meta tags the Court observed, “Dishonesty is writ large on the actions of the 1st Defendant. He has used the Plaintiffs’ mark shaadi.com as a suffix to another expression. He has attempted to misappropriate the Plaintiffs’ mark…He has, plainly, hijacked Internet traffic from the Plaintiffs’ site by a thoroughly dishonest and mala fide use of the Plaintiffs’ mark and name in the meta tags of his own rival website. The distinctive character of the Plaintiffs’ mark is thus diluted and compromised by the actions of the Defendant. The 1st Defendant’s action is nothing but online piracy. It cannot be permitted to continue.”
Conclusion
From analysis of above cases, it is clear that use of a third-party’s marks as meta tags amount to infringement of such marks and the Courts have restrained such use. The Courts have also noted that such use will be mala fide use of a third-party’s marks and will lead to consumer confusion. Thereby, even though use of third-party’s marks as meta tags is invisible per se, one should be careful as it may lead to an infringement or a passing-off action.
References:
1. Kapil Wadhwa v. Samsung Electronics Co. Ltd., [194 (2012) DLT 23].
2. People Interactive (I) Pvt. Ltd. v. Gaurav Jerry, [MIPR 2014 (3) 101].
Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.
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