IP lawBy Stuart Lockyear, Davenport Lyons, LondonInvisible trade mark infringementIn a timely reminder that existing rights for trade mark protection apply equally to the Internet as to more traditional media, the High Court has ruled that the use of trade marks as meta-tags for the sole purpose of diverting business away from a trade mark owner's Web site may constitute trade mark infringement and passing off (Roadtech Computer Systems Ltd v Mandata (Management & Data Services Ltd (2000) Ch D 25 May 2000).

Master Bowman labelled the practice a 'deliberate, albeit unsophisticated, appropriation of the claimant's rights'.What are meta-tags? In simple terms, they are keywords used to describe the contents of a Web site.

Search engines function by detecting meta-tags in order to identify and then rank sites which correspond with the keywords entered by the Internet user.How can meta-tags infringe the trade mark owner's rights? As in the Roadtech case, meta-tags may be used to entice customers away from a rival's Web site.

Meta-tags are contained in hidden HTML codes or within the hidden text of a Web site.

They are usually invisible to the Internet user.

A competitor can input a rival's trade mark as a meta-tag within its own Web site.

When a consumer conducts a search against the trade mark it will be diverted to the competitor's Web site, falsely leading the consumer to believe that the competitor is the trade mark owner or, at the very least, exposing the consumer to the competitor's site.Similar casesAlthough the Roadtech case is the first of its kind to come before a UK court, a similar point came up in Lawyers Online Ltd v Lawyeronline Ltd (LTL 29 September 2000).

Granting an injunction against Lawyeronline Ltd for passing off, the judge noted that 'it was significant that the defendant had listed the Lawyers Online name in its meta-tagging'.

However, there have been several cases in the US and a recent case in Germany.Of particular interest is the US case, Brookfield v West Coast Entertainment (174 F3d (9th Cir, 1999)).

The court held that notwithstanding that the Internet user may have no idea why a search for one particular company has thrown up the site of another, sufficient 'initial confusion' would be caused to support a claim for trade mark infringement.

However, Playboy lost its case against Terri Welles.

The Californian court found that as a former Playmate of the Year, Welles was entitled to use the Playboy trade marks within her site.

(Playboy Enters v Welles, 7 F Supp 2d 1098 (S D Cal 1998)).It seems that the search engines themselves may also be found liable.

Although Estee Lauder settled its claims against a rival company when it voluntarily removed the Estee Lauder trade marks from its site, the search engine which, by agreement, had enabled the trade marks to be used as meta-tags on the rival's Web site was found by a German court to have infringed Estee Lauder's trade marks.It is important to bear in mind that meta-tags are usually created by programmers - leaving many managers in blissful ignorance of what their company's meta-tags actually contain.

Given the commercial importance and wide use of meta-tags, the Roadtech case will not be the last of its kind, therefore, Web site-owner clients should be advised to establish the precise content of their meta-tags so as to avoid infringement proceedings.