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]
REVIEW
- the use by a competing company of a 'meta-tag' reproducing the trade mark of the legitimate proprietor company constitutes an unlawful competition offence imputable under Article 2598 no. 3 of the Civil Code
- according to authoritative doctrine, the use of one's own competitor's trade mark as a meta-tag would also constitute an infringement of the exclusive trade mark right under Articles 12 and 22 of the IPC
- Finally, part of the doctrine is inclined to consider that the use of such a practice could even be regarded as a form of subliminal advertising covered by Art. 5.3 Legislative Decree 145/07
[1] Court Milan, 20/02/2009, Riv. dir. ind. 2009, 4-5, 375 (note TOSI)
[2]Riv. dir. ind. 2009, 4-5, 375 (note TOSI); E. TOSI, Diritto privato dell'informatica, DNT, 12, 490 ff.; CASSANO, Orientamento dei motori di ricerca, concorrenza sleale e meta-tag, in Riv. dir. Ind., Milan 2009, 56
[3] Cf. the TOSI, in the note to the Milan Court judgment of 20.2.2009: "in support of the foregoing, the broad provision of Article 2(A) of Legislative Decree No. 147 of 2 August 2005 [...] states that 'advertising shall mean any form of message that is disseminated, in any manner whatsoever, in the exercise of a business activity for the purpose of promoting the sale of goods, the performance of works or services'.
[4] BONOMO, The domain name and its protection. Typology of confusing practices on the internet, 247 ff.; PEYRON, Internet meta-tags as a new means of trademark infringement and hidden advertising: a US case, in Giur. It., 1998, I, 739 ff.
[:]
Internet law part I: the trade mark and the domain name.
[:it]To be able to enter into this topic, it is necessary to take a preliminary look at some concepts that touch on both industrial law and the customary rules of the Internet world.
First of all, it is necessary to see how the domain name is framed within theItalian system. The legislator
regulated this figure for the first time with Art. 22 of the IPC (Industrial Property Code), introducing the prohibition to adopt as "a domain name a sign which is the same as or similar to another's trade mark where, because of the identity or similarity between the proprietors of those signs and the goods or services for which the trade mark is adopted, there exists a likelihood of confusion on the part of the public which may also consist in a likelihood of association between the two signs".
The domain name, therefore, may also be relevant as a distinctive sign because in the light of the progressive 'commercialisation' of the Internet, the entrepreneur no longer uses just any domain name, but requires a specific Internet address to make the products or services offered by his commercial site identifiable to surfers.
The doctrine and jurisprudence, even before the introduction of the aforementioned definition within the c.p.i., recognised the distinctive capacity of the domain name, recognising that "it does not seem justifiably contestable that the domain name in this case also has a distinctive character of the user of the site - capable of contributing to the identification of the same and of the commercial services offered by it to the public by means of the interconnection of networks (Internet) - with some apparent affinity with the figure of the sign, as the (virtual) place where the entrepreneur contacts the customer and concludes the contract with him".[1]
This interpretation is again confirmed following the introduction of the aforementioned Article 22 IPC by a recent decision of the Court of Milan of 20 February 2009, which definitively confirms the dominant jurisprudential orientation in favour of the recognition of the distinctive nature of the domain name formed prior to the IPC.[2]
Trademark protection regulations are also flanked by the network rules. On the Internet, in fact, the principle of "first come, first served", in on the basis of which a domain name is assigned to the first applicant, regardless of whether it conflicts with the rights of others. Domain allocation bodies are not obliged to carry out any prior checks to prevent/avoid registration - such as domain name - of signs or trade marks that are confusingly similar to a registered trade mark by a person other than the owner of the distinctive sign. In other words, under the current method of allocation of domain names, all names not yet registered (such as domain name) are freely registrable by anyone on the basis of the priority of applications, regardless of whether or not those names correspond to more or less well-known names or distinctive signs of third parties.
At this point, it is necessary to analyse the actual method of application of these rules and, to do so, it is necessary to subdivide trade marks into two macro-groups, namely non-renowned and renowned marks.
