Invisible infringement: when SEO strategies cross the trade mark line

Online commerce has transformed the way businesses compete for consumer attention. Search engines now function as the primary gateway through which customers discover goods and services, making search engine optimisation (SEO) and paid advertising indispensable commercial tools. One SEO practice, which has proved controversial, is the use of a competitor’s trade mark as a keyword or meta‑data term to trigger advertisements or influence search rankings. 

Legal position

As set out in the Trade Marks Act 1994, a trade mark proprietor has the exclusive right to prevent third parties from using, in the course of trade, a sign that is identical or similar to the registered mark where such use affects or is liable to affect the functions of the trade mark. 

With the introduction of SEO and keyword advertising, the key issues are whether the use of a competitor’s mark constitutes “use in the course of trade” and whether it can be argued to amount to trade mark infringement. Early uncertainty surrounded whether invisible uses, such as keywords or meta‑tags not visible to consumers, constituted actionable “use” at all. 

Evolution of case law

In Google France SARL and Google Inc. v Louis Vuitton Malletier SA, the CJEU held that businesses who select third‑party trade marks as keywords are using those signs in the course of trade, even though the search engine itself is also involved. 

However, it would only amount to an infringement if the resulting advertisement failed to enable a “reasonably well‑informed and reasonably observant consumer to determine whether the goods or services originated from the trade mark owner, an economically linked entity or a third party” – the “reasonable internet user test.”

This introduced a consumer‑focused test centred on clarity and transparency; bidding on a competitor’s trade mark was not automatically unlawful, the determinative factor was whether the resulting advertisement caused confusion or ambiguity about commercial origin.

In England and Wales what followed was the long saga of Interflora Inc v Marks and Spencer Plc [2014] EWCA Civ 1403. 

Marks & Spencer (“M&S”) had purchased “Interflora” as a Google AdWord keyword to promote its own flower delivery service, but without using the Interflora mark in the advertisement text itself. At first instance Arnold J (following an earlier referral to the CJEU and then applying Google France – see above) found in favour of Interflora on the basis that the adverts did not allow normally informed and reasonably observant internet users, or only with difficulty, to identify whether the adverts related to goods and service from Interflora or from a third party.

However, M&S appealed and the Court of Appeal allowed the appeal. In doing so, the Court of Appeal asserted that the only test to consider if the functions of the trade mark were affected was the “reasonable internet user test”. It also stated that the Arnold J had been correct in finding that there could be trade mark infringement where the party advertising had not bid on an AdWord. The Court of Appeal made it clear that the law was not intended to stifle legitimate competition. Competitors are generally entitled to offer alternatives to branded goods or services and to inform consumers of those alternatives - the key requirement is that advertising must be sufficiently clear to avoid confusion.

At a similar time, another influential case in the online context was Cosmetic Warriors Ltd v Amazon.co.uk Ltd [2014] EWHC 181 (Ch). Although not strictly an SEO case, it reinforced the principle that using a trade mark to divert consumers without adequate transparency could amount to infringement. Amazon’s internal search results, which returned non‑Lush branded products when users searched for “Lush,” were found to infringe Lush trademarks.

Invisible use and meta tags

SEO practices also include the use of trade marks in meta‑tags or other invisible elements designed to influence search rankings rather than trigger paid advertisements. The courts have generally treated these forms of use in line with keyword advertising principles; if the use influences consumer behaviour by diverting search results and creates confusion or misleads users as to origin, infringement may arise. However, purely internal or technical use that has no discernible effect on consumer perception is less likely to be actionable. 

Latest case consideration

Although purely internal or technical use was considered not to be infringement where there was no discernible effect on consumer perception, The latest case about use of online advertising practices is Makeality Limited v City Doggo Limited (1) Ms Laurencia Walker-Fooks (2) has somewhat moved away from this in that whilst there was much made of the evidence that the First Defendant’s brand benefitted significantly there was no express reference (at least not in the judgment) to examples of consumers being confused or misled. 

The Claimant is the owner of registered trade mark PIDDLE PATCH in classes 21 and 31. Its business is the sale of real grass pet litter trays / dog toilets. The Defendant sells a competing real grass patch under the name OUI OUI Patch (with the house brand being CITY DOGGO).

It is worth noting that keyword advertising was not part of the claim.

The Defendants admitted historic use of PIDDLE PATCH, PIDDLE PATCH EQUIVALENT and PIDDLEPATCH in domain names, social media hashtags, metadata, source code, alt data, landing page titles and blog posts in respect of goods for which the Claimant’s trade mark is registered. The Defendant also admitted that the domains piddlepatch.info and piddlepatch.shop via the Shopify platform just 3 days after Ms Sloan (of the Claimant) appeared on Dragons Den (where investment had been successfully obtained). However, they argued that they were ‘de minimis’ and therefore not actionable.

In giving evidence the Second Defendant admitted, among other admissions, to using the Claimant’s trade mark in SEO to attract the business of customers searching for the Claimant. 

Ultimately District Judge Obodai hearing the case made a number of findings against the Defendants which related to a deliberate policy to use PIDDLE PATCH in a manner of ways to benefit commercially from the use of the Claimant’s trade mark. As a result, it was held that the use identified constituted actionable infringement and that the uses were not de minimis as it was on a scale which “a reasonably vigilant Trade Mark proprietor could be expected to oppose” and “they also had a cumulative effect on the Trade Mark’s function.” 

Whilst the case did apply long established principles it did so in relation to a contemporary digital environment and use in the context of an evolved digital environment. 

Significantly, the court did not only find on the basis of trade mark infringement but also passing off as the judge considered that each act [highlighted by counsel for the Claimant] “constituted a misrepresentation to the public that the Defendants’ product was that of the Claimant or otherwise associated commercially with the Claimant.”

Makeality Limited v City Doggo could be argued to be fact specific – the judgment highlights a particularly cynical and concerted attempt to benefit from a competitor’s trade mark in the online marketplace. However, not all of the examples were overt and visible to the consumer and therefore arguably not ‘obvious’ trade mark infringement. Take for example the insertion of the trade mark in the website code for SEO purposes, technically ‘invisible’ to the consumer and the use of the trade mark in alt-data on the website. In this regard, the judge referred to the decision of Pumfrey J in Reed Executive plc & Anr v Reed Business Information Ltd [2002] EWHC 1015 (Ch) which “recognised that use of a sign identical to a Trade Mark in a metatag which is invisible to the internet user is capable of constituting infringement.”

Conclusion

Cases are ‘fact specific’ but Makeality provides a clear, and timely reminder for an increasingly online commerce focused world, that a strategy of using a competitor’s trade mark in relation to SEO activity, even where the insertion of the trade mark is technically ‘invisible’ can amount to trade mark infringement and misrepresentation such to satisfy a claim in passing off. It also highlights that a strategy can have a cumulative effect, so one activity on its own may not be sufficient to be actionable but combined with time and/or other activities it may reach that threshold.