Trade marks and meta tags – fair use or unfair competition?

21 June 2010

Piotr Dynowski

In October 2009 the Court for the Community Trade Marks and Community Designs in Warsaw issued a ground breaking milestone judgment in a case concerning use of third party trade marks in a website’s meta tags in order to improve positioning in search results in some search engines (XXII GWzt 8/09). This is the first judgment in Poland that concerns use of third party trade marks as meta tags and analyses the issue both from the trade mark law and unfair competition perspective.

The case was brought by French company Marin’s International and its Polish subsidiary Marin’s Central Europe Sp. z o.o. that is an exclusive licensee for the territory of Poland of the company’s two registered word CTMs - “Marin’s” and “Lama” – registered in class 16, 20 and 42 and 16, 20 and 35 respectively. Marin’s International is a worldwide leader in automatic foldable POS (point-of-sale) displays. It is present in over 100 countries and its sales of patented ‘Lama’ stands reached 12 million in 2008. Their opponent was Display Flash Poland Sp. z o.o. a subsidiary of Brazilian Display Flash POP UP Communication which is also a global manufacturer and supplier of innovative POS display materials. Both companies are direct competitors in the Polish market. Display Flash Poland Sp. z o.o. was sued for infringement of Marin’s rights to CTMs “Marin’s” and “Lama” as well as unfair competition practice of using misleading designations for its enterprise. Display Flash Poland Sp. z o.o. was using “Marin’s” and “Lama” as well as other similar designations in their non-script tags on their website. These tags are data that are inserted in the source code of a webpage in its meta header and are used by some Web crawlers in the search process.

A web crawler is a computer program that browses the world wide web in a methodical, automated manner or in an orderly fashion. This process is called web crawling or spidering. Many sites, in particular search engines, use spidering as a means of providing up-to-date data. Web crawlers are mainly used to create a copy of all the visited pages for later processing by a search engine that will index the downloaded pages to provide fast searches. Crawlers can also be used for automating maintenance tasks on a website, such as checking links or validating HTML code.

As a result of Display Flash Poland Sp. z o.o. using meta data identical and similar to registered CTMs of Marin’s International after entering one of those words as a search query Display Flash Poland’s website was ranked as one of the top search results.

The Court decided that such use of meta names by Display Flash Poland Sp. z o.o. not only infringed Marin’s International rights to registered CTMs but also constituted an unfair competition practice because it was contrary to good trade practices and had an adverse effect on interests of Marin’s. 

The judgment is not final yet and it has been appealed by Display Flash Poland Sp. z o.o. to the Court of Appeal in Warsaw.