Facts
The action concerned an allegation of trade mark infringement
and passing off by the use of the web site totaljobs.com. This was
run at the time of the trial by the third defendant (totaljobs.com
ltd) but had been established by the first and second defendants
(RBI and Reed Elsevier)
The relevant registered trade mark was for the word REED alone,
registered as of 23 December 1986 in respect of “Employment Agency
Services, included in Class 35”. The second Claimant (Reed
Solutions) is the proprietor of the mark and part of a larger group
(Reed Employment).
Claimants
Alec Reed started Reed Employment in 1960 in a small shop in
Hounslow. He worked by advertising jobs for secretarial and
clerical workers. When people replied to advertisements, he would
telephone the people who were advertising for staff. In 1961, he
started Reed Executive, initially for the recruitment of
accountants. There are now a large number of such businesses which
specialise in specific sectors, all of which bear the name
“Reed”. There are also some training businesses.
Important to the early rapid expansion of Reed Employment was
the acquisition of prime site locations for its branches and the
use of REED to identify them. There are two aspects to the business
– the provision of temporary staff (about 50% of the total business
of Reed Employment) and the introduction of candidates to clients
for permanent positions. The latter nearly always involved an
interview with the candidate to try to ensure that they were put
forward to the most appropriate opportunities, although
interviewing was not inevitable.
The Claimants have a web site, reed.co.uk, which is used by both
clients and candidates. The current practice is for new candidates
to any branch to be encouraged to register with the web site.
Defendants
The Defendants have long been involved in publishing. The Reed
name in this context originally came from papermaking but extended
into publishing, and became Reed Publishing. Reed Publishing is now
RBI (the first Defendant) and the second Defendant (Reed Elsevier)
is the main operating company in the UK. The publishing business
has been carried out under the REED name since 1983.
REED is generally used by the Defendants either as part of the
RBI logo alone or with the usual information in printed materials
which relates to the publisher. It also appears in the copyright
line. Reed Elsevier also has a logo, which is a stylised pair of
letters “re” and the words Reed Elsevier, not in fact dissimilar to
the RBI logo’s layout.
Reed Publishing publishes many titles aimed at various sectors
of the economy. There are probably some 50 titles now and some 29
web sites. An important part of these publications is the jobs
section. In fact, some titles have little editorial, being
mainly devoted to recruitment advertising.
There was some evidence of confusion as to the association (or
rather lack of it) between Reed Employment and Reed Publishing. The
advent of the internet changed the economics of advertising – it is
cheaper to place an advertisement on the web than in a paper
publication. The mid-1990’s saw the arrival of recruitment
advertising web sites, such as “Monster” and “StepStone”. This ate
into RBI’s recruitment advertising revenue and this was expected to
continue to decline. Reed Publishing decided to move into
recruitment advertising on the internet, and started with Computer
Weekly.
totaljobs.com
The Defendants’ web site went through a number of changes given
the ease with which the code for a web site can be changed. There
were some 7 main versions.
Version 1 was started in June 1999 but was not actively
promoted. It contained links to existing jobs web sites associated
with RBI publications and used the jobs databases of these web
sites. The name was totaljobs.com but it had the Reed Elsevier and
RBI logos. It also had links, for example, allowing the user
to subscribe to RBI magazines and some links under the heading
“career adviser”, such as how to create a successful CV. A user
would think this was a RBI web site. However, observation of use
showed that people were confused by it and thought that it was in
some way connected with Reed Employment.
This showed that the Claimants had a strong reputation, and that
people associated this reputation with the matching of
qualifications to jobs through the medium of some sort of adviser.
It was clear that the Claimants’ reputation was strong enough that
use of RBI’s and Reed Elsevier’s logos was not sufficient to
correct the confusion and potential deception.
Version 2 of the web site removed the RBI and Reed Elsevier
logos, and included a copyright line, “Copyright Reed Business
Information 1999”. The alteration to the web site could not
possibly have reduced the confusion and potential deception.
Technically, version 2 was an advance on version 1 as it had its
own jobs database. It was still not advertised, however.
RBI exhibited totaljobs.com at a stand at the annual Harrogate
exhibition put on by the Chartered Institute of Personnel and
Development. This alarmed Alec Reed of Reed Employment, since it
showed the shift in the activities of Reed Publishing. There was
some slight evidence of confusion caused by this stand.
Web sites can consist of many pages, normally with a home page
with links to other pages available by clicking on them. Users of
the web store their favourite locations in their browsers and also
use search engines, such as Yahoo!, Lycos, Alta Vista and Google.
