[BEST, C-657/11]

The Court of Justice of the European Union (CJEU) in its judgment of July 11, 2013 (Case C-657/11) handed down upon the request for a preliminary ruling made in the proceedings Belgian Electronic Sorting Technology NV v. Bert Peelaers, Visys NV, ruled among else that the relevant provisions of European Union law concerning misleading and comparative advertising[1] must be interpreted as meaning that the term ‘advertising’ covers the use of meta tags in a website’s metadata. The CJEU made it clear that it is irrelevant in that regard that the meta tags are invisible to the internet user and that they are directly addressed not to that user, but to the search engine.

If you scratch its surface you will see that Case C-657/11 also deals with matters of trademark protection, combatting unfair competition, and interdependencies of their respective regulations. The CJEU brought to recollection and emphasized that it may be indispensable, in order to make comparative advertising effective, to identify the goods or services of a competitor, making reference to a trade mark or trade name of which the latter is the proprietor. What is of import, such use of another’s trade mark, trade name or other distinguishing marks does not breach another’s exclusive rights therein where it complies with the conditions of permitted comparative advertising as laid down by Directive 2006/114, the intended target being solely to distinguish between goods and services and thus to highlight differences objectively[2].

[Factual circumstances]

First of all, it must be noted that it appeared from the factual circumstances of the case at hand (Belgian Electronic Sorting Technology NV v. Bert Peelaers, Visys NV, as proceeded before national courts of Belgium) that Visys had inserted into the metadata, and therefore into the programming code of its websites, the meta tags ‘Helius sorter, LS9000, Genius sorter, Best+Helius, Best+Genius, … Best nv’, which corresponded to the names of some of BEST’s goods and to the acronym of its trade name. The CJEU took the time to explain that such meta tags, consisting of keywords (keyword meta tags) read by the search engines when they scan the internet to carry out referencing services, constitute one of the factors enabling those engines to rank websites according to their relevance to the search term entered by the internet user.

[Advertising]

The CJEU established primarily that according to relevant provisions of EU law, the concept of advertising expressly encompasses any form of representation, including indirect forms of representation – particularly where they are capable of influencing the economic behavior of consumers and, in consequence, of affecting the competitor whose name or goods are referred to by the meta tags. Undoubtedly, such use of meta tags is a promotion strategy in that it aims to encourage the internet user to visit the site of the meta tag user and to take an interest in its goods or services.

[Competitor’s mark]

What seems significant with respect to the protection of trademarks and combatting unfair competition, the CJEU opined that the use of meta tags corresponding to the names of a competitor’s goods and its trade name will, in general, have the effect that – when an internet user looking for the goods of that competitor enters one of these names or that trade name in a search engine – the natural result displayed by it will be changed (rigged? – TB) to the advantage of the user of those meta tags, and the link to its website will be included in the list of those results, in some cases directly next to the link to that competitor’s website.

In so far as the use of meta tags (corresponding to the names of a competitor’s goods and its trade name) in the programming code of a website has the consequence that it is suggests to the internet user (who enters one of those names or that trade name as a search term) that that site is related to his search, such use must be considered as a form of advertising.

[Trademark protection and permitted comparative advertising]

Going beyond the issues directly addressed by the CJEU in the judgment of Case C-657/11, it should be noted that a meta tag can involve descriptive or generic term; but it may also be a trademark, protected by law for an entity other than the entity placing the meta tag in its webpage source code. When it comes to the use of another’s trade mark, EU legislation[3] and case law of the CJEU must be taken into account since they pronounce that where the condition of double identity (an identical mark or name to designate identical goods or services) and a negative impact on the functions of a trademark (to name a primary function of indicating the origin of goods or services) are established, liability for an unauthorized use of protected trademarks arises.

According to Article 16(3) Unfair Competition Act (Polish)[4], comparative advertising is advertising that identifies, directly or indirectly, a competitor or goods or services offered by a competitor. Such advertising does not constitute an act of unfair competition only if it meets the cumulative eight conditions as expressly provided for in the Act, including that the advertising (i) is not misleading or (ii) does not create market confusion in distinguishing between the advertiser and its competitor or between their goods or services, trademarks, business names or other distinctive signs, or (iii) uses repute of the mark, markings the company or other distinctive signs of its competitor or a protected geographical indication or protected designation of origin of competing products, in a non-fraudulent manner.

As a result, it appears that the use of meta tags will not result in liability for breach of trademark rights if the herein commented upon form of advertising complies with the requirements for permitted comparative advertising (see specifically: Article 4 of Directive 2006/114).

[1] Article 2(1) of Council Directive 84/450/EEC of 10 September 1984 concerning misleading and comparative advertising, as amended by Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 and Article 2(a) of Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising.

[2] See: Recitals 14 and 15 in the preamble to Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising.

[3] Specifically: Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks; and Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark.

[4] This enactment is the result of the implementation of Directive 97/55 of the European Parliament and of the Council of 6 October 1997 amending Directive 84/450 / EEC concerning misleading advertising. It is in harmony with Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising, as currently in force.