The unlawful use of the 'meta-tag'. Trade mark infringement and unfair competition?

[:it]For meta-tag refers to those keywords, usually encoded in HTML, which, although not shown on screen, are nevertheless used by search engines in order to index the various sites. Through a meta-tagThus, the operator of a site can enter keywords concerning his or her own web page (c.d. keyword meta-tag) in order to make it through the use of search engines.

Potentially, therefore, a site operator could insert the name of a very famous brand as a keyword in order to have its site appear among the first results each time a user performs a search using the name of the well-known brand, or, insert the brand of one of its competitors in order to appear among the results each time a search is performed by a consumer indicating the brand of the competing company as a keyword. (E.g., the company XYZ S.R.L., which operates in the furniture manufacturing sector, uses the trademark of the competitor company 123 S.P.A. as meta-tag)

The question arises in doctrine and jurisprudence as to whether such conduct may in itself constitute an offence, given that the name or trademark of others is not placed externally on the site, but remains visible only to search engines.

There are potentially two possible offences: unfair competition and trade mark infringement.

1.    Unfair competition

As for unfair competition, the Court of Milan, in the now well-known 'Solatube' case, ruled that: "the use by a competing company of a 'meta-tag' reproducing the trademark of the legitimate owner company constitutes unlawful competition imputable under Art. 2598 no. 3 civil code.as determining the constant and undue matching in the search results on the various web search engines capable of leading to a diversion of customers in violation of the principles of fair trading."[1]

2.    Trademark infringement

The aforementioned judgment, which establishes the existence of a violation of Art. 2598 no. 3 civil code., states that the use by a competing company of a meta tags reproducing the trade mark of another company does not constitute an infringement of the trade mark as it lacks any distinctive function of services and goods.

On the contrary, according to authoritative doctrine, if a party uses as a meta-tag a trademark of one of its competitors, such practice would also constitute a hypothesis of infringement of the exclusive trademark right pursuant to Articles 12 and 22 of the IPC (Industrial Property Code). Such an infringement would, in fact, extend to non-related goods and services if a well-known trade mark is used as a meta-tag.[2] In support of this thesis, part of the doctrine holds that it is also reasonable to recognise the meta-tag advertising function in a broad sense.[3]

3. Subliminal Advertising

Finally, part of the doctrine is inclined to believe that the use of this practice might even be considered as a form of subliminal advertising Article 5.3 legislative decree 145/07, which provides that advertising must be clearly recognisable as such.[4]

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