These search engines store vast indexes of words and web pages to
enable them to return search requests very quickly. These
indexes are normally created by “crawling” over the web, using
programs called “spiders”. Spiders follow links and hyperlinks to
analyse the contents of webpages and result in indexes of words and
web addresses (URL’s). These spiders are in constant use, but the
web is vast, and the amount of information so enormous, that the
indexes quickly go out of date. Web site owners therefore
often ask search engines to include their site in a directory that
will not be affected by the operations of the spiders. These
directories are therefore a subject matter index to web sites.
The pages of a web site are written in HTML, which tells a
browser how to display the pages. HTML is made up of “tags” which
indicate what to display and its visual appearance. Some tags,
known as metatags, are not displayed to the user, but they enable
material to be placed on the page for other purposes. One of the
principal other purposes is to provide lists of words for spiders
to index.
These tags begin “<META” followed by “name=” and the name of
the content which follows. The content is introduced by “content=”.
There is a convention by which “name=DESCRIPTION” introduces
content which contains a short description of the web site and
“name=KEYWORDS” introduces content which consists of keywords which
the web site owner wants to be indexed. Thus, a search for one or
more of these keywords will return the URL of the home page of that
web site.
However, search engines do not just return random responses to
enquiries, but rather have a complex set of criteria to rank
responses. These criteria are closely guarded secrets – for the
obvious reason that if web site owners knew them, they could
manipulate their site content that they could come higher in the
rankings. Metatags are susceptible to this type of abuse – the
inclusion of a rival’s name in the metatags could allow a site to
appear high in the rankings in a search for that rival’s name.
Version 2 of
totaljobs.com had a long series of metatags and version 3 had much
the same list. This included a whole list of types of jobs and also
“Reed Business Information”. A spider would detect this and include
it in its index. Given that the copyright notice also mentioned the
name “REED”, this might well increase its rankings against a search
for just “Reed”.
However, spiders are sophisticated, and also look to other
features of web sites, such as the number of links to that web site
from other sites. This can impact rankings for searches. Web site
owners can also pay to get better rankings, and banner advertising
or pop-up advertisements can be purchased from search engine sites.
A web site can reserve a word, and when that word is searched, the
relevant advertisement can be displayed for the number of times
purchased.
totaljobs.com used banner advertising extensively, and this was
arranged by a media agency called Outrider. The type of advertising
included straight banner advertising, some containing animated
graphics and also fake search results. These fake search results
showed the word that had been reserved and provided a link to
totaljobs.com. It would have been obvious to a user that these were
banner advertisements. All the banner advertisements were ingenious
and well designed, and none made any reference to REED or to RBI –
the only reference was to totaljobs.com.
Outrider had purchased a long list of reserved words for
totaljobs.com – including obvious words like “job”, “careers”,
“recruitment” and so on. Thus a search for “reed jobs” might well
return a totaljobs.com banner advertisement. This, however, had
nothing to do with the word REED, but was the consequence of the
reserved words.
The aim was to achieve “click through” – meaning that the user
clicked on the banner and arrived at the totaljobs.com web site.
The Claimants tried to depict this use of banner advertising as
sinister, but it was not. The Claimants’ objection confused a
potentially irritating form of advertising with passing off.
However, in one case the word REED was used. “Reed” was reserved
for 12 months with Yahoo! From November 1999 to November 2000. This
was in fact offered free of charge by Yahoo! in addition to three
other reservations made at the time by the Defendants. There was
some evidence of the click through rates achieved by this use of
REED, and it was properly to be regarded as passing off by
substitution, but the scale appeared to be very small.
Version 3 of the totaljobs.com web site was launched on 10
January 2000 and consumer advertising started about a week later.
RBI branding was more prominent than before, and there was a
copyright notice for Reed Business Information and a RBI logo.
However, the view within totaljobs.com was that there was too much
branding. The RBI logo was therefore removed on 26 June 2000,
leaving only the copyright notice for RBI. The metatags including
“reed business information” also remained. The Defendants were
aware that the Claimants were going to start advertising their web
site, reed.co.uk, heavily in the near future and were concerned
about possible confusion on the part of candidates for jobs.
Outrider did perform some search engine optimisation, but only
in January 2001, when “reed business information” was removed from
the tags. Business-to-business communications still maintained the
connection between totaljobs.com and RBI. A concern of the
Defendants was to maintain this link in the minds of advertisers
who used the paper publication and to maximise the crossover into
advertising on the totaljobs.com web site.
totaljobs.com continued to be updated and went through several
more versions. Outrider optimised the web site, and included
information pages which search engines would detect, without them
being seen by users. The metatags were altered, and did not contain
REED, either on its own or as part of a longer name. On 24
September 2001, the Defendants’ solicitors wrote to the Claimants
saying that Reed Publishing had ceased using the copyright line or
any reference to Reed in the totaljobs.com web site. The web site
had also been transferred to a new company, the third
Defendant.
