A metatag is a computer code included on a website that is invisible to an individual but which enables a search engine or a web browser to identify that website. In addition, many web pages include keyword summaries of the site's contents to increase searchability by search engines.
Metatags are usually placed on the header of the webpage. Typically, they can be viewed by right-clicking the page and choosing “view source” or “view page information” depending on the Internet browser being used.
Several disputes have occurred in the U.S. where one party uses another party's trade name or mark in its metatags to attract business and increase traffic to its web page. Some of the U.S. cases have found that such activities constitute trademark infringement under relevant U.S. legislation. But it has been suggested in at least one decision that there may be cases where such use is a legitimate use.
In a British Columbia decision that involved a labour dispute, the Court had to determine whether various versions of the defendant’s website, some of which included meta tags similar to the plaintiff’s trademarks, amounted to passing off, among other claims. The Court was not prepared to find that the most current website and its metatags constituted passing off, but an earlier version of the site was found to be objectionable, and its use constituted passing off.
In a Federal Court decision, the plaintiff sued the defendant for passing off and trademark infringement relating to the use by the defendant of the plaintiff’s trade name and trademarks in the defendant’s meta tags to attract business to its website. There was no use of any of the plaintiff’s trade names or trademarks on the defendant’s visible website, and the defendant’s website was clearly identified with it.
The trial judge referred to the fact that some United States Courts have held such use can cause “initial interest confusion.” In these cases, it was found that confusion was caused before any purchase when customers seeking a particular brand of goods or services were drawn or enticed to purchase a competitor’s goods or services through the competitor’s use of the first company’s trade name or trademark.
The judge refused to adopt that approach since he said the use of metatags in a search engine merely gives the consumer a choice of independent and distinct links they may choose from at will, rather than directing a consumer to a particular competitor. Rankings may affect the choice to be made, but a choice exists. Even if a searcher was looking for the website connected with a particular trade name or trademark, once that person reaches the website, there must be confused about the source of the entity or person providing the services or goods. If there is no likelihood of confusion regarding the source of the goods or services on the website, there is no support for a claim of passing off or infringement. Use of a competitor’s trademark or trade name in metatags does not, by itself, constitute a basis for a likelihood of confusion because the consumer is still free to choose and purchase the goods or services from the website they initially searched for. An appeal from this decision was dismissed by the Federal Court of Appeal.
In Canada, the approach taken in this decision is a significant impediment to asserting claims for trademark infringement or passing off concerning metatags.
If you have questions, please get in touch with me at mckeown@gsnh.com.
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.