Hidden problems in protecting your trademark

The judgment in favour of RBI related to that company’s "totaljobs.com" website. Sometime ago RBI moved into the online recruitment market using its totaljobs.com website vehicle. Reed Executive, a recruitment agency, owns the registered trademark "Reed" for employment agency services. Both Reed Executive and RBI are well known names. Despite occasional confusion, both had managed to co-exist.

RBI’s totaljobs.com site used the name "Reed" in the hidden code within the website known as metatags and also in the copyright notice. The court found no evidence of infringement in respect of the copyright notice and most lawyers would agree with this finding.

Reed Executive had also accused RBI of trademark infringement. There are two ways in which an owner can win a trademark infringement case. The first is to show that the other party is using a sign which is identical to the trademark owner’s mark in relation to goods or services which are identical to those for which the owner’s mark is registered.

The alternative is to show that, where the marks or the goods/services are not identical, there is a likelihood of confusion.

As I mentioned, Reed Executive owns the registered trademark "Reed" for employment agency services. RBI’s marks were "Reed Elsevier" and "Reed Business Information". The appeal court did not find any evidence that RBI used the word "Reed" by itself and found that the addition of "Elsevier" or "Business Information" meant that the two companies’ marks were not identical. So, no infringement there.

In addition, the appeal court decided that the totaljobs.com website operated by RBI did not provide an employment agency service and so the services covered by the Reed mark were not identical to those provided by totaljobs.com - no infringement there. Third, the appeal court did not find any evidence of public confusion or deception and viewed any confusion which was caused by the use of the common name Reed as "harmless".

For me, the interesting issue in this case is the discussion of the inclusion of "Reed Business Information" in the metatags for the totaljobs.com website.

A metatag is hidden code which search engines use to index a website. Many trademark owners feel that they suffer because the UK lacks a specific law preventing unfair competition. This means that aggrieved trademark owners need to find a way to bring the use of metatags within the law of trademark infringement or passing off.

Lord Justice Jacob raised two interesting questions as part of the appeal.

The first question was whether metatags counted as "use" of a trademark. For an action for trademark infringement to be successful, the concept of use is very important, as a trademark owner has to show "use" of an infringing mark.

Lord Justice Jacob thought that "invisible" use - ie use seen only by computers - might not really count as "use".

The second question was whether metatag use would actually be trademark infringement. Lord Justice Jacob suggested that simply making a website appear in a search result would not actually suggest any connection with the trademark owner.

It can be quite common to use the name of a competitor, or some other reference to a competitor, in metatags because this means that a search for that competitor will also include your site in the search results.

In this instance, the court has taken a lenient view of the use of trademarks in metatags. This seems to be at least partly based on the fact that these two businesses have used the same name in relative harmony for many years.

Some commentators have suggested that the case means that it is acceptable to use a third party’s name in website metatags to drive business towards your own website. But I believe that it would be foolish to view this case as carte blanche to abuse your competitors’ trademarks.

• Joanna Boag-Thomson is a partner specialising in media and technology with commercial law firm Shepherd & Wedderburn