Use in the keywords
120 There is a dearth of authority on whether use of a trade mark in a keyword is trade mark use under the Trade Marks Act. The learned authors of the leading text on trade mark law in Australia, Shanahan's Australian Law of Trade Marks and Passing Off (5th ed) doubted whether an advertiser who uses keywords which are also registered trade marks uses them as trade marks, that is, as a means of distinguishing its goods or services from the goods or services of others.
121 They postulated at [115.1110]:
One interpretation is that the keywords/trade marks are used to identify internet users who have an interest in a particular product and to then present alternatives to those users. The search results present those alternatives rather than suggesting that the keywords used are identifying the origin of any particular goods or services being offered in the ensuing advertisements. … The end result would be that keyword generated advertising per se would not be a trade mark infringement.
122 In my opinion, Malouf's use of the Veda keywords is not a trade mark use.
123 First, on the agreed facts, the advertiser merely selects the keywords and provides them to Google. This is not use indicating a connection in the course of trade between the services provided by Malouf and the services provided by any other trader. Objectively, Malouf is or was not using the keywords as a sign to distinguish its services from the services of others. Rather, it has used them to identify internet users who may have an interest in using its services.
124 Secondly, the Veda keywords may be acquired by anyone under Google's AdWords program, including Malouf's competitors, and their use as search terms will produce not only sponsored links to Malouf's websites but also sponsored links to those of its competitors as well as organic search results, pre-eminently Veda's own website. While far from determinative, these circumstances are not irrelevant. As the Full Court observed in Lift Shop at [41]:
Such use may well provide part of the context in which the alleged infringer has used the sign and inform the question of whether, in such use, the sign performs the function of a trade mark.
125 In the present case, these circumstances are part of the relevant context.
126 Thirdly, the keywords are invisible to consumers. Veda submitted that this circumstance is immaterial. It described use of a trade mark under the Act as an expansive concept. It referred to the fact that s 7(5) speaks of use "in physical or other relation to the services" (emphasis added).
127 But the proposition that using words which are invisible and inaudible, indeed imperceptible, to consumers is using them as a trade mark makes no sense. How could the keywords be understood to be used to distinguish the services of one trader from those of another when the keywords are indiscernible? How could it appear to consumers that, by Malouf's designation of the Veda keywords to Google, the words are used to denote a connection in the course of trade between Malouf's services and the services provided by another trader, or to distinguish its services from the services of others, when the consumers have not seen or otherwise perceived the keywords?
128 Moreover, in a case where the consumer does not merely search for "veda", but enters a term or phrase which includes the word "veda", how would the consumer know that the trade mark was being used at all? If the consumer searches for "veda credit report", for example, and the search returns a Malouf advertisement, a consumer who understands how the AdWords program operates might imagine that the keyword generating the advertisement was "veda". But equally the consumer might imagine that the keyword or words were "credit report". As the keyword is invisible, the consumer cannot know. The fact that use need not be in physical relation to the services does not address the question at hand. In any case, I doubt very much whether the Parliament had in mind a metaphysical relationship, no matter how expansive the concept of use was intended to be.
129 Veda submitted that the fact that a keyword was not visible did not preclude Rangiah J from finding trade mark infringement in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554, referring to his Honour's remarks at [429]-[436] dealing with a particular use of the registered trade mark "Harbour Lights" by business rivals of the exclusive licensee of the trade mark:
429 There is in evidence a printout of what is called the "source data" for the website www.cairnsluxuryapartments.com.au. The source data includes a "meta-tag", being "Harbour Lights". Mr Mezzatesta deposed, without objection, that a meta-tag is not displayed on the screen but is used by search engines such as Google to determine what search results to return when a user undertakes a search.
430 The source data includes the title "Cairns Luxury Accommodation - Waterfront Apartments - Harbour Lights - Cairns Queensland". Under that are "keywords". The first of those is indecipherable in the printed document put into evidence, but the second is "Harbour Lights". The source data also includes the words "content: = Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short-term rental". The applicants allege that the use of those words in the source code infringes their trade marks.
431 The respondents argue that there is no evidence that the use of website keywords is within the control of the respondents.
432 Mr Mezzatesta deposed that on 28 May 2013 he looked at the source data for the website www.cairnsluxuryapartments.com.au using his browser. He then caused the printout to be made of the source data for that website. Mr Mezzatesta's evidence satisfies me that the source data that he located was visible to those who know what to look for, underlay Liv's website and influenced search results.
