A new Full Federal Court decision appears to have upended the treatment of metatags in the trade mark infringement context.

In Accor v Liv Pty Ltd [2017] FCAFC 56 at first instance, the applicants brought a claim alleging the respondents engaged in 18 instances of trade mark infringement by the use of HARBOUR LIGHTS in connection with an apartment rental business. All of the infringement findings were upheld on appeal, but one warrants special mention – relating to the metatags used by one of the respondents, Liv Pty Ltd (Liv).

The evidence disclosed that the source data for Liv's website included metatags. At first instance, Rangiah J found that the source data (including the metatags), was not displayed on screen, but that it was used by search engines to determine search results. His Honour also found that the source data was visible to those who knew what to look for and influenced search results.

Rangiah J held that, ultimately, Liv had control over the website content, and inferred that the source data must have been included to optimise search results for Liv's benefit. Rangiah J held that, in all of the circumstances, this amounted to use of the words by Liv.

Of the two metatags complained of, one was held to be merely descriptive, and therefore not infringing.

The second metatag was the phrase:

content: = Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short-term rental

In relation to this second metatag, Rangiah J found that Liv had used the words ‘Harbour Lights Apartments’ effectively as a business name, and that these words distinguished Liv's services from those offered by other providers.

Rangiah J found that the words were used by Liv, and that this use amounted to use as a trade mark, satisfying the elements of s120(1) of the Trade Marks Act.

The Full Court of the Federal Court did not disturb Rangiah J's findings, holding that the metatag operated as a badge of origin.

This establishes binding precedent that, in certain circumstances, the use of metatags (which are not displayed on screen) can amount to trade mark infringement.

This stands in stark contrast to the earlier Federal Court decision of Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319, where use of metatags was not found to amount to trade mark use. In that decision, Kenny J referred to the invisibility of metatags and their inability to indicate origins of a product or service to an ordinary user. Similarly, in Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2013] FCA 563, the Federal Court was careful to differentiate between the invisibility of a metatag and the presence of a mark on the website itself.

The approach in Accor pivots away from the paramountcy of the actual text displayed on-screen, and instead focuses on the user experience. While the ordinary user may not see the mark, the search results presented to the user are found by the interaction between metatags and search engines, which shapes the user experience.

Accor may be on to something in tacitly acknowledging the role that technology has to play in seeing things for us. Even though metatags are invisible to us, the Full Court has confirmed that, in some circumstances, they can be seen to be trade marks.