Trademark infringements arise when a website uses the trademarks or trade names of competitors in its metatags. Rodney D. Ryder* looks at how courts have ruled to resolve these disputes

Web surfers often surf the Internet by keyword, using a search engine. These engines search through a self-created index of websites and generate a list of ‘hits’ relating to the keyword searched for. Search engines look for the keywords in domain names, the actual text of the web page and in metatags.

Metatags are HTML codes that are intended to describe the contents of a web page. The more often a term appears in a metatag, the more likely the web page associated with those metatags will appear as a search result for a search of that keyword, and the more likely it will appear higher on the list of hits. While metatags are technically invisible, in that they run ‘behind’ the website, they can be viewed on any web page by clicking on ‘view sources’.

A potential trademark infringement arises when a website contains its competitors’ trademarks or trade names in its metatags. If this practice is used, consumers may be diverted from an authorised site. For example, a web surfer may be searching using a keyword such as ‘Jet’ in order to find the airline’s website. If another airline included the word Jet in its metatags, it is possible that the other airline’s site would appear higher in the list of hits on a search for Jet than the Jet site.

Courts have ruled that the use of a trademark as a metatag is likely to cause ‘initial interest confusion’. Such confusion arises when a person is searching for a trademark owner’s website by using one of their trademarks as part of an inquiry. The person may be diverted to another website and may consider the alternative product in favour of the trademark owner’s product.

Such initial interest confusion has been found to constitute a type of misappropriation of goodwill. Interestingly, in the case of Nissan Motor Co Ltd. vs Nissan Computer Corp, the court expressly permitted the defendant to continue using the word ‘Nissan’ as a metatag, despite finding that the defendant’s domain names infringed the plaintiff’s federally-registered Nissan mark.

The court found that the likelihood of confusion may be mitigated by less restrictive measures than initially sought by the plaintiff. It asked the defendant to prominently display a statement identifying the websites as being affiliated with it, a statement disclaiming any affiliation with the plaintiff, and identifying the location of the plaintiff’s website on the first page of its website.

It should be pointed out that this is a preliminary injunction case. The defendants had co-existed for almost a decade, and while there may be some overlap in their businesses, the plaintiff is primarily an automobile manufacturer, whereas the defendant offered computer-related services.

We welcome responses to the issues raised here. Please mail your comments to this address: rd.ryder@vsnl.net