Two recent cases in the High Court have highlighted the importance of registered trade marks on the internet.
ROADTECH v MANDATA
Metatags are devices inserted by a web site proprietor to enable a web page to be more easily categorised. Metatags are used by the main search engines to evaluate and index a web site. You can view the metatags on any web page by clicking the right button on your mouse and then clicking “view sources”.
One computer company (Mandata) inserted two of another computer company’s (Roadtech) trade marks, “Roadrunner” and “Roadtech”, as metatags in the web pages of its own web site. When searches were made for Roadrunner and Roadtech, some users would be directed towards Mandata’s site instead of Roadtech’s. Roadtech sued for trade mark infringement and passing off.
Mandata effectively admitted trade mark infringement and offered no defence to the passing off action. The reason for the action was essentially an argument about damages. Roadtech was successful in obtaining damages for Mandata’s unlicensed use of its trade marks and goodwill (£15,000 awarded) but was not successful in obtaining damages for diversion of business opportunities.
This case confirms shows how when valuable trade marks are employed by a third party, without the permission of the trade mark owner, with the objective of increasing or diverting traffic to a particular web site, this type of activity can be stopped in fairly short order. Whether or not a damages claim is worth pursuing to the bitter end, given the costs involved, is another matter.
MBNA.COM v MBNA.CO.UK
MBNA, the world’s largest independent credit card issuer, is locked in battle with Stephen Freeman, an advertising entrepreneur who plans to operate a banner exchange business through a web site with the domain name www.mbna.co.uk.
Citing the leading Court of Appeal case BT v One in a Million, MBNA claims that Freeman’s use of www.mbna.co.uk amounts to passing off and infringement of MBNA’s registered trade mark consisting of a stylised representation of the letters “mbna”.
Earlier this week the High Court refused MBNA an interim injunction to prevent Freeman from using any web site with a domain name including “mbna”. Freeman, who represented himself in court, was however ordered, pending trial of the claim, not to offer his domain name for sale to anyone other than MBNA.
Banner exchange businesses operate on a simple, co-operative principle. Web site owners are offered a free banner advertisement on someone else’s web site, in return for taking two advertisements for other businesses on their own web site. This enables the banner exchange business to sell one of the advertising spaces.
MBNA claims that Freeman deliberately chose “mbna” in order to increase the number of visitors to his web site. Freeman says that “mbna” stands for Marketing Banners for Net Advertising. In court he explained that it is now impossible to find a three letter acronym which has not already been registered and very difficult to find a four letter acronym. Mbna.co.uk was the nearest he could find which was descriptive of his proposed business.
Monday’s decision leaves the final outcome of the litigation wide open. An expedited trial has been ordered to enable the claim to be decided in a few months time.