433 There is no direct evidence that the source data was placed there by someone acting on behalf of Liv. However, there is evidence that Liv engaged an IT consultant to create the website. There is evidence that Liv operates the website and has had the content of the website changed from time to time. From this evidence, I accept that Liv has control of the website, including the source data for the website. I infer that the words comprising the source data must have been included to optimise the search results for Liv's benefit. In the absence of any suggestion as to how else the relevant words could have come to form part of the source data for Liv's website, I infer that the IT consultant must have included those words, with Liv's acquiescence. I therefore consider that the words were "used" by Liv.
434 The use of the words "Harbour Lights" in the title "Cairns Luxury Accommodation - Waterfront Apartments - Harbour Lights - Cairns Queensland" appears to be merely a descriptor of the waterfront apartments that are referred to in the title. The first use of the words "harbour lights" in the keywords also appears to be a reference to the apartments appearing, as they do, in the context of surrounding words such as "Cairns apartments", "waterfront, luxury apartment" and "harbourside". I cannot see that those words were used as a badge of origin.
435 The phrase "content: = Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short term rental" seem to use the words "Harbour Lights Apartments" effectively as a business name. Those words represented that Harbour Lights Apartments was the business which offers the accommodation for letting and short-term rental. The words distinguished Liv's services from those offered by other providers. Their use was trade mark use.
436 This use of "Harbour Lights" meets the elements of s 120(1) of the TMA in relation to both registered trade marks. It does so in relation to each of the Class 36 and Class 43 services, other than "commercial real estate agency services", "agency services for the leasing of real estate properties" and the hotel services.
130 Two things must be understood about this extract. The first is that the "keywords" it refers to are distinct from, and should not be confused with, keywords in the Google AdWords program. The "keywords" in Accor were words embedded in metatags. The second is the nature of metatags. These are words placed in the source code of a website and its pages by the person in charge of the website. Malouf submitted (without contradiction) that they are used by search engines to assist in indexing and ranking websites when displaying search results.
131 It is difficult to know what to make of the extract from Accor.
132 First, the metatags in Accor were not entirely invisible. To the contrary, in that case there was apparently evidence that the source data was visible "to those who know what to look for". Here, however, it was not in dispute that the keywords were invisible to consumers.
133 Second, the decision appears to be at odds with the judgment of Kenny J in Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319 to which Rangiah J did not refer and to which his Honour's attention was not directed.
134 In Complete Technology Kenny J rejected the contention that the unauthorised use of registered trade marks as metatags was trade mark use.
135 Complete Technology Integrations Pty Ltd (CTI) owned a number of registered trade marks for the acronym "CTI" and the following terms: "CTI Australia", "Complete Technology Integrations", "CTI Energy Management" and "CTI Building Automation". CTI claimed (amongst other things) that a competitor - Green Energy Management Solutions Pty Ltd (Green Energy) - and three of its directors and shareholders had infringed its registered trade marks in several ways. One of those ways was said to be by using as metatags the acronyms and words "CTI", "cti", "CTI Canberra" and "capital technology". When internet users with an interest in services of the kind offered by CTI searched the internet using any of these terms, the metatags captured the search and "[threw] up the website or the page in respect of which the metatags [were] placed as part of an answer to the search" (Complete Technology at [57]).
136 CTI contended that Green Energy's use of CTI's registered trade marks as metatags was use of the marks as trade marks within the meaning of the Trade Marks Act because Green Energy had used the marks to "attract customers who were looking for a particular commercial source of services by reference to the name 'CTI'". Her Honour accepted that the use of the marks as metatags could help Green Energy to benefit from CTI's goodwill but she rejected the contention that the use was use as a trade mark, stating (at [32]):
[Section] 120(1) of the TMA requires that [scil.] "the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered" before there can be an infringement. I do not accept that the use of any of CTI's Registered Trade Marks in Green Energy's metatags would constitute a trade mark infringement for the purposes of s 120(1). Metatags are invisible to the ordinary internet user, although their use will direct the user to (amongst other websites) Green Energy's website. Once at the Green Energy website, then, in the ordinary course, the internet user will be made aware that the website is concerned with Green Energy's services. It cannot, therefore, be said that the use in a metatag of CTI's Registered Trade Marks is a use that indicates the origin of Green Energy's services. Thus, metatag use is not use as a trade mark: compare Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at 115-6 [20].
(Emphasis added.)
137 In my respectful opinion, her Honour was correct. The position in the present case is relevantly indistinguishable.
138 Furthermore, the issue of whether using registered trade marks as keywords is use as a trade mark was resolved against the registered owner in Intercity Group (NZ) Ltd v Nakedbus NZ Ltd (2014) 3 NZLR 177.
139 In New Zealand there will be infringement of a registered trade mark if the relevant use of the sign is "in such a manner as to render the use of the sign as likely to be taken as being use as a trade mark": Trade Marks Act 2002 (NZ), s 89(2).
