Use of a trade mark in source code can be trade mark infringement: the HARBOUR LIGHTS trade mark decision

Businesses often use metatags in the source code of their website to improve their search rankings in Google and other search engines.  Sometimes this may involve using a competitor’s trade mark as a metatag within that source code.  In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, the Full Federal Court held that Liv Pty Ltd (“Liv”) had infringed registered trade marks HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS by using the words “Harbour Lights” as a metatag in the source code for Liv’s website.

The Court held that the use of the words “Harbour Lights Apartments” in the source code was “effectively, use as a business name for a business which offers accommodation for letting and short term rental, thus operating as a badge of origin to distinguish Liv’s services from others” and this conduct infringed the registered trade marks which were protected for relevant accommodation letting services.

This finding of infringement is interesting because the source code for a website is not visible to ordinary Internet users.  In addition, there was no evidence that the metatag was put there by anyone acting on behalf of Liv. Nonetheless, the Court held that:

“Liv had engaged an IT consultant to create the website; Liv operates the website; Liv has changed the content from time to time; and Liv controls the website including the source data for the website.  As a matter of inference… the words comprising the source data must have been included to optimise the search results for Liv’s benefit.  In the absence of any other explanation…the IT consultant for Liv must have included the words in the source data for the website with Liv’s acquiescence.  Thus, the words were used by Liv.”

In Australia, it was previously considered that the use of a registered trade mark in a metatag, which is invisible to the ordinary Internet user, would not indicate trade origin and thus would not amount to trade mark use or trade mark infringement.  However, this recent decision has changed the landscape.

Following this decision, businesses should avoid using the trade marks of other parties, without permission, in the source code of their websites.  To do so may expose them to an action for trade mark infringement, even if the source code is put there by a third party such as a website developer.

Please contact us if you have any questions.

By Erin Cassidy