The recent High Court decision in the Reed ‘invisible trade mark’ case has confirmed that search engine ‘optimisation’ techniques can amount to trade mark infringement and passing off even if a web site owner’s use of another person’s trade mark is invisible to people searching on the internet.
For the defendant Reed Business Information Ltd (‘RBI’), part of the Reed Elsevier publishing group, recruitment advertising is a key revenue stream. The economics of recruitment advertising, where advertisements are actively sought by their target market, have been fundamentally altered by mass access to the internet. By the mid 1990s stand-alone recruitment sites (‘job boards’) were beginning to compete directly with traditional print media and RBI’s revenues from recruitment advertising began to fall. RBI formed a plan to create what they described in a brief to advertising agency CDP as the ‘leading horizontal United Kingdom based recruitment site’ to be known as totaljobs.com.
There had always been a certain amount of confusion between Reed Elsevier and the claimants (‘Reed Employment’), a leading High Street employment agency group. This had not been confusion of the passing off variety because the two businesses, publishing and employment agencies, were quite distinct. The two groups came into conflict after RBI set up totaljobs.com. RBI was now in a similar line of business to Reed Employment and the use of its name Reed was now a legal issue.
A Reed Employment company was the registered proprietor of the trade mark REED in respect of ‘Employment Agency Services, included in Class 35’. Although RBI’s site had a completely different, generic name, the word Reed appeared on the totaljobs.com site in a visible manner in RBI’s logo, in Reed Elsevier’s logo and in the copyright line. The judge found that this gave rise to relevant confusion as to origin for the purposes of Section 10(2)(b) of the Trade Marks Act 1994 and also for the purposes of the passing off claim.
One very interesting aspect of the judgment is its dissection of various invisible uses of the word Reed in the context of RBI’s optimisation tactics. Totaljobs.com was promoted both in traditional advertising media and by means of standard web optimisation techniques. These ‘invisible matters’ became relevant when they involved use of the word Reed. Four of RBI’s methods of optimisation were considered: (1) use of the word Reed in invisible metatags on the website; (2) use of the word in directory entries; (3) banner advertisements including mock search results on purchased keywords and (4) Yahoo! banner advertising where Reed was a keyword.
The judge did not consider that every metatag use of a trade mark would necessarily amount to an infringement. The judge questioned whether users of search engines would suppose that when they searched against, say, ‘Reed jobs’, the sites shown in the search results had any connection with Reed Employment. A search including the word Reed would typically show many results having no connection with Reed Employment at all.
The judge felt that a ‘description’ metatag displayed by a search engine alongside a hit would amount to infringement if it included the trade mark. But he was less convinced that there could be infringement where material such as this did not appear on search engine results.
Banner advertisements triggered by the word Reed specified by RBI were also objectionable. However, where the trigger was the word ‘jobs’, for example, and banners came up in response to a search for ‘Reed jobs’, this could not be an infringing use.
There was an allegation of bad faith against RBI relating to its use of a robots.txt file. Although unfounded, this allegation demonstrates the sophisticated techniques with which the courts must now come to terms when dealing with the trade mark aspects of internet marketing. The suggestion that the robots.txt file on the site had some sinister purpose came apart as a result of expert evidence as to the contents of historic pages on the site. This evidence was based on material obtained from web.archive.com, a vast electronic library of sites on the internet.
The judge decided that his conclusions on passing off in relation to invisible optimisation matters mirrored his conclusions on trade mark infringement, the answer turning on whether RBI could be said to be responsible in any way for the appearance of the site in response to a search against the word Reed.