'Invisible’ trade marks. Is it possible to protect or infringe something you can’t see or touch? Yes it is

Blog | Intellectual Property
Published: 9th May 2022
Area: Corporate & Commercial

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The complex and constantly evolving art of SEO (search engine optimisation) has kept marketers and content writers busy in recent years but now lawyers are getting involved too.  A recent trade mark infringement case between US dating site group Match Group, owner of Tinder and OkCupid, and smaller UK dating site Muzmatch, a Muslim dating app, has centered on the use of trade marked words and phrases that appear in a company’s SEO strategy and metadata. The judgment was handed down on 20 April 2022.

It is not uncommon for businesses in a similar marketplace to employ various tactics to take advantage of a competitors brand presence but there has been an increase in companies using competitors’ trade marks in metadata and SEO strategies, in an attempt to compete directly with each other online.

Incorporated into copy or buried deep in code, these are often referred to as ‘invisible’ trade marks, creating a grey area when it comes to infringement.  As a relatively new ‘marketing’ tactic, the impact of using this approach for both parties involved is only now being fully understood and as it is still comparatively new, lawyers are now taking a closer look.

The background

Search engines use algorithms and will crawl and trawl web pages to find keywords to help with page rankings.  Incorporating invisible trademarks into page content can drive traffic to a site and in this case, Muzmatch had created individual landing pages for approximately 5,000 keywords relating to Muslim marriage or Muslim matchmaking, which then directed browsers to the organisation’s main page.

This approach proved an incredibly effective marketing tool for the business, with an estimated 32,770 searches of three specific URLs leading to 11,725 click-throughs to the landing pages on the Muzmatch website.

Other companies have also hidden trade marked keywords on their websites by adding them in the same colour text as the website background so they cannot be seen, or by making the font size so small that it looks like a simple black line until the user zooms in. While the end user is unlikely to see them, search engines will.

Another way for companies to use trade marks ‘invisibly’ is by incorporating them into metadata and metatags, which is information used by search engines to identify the content of a website.

Both of these strategies are employed by many businesses very successfully but it can also open opportunities up for legal action too.  Match.com’s central argument was that Muzmatch used the word ‘match’ in its SEO and metatags to boost web traffic and therefore piggyback off the Match.com name. The word ‘match’ unsurprisingly appears in multiple registered trade marks owned by Match.com.

What is the current law?

Current law does not explicitly cover specific use in a digital setting – so law makers are applying existing trade mark law to new situations.    As the law is not distinct to a digital setting, the facts of each potential case of possible infringement are absolutely key and, as businesses are finding out, there are a vast number of variables involved – such as the wording of the trade mark itself, the goods or services on offer, the consumer demographics, similarity of the mark which is actually registered to the one used, how it is used, and even the trading history and size of the parties involved. Muzmatch’s response argument was primarily based on the trade mark itself, claiming that they had used the word ‘match’ in a purely descriptive sense, yet they were still found to have infringed Match Group’s trade marks incorporating the word ‘match’.

While it is entirely possible (and common) to trade mark an everyday phrase or word, it is highly unlikely that any company could prevent it ever being used elsewhere – that would provide too wide a scope for protection. However, as Muzmatch had included the word ‘match’ in its SEO strategy it was decided that it was using it in such a way as to potentially confuse a customer into thinking Muzmatch was affiliated with match.com - and therefore infringed its trade mark.  Such a finding is more likely in circumstances such as this where the goods/services offered by the potential infringer are identical to those for which the trade mark is registered.

Muzmatch’s second argument revolved around concurrent trading history. As the business had been trading since 2011, it felt that there had been sufficient time for Match Group to bring a case during this period, if it truly believed infringement had taken place. There is precedent for the ‘honest concurrent use’ defence, which briefly provides that if two companies use the same or similar words or phrases concurrently for a sufficiently long period, that mark may have come to indicate the goods or services of either of those parties.  Either company may then be entitled to register the mark notwithstanding that the other company had also used the mark, and may be able to defend an infringement claim brought by the company. It was however ruled in this case that this defence did not apply to Muzmatch as Match Group had filed the trade mark in 1996, 15 years before Muzmatch was formed and started trading.  It was found that they were therefore technically infringing from the beginning of their trading.

How can companies mitigate the risk of this happening?

There are a number of ways that companies can minimise the chance of legal action when planning their SEO and metadata marketing strategies. If there is any possible chance of brand confusion, putting a disclaimer on the website clearly stating there is no affiliation can help to sway a judge in the business’ favour should a competitor accuse them of infringement. Beware – it must be used in good faith and if found to be buried in the small print or is difficult to find then this may be viewed by a court as deliberately obscuring it, allowing for confusion.

Companies should also consider consulting a legal specialist before deciding and embarking on a SEO marketing strategy. As mentioned there are many variables and seeking legal advice ensures the correct due diligence has been carried out from the beginning, for example checking or clearing the metatags and keywords to be used, ensuring they will not be infringing another company’s trade marks.

This case could be viewed as a David v Goliath style situation - larger companies, such as Match Group with more time and deeper pockets bringing action against possible smaller infringers, who may not have the resources to engage in a costly legal battle.

The term ‘ invisible’ trade marks is also slightly misleading as while they are hidden from a user, any analytics software can find them and any code can be found using an internet browser. Therefore ‘invisible’ is not be confused with invincible and businesses should proceed with caution.

We wait to see how the law surrounding trade marks evolves to fit the digital world of today. With current decisions in this area primarily based on case law, they are subject to change and are always fact specific, creating a distinct lack of certainty. Many past decisions have also been influenced by EU laws, which now of course become less relevant in the years following Brexit.

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