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Trade Mark Infringement – If It Is Invisible, Is It An Infringement?

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By Georgie Cape, Law Clerk, MST Lawyers and Alicia Hill, Principal, MST Lawyers

A recent decision by the Full Federal Court, Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 (Accor v Liv), has widened the scope of what may constitute trade mark infringement and has practically changed the approach to the use of trade marks online. The case found that seemingly invisible meta tags, used to direct the user’s experience online, can constitute trade mark infringement.

This article explains the significant findings of the decision pertaining to meta tag use and suggests practical tips for protecting your trade mark(s) in light of this case.

What happened?

Cairns Harbour Lights Pty Ltd (CHL) developed an apartment complex known as “Harbour Lights” or “Cairns Harbour Lights” in Queensland. The complex contains a combination of apartments let by long-term tenants, as well as those let by owners on a short term basis. In 2004, CHL obtained the harbourlights.com.au and cairnsharbourlights.com domain names.

In 2004, CHL granted Mirvac Hotels Pty Ltd (Mirvac) exclusive caretaking and letting rights of both types of apartments in the complex. Mirvac was also granted a license to use CHL’s trade marks in the provision of services including the real estate, property management, letting and other services.

In 2007, apartment owner, Ms Bradnam, began operating her own short and long-term letting business in competition with Accor under the registered trade name “Harbour Lights Property Management and Sales”. She also obtained registration of various domain names that included the phrases “Harbour Lights” and “Cairns Harbour Lights” but not those registered by Mirvac.

CHL acquired registration in 2009 of the trade marks “Harbour Lights” and “Cairns Harbour Lights” in respect to services including letting and rental of apartments and hotel accommodation.

In 2009 Ms Bradnam sold her business to Liv Pty Ltd (Liv), with Ms Patalano being the sole director and shareholder. Liv operates under the registered trade name “Cairns Luxury Apartments” and advertises on various websites. Ms Patalano acquired registration of the domain name “harbourlightscairns.com.au”. This new domain name, in addition to the domain names registered under Ms Bradnam’s name, directed the viewer to Liv’s website.

Mirvac changed its name to Accor Australia & New Zealand Hospitality Pty Ltd (Accor) in 2012. Accor is a letting agent for many owners of the  CHL apartment lots which are often let to the public as holiday accommodation. Apartment owners may use Accor to arrange the letting, or use another agent, or arrange it themselves.

 The Decision

At first instance, Accor claimed the respondents (Liv, Ms Patalano and Ms Bradnam) engaged in several trade mark infringements for the phrase “Harbour Lights” in connection with letting services, additionally claiming they engaged in misleading and deceptive conduct.

This article only seeks to deal with the infringements alleged involving meta tags.

Evidence was put before the court of the source data of the respective websites controlled by Liv; this included a meta tag ‘Harbour Lights’. A meta tag does not appear on the screen (it is a part of the code used by your website); it lets the search engines (such as Google) know what the topic of the page is.  Well-worded meta tags can help make the page rank higher in search results. Accor alleged that the use of those words in the meta tag infringed their trade marks.

Liv, Ms Patalano and Ms Bradnam cross-claimed, stating CHL was not the owner of the trade marks as the use of words “Harbour Lights” and “Cairns Harbour Lights” had been in use by them prior to registration of the trade marks by CHL in 2009.

The primary judge held mostly in favour of Liv. Rangiah J found that:

(a) the “Cairns Harbour Lights” trade mark was a completely invalid registration due to a lack of distinctiveness and thus cancelled it as a trade mark; and

(b) the “Harbour Lights” registration was partly invalid due to prior use by Bradnam and amended the registration to only refer to specific services; narrower than those for which the trade mark had been originally registered.

Accor was however successful on their infringement claims in relation to the remainder of the registered trade marks, and somewhat successful on the misleading and deceptive conduct claim.

Accor appealed the decision.

On appeal, the Full Federal Court overturned the primary judge’s orders. The orders of cancellation of the trade mark “Cairns Harbour Lights” and the amendment of the registration of “Harbour Lights” were both set aside.

The Reasoning

Meta tags are text acting as code to define the contents of a web page. They are invisible to the average user and are used by search engines to direct the user to a relevant website depending on the words searched.  Meta tags can, therefore, be used as a tool to influence search results to your advantage.

Liv’s website, which had been created by an IT service provider on its behalf, used the phrase “Harbour Lights Apartments” as a meta tag.

If an individual searched for “Harbour Lights” on the internet, they might be directed to Liv’s website as a result of the meta tag. Additionally, if search users know what to look for, they can see the meta tag linked to Liv’s website.

It was found that:

(a)  a website owner may be liable for trade mark infringement even if the meta tag source code was implemented by a third party such as an IT expert (as was the case for Liv);

(b) the words were used by Liv as a business name and not merely descriptively, constituting use as a trade mark, and thus amounting to trade mark infringement pursuant to s120(1) of the Trade Marks Act 1995 (Cth).

The Full Court upheld the primary judge’s finding that the use of CHL’s trade marks in Liv’s web page meta tags amounted to trade mark infringement by Liv.

This case overturned a prior decision in Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319 which did not consider the use of meta tags an infringement.

Practical Pointers

Meta tags can be viewed by right-clicking on a web page link as it appears in the search engine and selecting “view source”.

Exercise extra caution when implementing meta tags. Upon identifying the meta tags you wish to use, search the IP Australia website to determine if any of those meta tags are registered as trade marks in the areas you wish to advertise or link your website. If the phrases are not deemed to be a registered trade mark, then you do not risk infringement in Australia. If your site is international ensure you also search any relevant trade marks register in those countries as well.

Avoid using registered trade marks as meta tags or codes to improve your website’s searchability unless you are confident that any words registered as a trade mark are only applied in a descriptive sense or is not used as a trade mark.

The best approach to reduce risk if you wish to use a registered trade mark as a meta tag is to ensure you obtain permission from the owner of that trade mark.

Business owners should advise their source code or web page creator to avoid using competitors’ registered trade marks in the back end of their website.  It would also be prudent to examine their current meta tags and make changes if needed.

Business owners can run a search on their registered trade mark(s) to ascertain the results returned by the search engine. You can then identify the meta tags used by the results to determine if another party is infringing on your registered trade mark(s). If so, consider if you have a right to demand the cessation of use of your trade mark and if after non-complying with your demands, a right to commence a claim against infringers for trade mark infringement.

If you would like to discuss any aspect of this article further, please do not hesitate to email Alicia Hill or Louise Wolf or speak to them directly by phoning +61 3 8540 0200.