Irish law on metatags and keywords

I've written (together with Paul Lambert of Merrion Legal solicitors) a piece on the legal issues involved where businesses find their trademarks being used by competitors as metatags or keywords. The full article (with the kind permission of Thomson Roundhall) is available here. Excerpt:

As cybersquatting declines we find that trade mark owners now have to defend their names in a different context. As search engines become more sophisticated, users are tending to rely on them as their primary means of navigation. Rather than type in a domain name directly (or rely on a bookmark), many users will simply enter a term—such as a company name or product – into a search engine, expecting the site they are looking for to appear high in the list of results. Consequently, the importance of domain names is diminished and search engines take on a new prominence. As Nielsen puts it:

“Web users are growing ever-more search dominant. Search is how people discover new websites and find individual pages within websites and intranets. Unless you're listed on the first search engine results page … you might as well not exist.”

This poses a new problem for trade mark holders—what happens when a competitor uses their trade mark in such a way that a person searching for the term will be shown a competing site in the list of results, or will be shown an advertisement for the competitor? ...

At first glance the unauthorised use of trade marks as metatags or keywords might seem to be a clear infringement of the mark in question. The trade mark holder will certainly argue that the metatag or keyword improperly takes advantage of the goodwill in the trademarked term and confuses the user into believing that there is some link between the trade mark and the search results or advertisements displayed in response. It can also be argued that the search engine is itself guilty of infringement by selling the trademarked term as a keyword. In addition, the tort of passing-off may be available.

However, look more closely and the position becomes more complicated. Trade mark law was not drafted with metatags or keywords in mind, making it difficult to bring these situations within the legislative language. There will be some situations where the trade mark use is legitimate, for example, a company which manufactures spare parts for BMW cars might be entitled to use “spare parts suitable for BMW” in its metatags.

The likelihood of consumer confusion may also be less in metatag / keyword cases as the trade mark is being used “invisibly” — that is, in a way which is not directly visible to the user, reducing the likelihood that the user will associate the search result or the advertisement with the trade mark. If a search engine faces liability for selling trademarked keywords, it may be hard to determine whether that liability is direct or merely contributory. (Some cases suggest that the search engine should not be liable for the keywords chosen by its clients.)

In addition, some would argue that provided users are not confused, presenting advertisements for competing goods alongside search results is no more objectionable than a shop placing similar products in the same aisle.