It is not unusual for a business to use a competitor’s trade mark as a metatag within the source code of its website (known as Search Engine Optimisation / SEO) or as a Google Adword (known as Search Engine Marketing / SEM) in order to attract traffic from people who may be interested in the products or services associated with that trade mark. However, in a recent case the Full Federal Court has said that using another party’s registered trade mark as a metatag in the source code of a website could constitute trade mark infringement, even though it has been established in previous cases that using the trade mark as a Google Adword is not an infringement.

In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, Accor owned trade mark registrations for Carins Harbour Lights and Harbour Lights, which it used to promote hotel and apartment accommodation at the Harbour Lights complex in Cairns, Queensland. Liv was a company that rented out apartments owned by others in the complex and used the terms ‘Cairns Luxury Accommodation – Waterfront Apartments – Harbour Lights – Cairns Queensland’ in the source data for its website promoting the apartments. The Full Federal Court found that Liv’s inclusion of the words ‘Harbour Lights’ in the source data was ‘use as a trade mark’, namely as a ‘badge of origin’, as required under the Trade Marks Act 1995 (Cth) . This was because the website was promoting services for which the trade mark was registered, and because the particular metatag containing the trade mark was not using the trade mark in a descriptive sense. It was therefore an infringement of Accor’s trade mark registration for Harbour Lights. Consumers looking at Liv’s website would not see the trade mark in the source data; however, the Court said that the presence of the trade mark in the source data was visible to ‘those who know what to look for’ and that it influenced search results.

While this case was decided on its particular facts, the implication is that using a competitor’s registered trade mark in website source code (as opposed to using it as a Google Adword) will constitute trade mark infringement unless you can show that the words were not used ‘as a trade mark’ but simply in a descriptive sense, or can establish another defence.