As at the time of trial, it seemed that references to Reed (in
all its forms) had been deleted – but only by “commenting out” the
relevant lines of code. This is because programmers do not normally
delete code, but will “comment it out”, so that the lines of code
remain, but are not executed by the program. It would be unlikely
that a search engine would find these commented out lines of code.
Some press releases were also included in the web site which did
associate totaljobs.com with Reed Publishing. Again, most current
search engines would not index these types of pages.
However, there was evidence that searches across a wide range of
search engines for “reed jobs” still brought up many references to
totaljobs.com shortly before trial. This was partly caused by the
search engines keeping “legacy” pages, even where those pages no
longer existed on the web site. Searches nearer the trial date were
unlikely to show up totaljobs.com, and where they did, it was well
down in the rankings. A further possibility was that a particular
directory contained a reference including the name of RBI, but it
was not possible to change this.
Advertising other than on the web was also undertaken by the
Defendants, but this did not include any mention of Reed
Publishing.
The Claimants did put in some evidence of actual confusion
although it appeared that the actual numbers were small. However,
there was some evidence that commentators and journalists were
confused as to the connection between the Defendants’ totaljobs.com
and the Claimants.
Judgment
totaljobs.com provided services across two main areas: for
jobseekers and recruiters.
For the jobseekers, there was a database of jobs divided into 30
industry sectors, a search facility called “find a job”, a means of
registering a CV so that recruiters could search for it or receive
it, materials to help a jobseeker prepare for interviews, a skills
and training section and a news and events section.
For the recruiters, there is the job posting area, the CV
database to search, a means of having a corporate profile made
available on the site and response management and advertisement
management tools. A candidate verification service was also offered
by Experian, an employee checking agency.
The first question was whether these were “Employment agency
services” within the meaning of the trade mark registration. The
Defendants submitted that the essential element in an employment
agency service was that there was some element of subjective
assessment of the individual candidates, normally involving some
sort of interview. totaljobs.com was, according to the Defendants,
more in the nature of a large database of jobs with sophisticated
tools for narrowing down the searches – the Defendants did not
provide any of that subjectivity or advice in relation to
individual candidates.
Some points could be made about the trade mark registration.
There is more difficulty in construing specifications of services
than specifications of goods. Specifications of services were of
their nature going to be less precise. However, an important point
of construction was that the relevant date for construing the
registration was the date that the acts complained of started. It
was not the case that a registration had to be construed by
reference to the meaning at the time the registration was first
made.
On balance, the services provided by the Defendants were those
of an employment agency, as it does act as an intermediary between
clients and candidates, although without the attention of an
individual employment consultant.
There was thus an infringement proved under section 10(2)(b) of
the Trade Marks Act 1994, on the basis that the services were
similar and the mark and sign were similar. The Claimants have a
substantial reputation in the word REED with the general public in
the provision of job vacancies. The confusion as to origin caused
by the Defendants’ use of the RBI logo, the Reed Elsevier logo and
the work Reed in the copyright line is capable of causing
confusion.
In this case, the Defendants say that they were only using their
own name, and this is to be permitted by section 11(2) of the Act.
The Claimants say that this is not possible since the proviso to
that section requires that the use should be in accordance with
honest practices in industrial or commercial matters. This had to
be an objective test. Use on invoices and the like sent to clients
was permissible, as was use of the name at the Harrogate
exhibition. The visible use of REED on the web site was different,
as that gave rise to a more than negligible risk of causing
confusion among candidates.
As for the metatags, an infringing use has to be “trade mark
use” i.e. use whose purpose or effect is to indicate the trade
origin of the goods or services. The use of REED in “reed business
information” satisfied this test. It was an infringing use where a
search showed up the description metatag which included REED. Where
no such visible description was returned by the search engine, it
was difficult to draw any definite conclusion from the Act.
However, the concept of “use” was probably wide enough to cover
invisible use in metatags which was visible in the search
results.
Was it possible to improve on a ranking by including in the
metatags a name for which an own name defence might be available?
If it remained invisible, it would appear not to benefit from the
section 11 defence (as no-one would normally see it). Moreover, to
use a name or address in this way might well not satisfy the
proviso (honest practices in industrial or commercial use). Did
this use fall within section 10 (infringement)? Yes, as ultimately
its purpose was to use the sign to suggest a connection which did
not exist. The sign in a metatag was being used to suggest that
this site was to be treated in a manner appropriate to the way in
which the trade mark owner’s site should be treated. This was
infringement. The short test, to be applied with caution, was - did
the sign tell the truth about the site?
Where a banner advertisement was triggered by use of REED by the
Defendants, then that use was objectionable under trade mark law.
It was different if the Defendants had, for example, reserved
“jobs” with a search engine web site and what then happened was the
Defendant’s name happened to turn up in a search for “reed jobs”.
This was nothing to do with an infringing use of REED but was a
function of how searches were conducted.