(a) cases of tomorrow's trade mark with no reputation
In the first case, if the domain name is identical or similar to another person's trade mark not having a reputation, two requirements must be met in order for that person to be able to prevent the use of that domain name:
- l'identity or similarity of the mark with the domain name (e.g. the registered trade mark is ABCD s.r.l. and the third party uses a coincident domain name www.abcd.it);
- l'identity or similarity of products or services offered. (both operate in the same branch of the market);
In that case, the principle of speciality of trade mark protection provided for and regulated by Art. 2569(1) of the Civil Code will apply.[3] and Article 20 para. 1 c.p.i. (a) and (b).
Obviously, the closer the products and services on offer are, the greater the public's confusion as to where they actually come from.
Therefore, even if there is no identity between the product sectors of the non-renowned brand and the domain nameif the bad faith of the holder of the domain name, that activity is deemed to be capable of precluding the holder of the trade mark from using it on the Internet as a further distinctive sign and therefore objectionable under Article 22 of the Code of Civil Procedure. [4]
(b) cases of tomorrow name of renowned trade mark
In the case of a trade mark with a reputation or high renown, the use of a domain name similar to the trade mark shall be deemed to be undue if the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.[5]
ABSTRACT
- the legislator, for the first time, regulated the domain name in art. 22 c.p.i. (industrial property code)
- the dominant legal orientation in favour of recognising the distinctive nature of the domain name
- in cases of domain name of an unrecognised brand name if the domain name is identical or similar to another person's trade mark, there must be identity or similarity of the trade mark with the domain name and identity or similarity of the goods or services offered in order to inhibit use of that domain name
- in cases of domain name of a renowned trade mark, it is considered undue to use the domain name similar to the trade mark also in cases of use of signs for goods and services which are not similar if the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark
[1] Court of Milan, Order of 10 June 1997 - Amadeus Marketing SA, Amadeus Marketing Italia s.r.l. c. Logica s.r.l.
[2] "The domain name has a twofold nature, technical for addressing the logical resources of the Internet network and distinctive. As a distinctive sign - constituted by the part characterising the domain name called Second Level Domain - it may come into conflict with other signs in application of the principle of the unitary nature of distinctive signs laid down by art. 22 c.p.i.". Tribunale Milano, 20.02.2009, Soc. Solatube Global Marketing Inc. and others v. Soc. Solar Proiect and others.
[3] art. 2569, para. 1. c.c.[3] "A person who has registered in the form prescribed by law a new trade mark capable of distinguishing goods or services shall have the right to use it exclusively for the goods or services for which it is registered".
[4] Court of Milan, order of 10 June 1997 "The unlawful practice of confusion known as domain grabbing consists in registering, with the Naming Authority, another person's trade mark as a domain name, for the sole purpose of appropriating the notoriety of the sign, constitutes in itself an act of infringement - censurable pursuant to art. 22 IPC - also in so far as it is an activity capable of precluding the owner of the trade mark from using it on the Internet as a further distinctive sign".
[5] Court Milan, 20.02.2009 "The unlawful practice of confusion known as domain grabbing consists in the registration, with the Naming Authority, of another person's trade mark as a domain name, for the sole purpose of appropriating the reputation of the sign, constitutes in itself an act of infringement - censurable pursuant to Article 22 of the Code of Criminal Procedure - also in so far as it is an activity capable of precluding the proprietor of the trade mark from using it on the Internet as a further distinctive sign"; Court Modena, 18.10.2005 "The assignment of a domain name (website name) corresponding to a trade mark - even if only de facto, but well known - may constitute usurpation of the sign and unfair competition in so far as it entails the immediate advantage of linking one's activity to that of the proprietor of the trade mark, taking advantage of the reputation of the sign and taking unfair advantage thereof. Moreover, the infringement of a trade mark - perpetrated by its use as the domain name of an internet site - is not precluded by the fact that that use has been authorised by the appropriate authority for the registration of domain names, nor by the fact that the proprietor of the trade mark has not previously registered the same name with that authority.".
[:]