140 In Intercity, Asher J, sitting in the High Court of New Zealand, held that the use by the alleged infringer, Nakedbus, of "inter city" and variations of it as keywords in the Google AdWords program did not infringe the plaintiff's registered trade mark "INTERCITY". His Honour said at [85]:
The position in relation to the use by Nakedbus of the keywords is entirely different to a use on packaging or other communications to the public. The use of the keyword was by Nakedbus when it purchased that keyword prior to the placement of its advertisement, and then by Google when, through its search engine, it provided for the Nakedbus advertisement to appear when a consumer keyed "intercity" into a computer. In such a situation, the use of the keyword by Nakedbus and indeed Google was not seen by the consumer at all. As Mr Harris observed, these actions were invisible to everyone except Google and the advertiser. If the "use" could not be seen by the consumer it could not be "taken as" anything, let alone "taken as being used as a trade mark".
141 His Honour went on to point out (at [86]) that this did not mean that the trade mark owner was necessarily without a remedy because using an identical or similar trade mark in the advertisement might itself be an infringing use. But in the absence of evidence that a consumer would know or understand the use of keywords, his Honour was not prepared to assume that the consumer had any awareness of how they are used:
Insofar as the use of the keyword was an act that was not seen or known or understood by the consumer, there was no use of the sign "likely to be taken as being used as a trade mark".
142 Veda submitted that Intercity was distinguishable because it was not shown that a consumer would know or understand the use of keywords. But neither was it here.
143 Veda also referred to another New Zealand decision - Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd (2014) 108 IPR 162; [2014] NZHC 960. In that case, which was heard before Intercity but decided afterwards, Brown J, without referring to Intercity, came to the opposite conclusion. His Honour considered that invisible use of a registered trade mark by the use of a metatag was use as a trade mark "where the mark can be accessed and viewed by an informed internet user" (at [236]). But there was no evidence of that in the present case. Brown J did refer (at [226]) to Kenny J's judgment in Complete Technology but read the decision down by ignoring the conjunctive adverb "therefore" in the passage extracted above at [136]. His Honour (wrongly in my respectful opinion) treated Kenny J's conclusion that the metatags did not indicate the origin of Green Energy's services as an independent finding, rather than one that flowed from her Honour's consideration of the nature and function of metatags including their invisibility to the ordinary internet user.
144 Veda also relied on the recent European authorities which Asher J declined to follow in Intercity - Google France SARL v Louis Vuitton Malletier SA (C-235/08) [2011] Bus LR 1; All ER (EC) 411 and Interflora Inc and Anor v Marks & Spencer No. 5 [2014] EWCA Civ 1403 - and drew attention to a remark in the leading English textbook, Kerly's Law of Trade Marks and Trade Names (15th ed), at [27-071] that the fact that a metatag is normally not seen should not make any difference. Veda submitted that in the European context, the courts have accepted that use of keywords is use in the course of trade and use of a sign in respect of goods and services. Veda also submitted that "use in the course of trade in respect of goods or services" in the European context is the equivalent concept to "use as a trade mark" under the Trade Marks Act.
145 Both Google France and Interflora were concerned with the use of keywords in the Google AdWords program. Nevertheless, I do not regard those authorities as instructive. The law is not the same, understandably the judgments do not refer to Australian law, and the passages upon which Veda relied were taken out of context. I reject the submission that "use in the course of trade in respect of goods or services" in the European law is the equivalent concept to "use as a trade mark" in the Trade Marks Act, if by that submission Veda intended to imply that the expressions have the same meaning.
146 The phrases "using in the course of trade" and "in relation to goods and services" considered in Google France and Interflora appear in Art 5(1)(a) of the First Council Directive of 21 December 1988 to Approximate the Laws of the Member States Relating to Trade Marks (89/104/EEC) [1989] OJ L 40/1 and Art 9(1)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark [1994] OJ L 11/1. Article 5(1)(a) provides:
The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered[.]
147 Article 9(1)(c) provides:
A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
…
(c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.
148 It is a condition of infringement under Art 5(1)(a) that the use is such as to affect or be liable to affect the functions of the trade mark: Cosmetic Warriors Ltd v amazon.co.uk Ltd [2014] ECC 28; [2014] EWHC 181 (Ch) at [28]. Neither "using" nor "using in the course of trade", however, is defined.
149 Veda relied on a passage in the reasons in Google France at [85]. There, the Grand Chamber of the European Court of Justice considered that the fact that the advertisement appears immediately following the entry of the trade mark search term by the internet user and is displayed at a point when the trade mark is also displayed on the screen "in its capacity as a search term", "the internet user may err as to the origin of the goods or services in question". In these circumstances, it held at [85]:
[T]he use by the third party of the sign identical with the mark as a keyword triggering the display of that ad is liable to create the impression that there is a material link in the course of trade between the goods or services in question and the proprietor of the trademark …
150 But the Grand Chamber was not addressing the question of "use" at this point. It was addressing the question of "adverse effect on the function of indicating origin". The question of "use" was addressed earlier (at [50]), under the heading "use in the course of trade". There, the Grand Chamber stated:
The use of a sign identical with a trade mark constitutes use in the course of trade where it occurs in the context of commercial activity with a view to economic advantage and not as a private matter.