As to passing off, this was not a deliberate case of passing
off. The Defendants were aware of the possible confusion and did
not want to contribute to it. The Defendants’ case was that
totaljobs.com was a natural extension of their
recruitment-associated publishing business, harnessing the
potential of the internet. However, it was a different business and
it involved moving towards the business conducted by the Claimants.
A defendant may not use his own name if to do so resulted in
deception. The use of his own name has to be honest – this is an
objective test and cannot be satisfied if the defendant knows of
the risk of deception in fact.
As regards passing off with regard to visible uses, therefore,
the conclusions were the same as with registered trade mark
infringement. With regard to invisible uses, the answer again
turned on whether the Defendants could be said to be responsible in
any way for the appearance of the site in response to a search
against REED and, if so, what the nature of that responsibility
was. Again, the conclusions here are the same as with registered
trade mark infringement.
Commentary
This is a full judgment, replete with evidential detail as to
the working of the internet and the detail of what the Defendant
had done in creating its web site. However the consideration
of the law is perhaps slim. Nevertheless, the main point is a
simple one raised by this case – does use of a name in a metatag,
invisible to the casual surfer, amount to trade mark infringement
or passing off?
It is not that there is ample authority on the point – the only
other case on it in this jurisdiction was the decision of Master
Bowman in Road Tech Computer Systems Limited v Mandata
(Management and Data Services) Limited [2000] Masons CLR 35 in
a short judgment on an interim application which did not fully
consider the technical detail or the law but concluded that such
use of metatags could amount to passing off.
The initial comment must be that progress in the IT world is so
fast that even the Trade Marks Act 1994 is looking dated, as it
does not specifically deal with the phenomenon of advertising on
the internet in all its guises.
One difficulty is that metatags can be put to many uses.
Many of them are innocent and, indeed, essential for the efficient
functioning of the internet. The user may never know if the reason
a particular search has produced a particular web site was because
of the abuse of metatags, or as a result of the vagaries of the
search engine used. Jacob J. said in Avnet Incorporated v
Isoact Limited [1998] FSR 16
“someone searching using a word may find web pages or data in a
wholly different context from that which he was seeking. Users of
the internet know that that is a feature of the internet and that
their search may produce an altogether wrong web page or the like.
This might be an important matter for the courts to take into
account when considering trade marks and like problems.”
One difficulty in finding trade mark infringement is that use of
metatags is normally invisible to the user. This appears to run
counter to the express words of section 10 of the Trade Marks Act
1994.
Is the use of a metatag done “in the course of trade” as
required by each of subsections (1) to (3)? Arguably yes, since
presumably the infringer’s web site is up and running and seeking
to do business (including that of winning business from the
competitor by using its name in the metatag).
However, is the act of using the metatag using a trade mark “in
relation to good or services”? This is again something that must be
proved in every case. However, when reviewing the rash of cases
that have examined this troubled provision (and its equivalent in
EC legislation) both at the national and ECJ levels, there seems to
be a requirement that the question of similarity should be seen
from the average consumer’s standpoint (see e.g. Sabel v
Puma [1997] ECR I-6191). In the case of metatags, of course,
the average consumer may never even be aware of the presence of the
metatag. This is not helped by section 10(4), where the examples of
using a sign are all very visible activities.
This leads to the next difficult question: other than in the
case of section 10(1) (identical mark, identical goods), there has
to be some likelihood of confusion for infringement under section
10(2) to be made out. As is clear to everyone who has ever searched
for anything on the internet, and as pointed by Jacob J. in
Avnet, a typical search can return the most unexpected
results and most users are accustomed to going to sites returned by
a search engine and returning quickly from them on discovering that
they are not what they were looking for. Is this confusion? And is
it caused by the use of the metatag?
It might be added that the same point could be made about
passing off: there has to be a misrepresentation for the classic
form of passing off to be made out, together with likelihood of
confusion. If the user never knows metatags were abused, to whom
was the misrepresentation made and what is the causal nexus between
any misrepresentation and the possible confusion on the part of a
consumer?
Pumfrey J., while dipping into perhaps some of the more esoteric
areas of trade mark law to discuss infringement under section
10(2), takes a pragmatic view and simply finds that both the
visible and invisible uses of metatags amounted to infringement (in
this case) under section 10(2)(b) and also passing off. In fact,
despite the academic considerations by the learned judge on the
authorities dealing with how section 10 should be applied, there is
little that deals head-on with the questions posed above about use,
misrepresentation and confusion.
This notwithstanding, the decision is a common sense approach to
a common business practice (or malpractice). As with One in a
Million, the case for judicial intervention is clear and
putting the niceties of statutory drafting and interpretation to
one side, it is hard to see the Court of Appeal interfering with
Pumfrey J.’s decision.