151 That is not the test of use as a trade mark under the Australian Act.
152 The Grand Chamber in Google France did not consider whether the purpose for which the keywords were used was to distinguish between the goods or services dealt with or provided by one person from those dealt with or provided by another. Nor was that question considered in Interflora.
153 If, however, the finding by the Grand Chamber at [85] is properly to be taken as a statement of its opinion on the use of keywords to indicate a connection in the course of trade between the services of the trader who purchased them and the services of the trade mark owner, I respectfully disagree. On this point I prefer the opinion of the Court of Appeal of England and Wales in Reed Executive plc v Reed Business Information Ltd [2004] RPC 40; [2004] EWCA Civ 159 (cited with approval by Lewison LJ in Interflora v Marks & Spencer [2013] 2 All ER 663; [2012] EWCA Civ 1501 at [56]). In Reed, Reed Executive plc was the registered owner of the trade mark "Reed" registered in respect of employment agency services, which was used by Reed Business Information Ltd as a Yahoo keyword to generate banner advertisements for its recruitment website totaljobs.com. The word "Reed" was not visible in the advertisements. Jacob LJ, with whom Rix and Auld LLJ agreed, said at [137]-[140]:
As anyone who uses internet searches knows, in addition to the results of a search under a particular name or phrase, one often gets unasked for "banner" advertisements. Most of the time they are nothing but an irritation and are ignored. But you can, if you wish, "click-through", i.e. click on the banner and be taken to the advertiser's site.
…
The web-using member of the public knows that all sorts of banners appear when he or she does a search and they are or may be triggered by something in the search. He or she also knows that searches produce fuzzy results - results with much rubbish thrown in. The idea that a search under the name Reed would make anyone think there was a trade connection between a totaljobs banner making no reference to the word "Reed" and Reed Employment is fanciful.
154 In Interflora Marks & Spencer used "interflora", a registered trade mark belonging to Interflora Inc, and variations thereof as keywords in a Google AdWords campaign to trigger advertisements for the online sale of "M & S Flowers". The trial judge had referred a number of questions to the European Court. At [105] the Court of Appeal of England and Wales referred to some of its findings:
The court accepted that where a competitor of the proprietor of a trade mark with a reputation selects a sign identical to the trade mark as a keyword in an Internet referencing service, the purpose of that use is to take advantage of the character and repute of the trade mark, and further, that the competitor will derive a real benefit for which he has not paid. Such use will, if it is "without due cause" amount to an infringement, and that is likely to be the case if the goods are mere imitations of those of the trade mark proprietor. But it will not be the case if the goods are genuine alternatives and the use does not cause dilution or tarnishment or adversely affect one of the functions of the trade mark …
(Emphasis added.)
155 Veda cited the emphasised passage. In that passage the European Court was considering a question posed by Art 9(1)(c) of the Regulation, namely whether the use of the sign took unfair advantage of, or was detrimental to, the distinctive character or repute of the trade mark. That is not a question that arises under the Trade Marks Act.
156 In the passages from both Google France and Interflora, then, the European Court's consideration centred on the effect of the allegedly infringing use, not on its purpose or nature.
157 In contrast, in Intercity Asher J approached the question of whether the use of trade marks as keywords was use as a trade mark by focussing on "the essential function" of a trade mark, namely, "to guarantee to the consumer the identity of the origin of the trade marked goods or services by enabling that consumer to distinguish the goods or services from others which have a different origin": (2014) 3 NZLR 177 at [70]. His Honour accepted (at [71]) a submission that it was important not to confuse dicta relating to the issue of confusion and deception in deciding whether use constitutes "use as a trade mark". He went on to cite a passage from Shanahan at [85,560] which referred to the definition in s 17 of the Trade Marks Act, and which emphasises that "factors relevant to whether there is a misrepresentation or likelihood of deception have no role to play in deciding the question of what constitutes 'use as a trade mark'".
158 In Intercity Asher J was also taken to Google France and urged to follow it. He declined to do so, noting (at [76]) that, given the difference in the relevant legislation and case law, it could not be regarded as authoritative in New Zealand. For the same reasons neither Google France nor Interflora is authoritative here.
159 I do not accept that the use of a sign which is invisible to the consumer is use as a trade mark within the meaning of the Trade Marks Act.