Meta tags, keywords and the online protection of trade marks: the Trade Marks Act, 1999 and passing off

Law of Intellectual Property and Information Technology · Unit II · Topic 4 of 12 · 7 min read

How meta tags and search keywords use marks invisibly, initial interest confusion from Brookfield to Network Automation, the UK and EU response, the Indian keyword cases (Consim, DRS Logistics), and how sections 29, 30 and 27(2) of the Trade Marks Act and the classic trinity of passing off apply to domain names, metatags, marketplaces and parody online.

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On this page

1. What meta tags and keywords are
2. The US approach: initial interest confusion and its retreat
3. The UK and EU approach
4. The Indian cases
5. The statutory framework: Trade Marks Act, 1999
6. Passing off online
7. Other online uses of marks
How this is examined

Cases checked to exist. Read the judgment before quoting a holding.

Every case cited here has been checked to exist — the citation resolves and names the right parties. The propositions attributed to each case have not been verified line by line against the judgment. Case names link through to the full judgment: read it before quoting a holding in an examination answer, and never carry a proposition from notes into court on trust.

The examinable core. A meta tag uses a mark that the consumer never sees. The question is whether such invisible use is “use” of the mark and whether it causes confusion. US courts first said yes through the doctrine of initial interest confusion, then narrowed it. European and Indian courts focus on whether the user, on the page actually displayed, can tell who is behind the goods. Infringement under the Trade Marks Act needs a registered mark; passing off protects unregistered goodwill and is the usual route for domain names.

1. What meta tags and keywords are

Meta tags are words placed in the HTML code of a web page, chiefly the “keywords” and “description” tags, which early search engines read to decide what a page was about and how to rank it. A trader who put a competitor’s mark in its meta tags could make its own site appear when users searched for the competitor. Meta tagging in the syllabus refers to this practice. Modern search engines give little or no weight to the keywords tag, and the dispute has moved to keyword advertising: buying a competitor’s mark from a search engine so that one’s advertisement appears when users search for it. Related practices are hidden text (marks written in the background colour) and the use of marks in page titles and URLs.

2. The US approach: initial interest confusion and its retreat

Brookfield Communications v. West Coast Entertainment (9th Cir., 1999). West Coast used “moviebuff”, Brookfield’s mark, in its meta tags. The court held this infringed by initial interest confusion: like a misleading billboard that draws a driver off the highway to the wrong shop, the tag diverts consumers who, even if they realise the mistake, may stay. Use of the mark’s descriptive meaning (“movie buff”, with a space) remained allowed.
Playboy Enterprises v. Welles (9th Cir., 2002). A former Playmate of the Year used “Playboy” and “Playmate” in her meta tags to describe herself. This was nominative fair use, because the terms described her accurately and there was no suggestion of sponsorship.
Network Automation v. Advanced Systems Concepts (9th Cir., 2011). On keyword advertising, the court said that the question is the likelihood of confusion on the actual results page, given the sophistication of modern internet users and the labelling of advertisements, and that Brookfield should not be applied mechanically.

3. The UK and EU approach

Reed Executive v. Reed Business Information (Court of Appeal, 2004). Jacob LJ doubted that invisible use in meta tags could cause confusion, since the consumer never sees it, and expressed scepticism about initial interest confusion as a separate doctrine.
Google France v. Louis Vuitton (CJEU, 2010). The search engine does not itself use the mark in the course of trade; the advertiser does. The advertiser infringes if the ad does not enable a normally informed and reasonably observant user to ascertain, or enables them only with difficulty, whether the goods come from the mark owner or a third party.
Interflora v. Marks & Spencer (CJEU, 2011). Keyword use that offers an alternative to the goods of the mark owner, without dilution, tarnishment or confusion, is in principle fair competition.

4. The Indian cases

Consim Info v. Google India (Madras High Court, 2013). The owner of BharatMatrimony sought to restrain Google from selling its marks, which included descriptive words such as “matrimony”, as keywords to competitors. The court refused an interim injunction: the marks were largely descriptive, and use as a keyword was not shown to cause confusion.
Google LLC v. DRS Logistics (Delhi High Court Division Bench, 2023). DRS, owner of “Agarwal Packers and Movers”, complained that Google’s Ads programme sold its mark as a keyword to competitors. The court held that Google’s active role in suggesting and selling keywords is use in the course of trade, so that Google may not be a passive intermediary for that activity under section 79 of the IT Act. Whether a particular use infringes depends on confusion or unfair advantage, which must be decided at trial; the use of a mark as a keyword is not by itself infringement.

5. The statutory framework: Trade Marks Act, 1999

Infringement under section 29 requires use of a registered mark, in the course of trade, by a person who is not the proprietor or a permitted user.

“Use”. Section 2(2) reads use of a mark to include use of any printed or other visual representation, and use in relation to goods to include use “in any physical or in any other relation whatsoever”. That wording is wide enough to cover use on a website or in a domain name. Whether invisible use in code is a “visual representation” is arguable; the DRS Logistics approach treats the commercial sale and use of a keyword as use.
Section 29(1)–(3). Identical or similar marks for identical or similar goods, with confusion presumed for identical marks and goods.
Section 29(4). Use of a mark with a reputation in India, even for dissimilar goods, without due cause, taking unfair advantage of or being detrimental to its distinctive character or repute. This is the dilution provision used against cybersquatters of well-known marks.
Section 29(6). Acts that amount to use, including offering goods, using the mark on business papers and in advertising.
Section 29(8). Advertising that takes unfair advantage of a registered mark, or is contrary to honest practices, or harms its reputation.
Section 30. Defences: use in accordance with honest practices that does not take unfair advantage (s.30(1)), descriptive use (s.30(2)(a)), comparative advertising within those limits.
Well-known marks. Sections 2(1)(zg) and 11(6)–(9); Indian courts have declared marks well-known in suits against domain names and online imitators.
Remedies. Section 135: injunction, damages or account of profits, delivery up; forum under section 134.

6. Passing off online

Section 27(2) preserves the action for passing off. The plaintiff must prove the classic trinity (Reckitt & Colman v. Borden, House of Lords, 1990, the “Jif Lemon” case): goodwill attached to its name or get-up, a misrepresentation by the defendant likely to lead the public to believe the goods are the plaintiff’s, and damage or likely damage. In Cadila Health Care v. Cadila Pharmaceuticals, 2001 INSC 173, the Supreme Court listed the factors for deceptive similarity in passing off, including the nature of the marks, the class of purchasers and their likely care, and the mode of purchase. Online these factors favour plaintiffs: users move quickly, rely on search results, and may not check who runs the site.

Passing off fits the internet because it does not depend on registration in a particular class, and goodwill may be established through an online presence that reaches Indian users. Most domain name cases from Yahoo! to Satyam were decided in passing off. A foreign plaintiff must show goodwill or reputation in India; transborder reputation can be proved through internet availability, but after Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries, 2017 INSC 1230, the plaintiff must show actual goodwill in the Indian market; global fame alone is not enough.

7. Other online uses of marks

Marketplaces. Christian Louboutin v. Nakul Bajaj (Delhi High Court, 2018): a luxury goods site that promoted, curated and stored products took an active role and lost safe harbour under section 79 of the IT Act.
Parody and criticism. Tata Sons v. Greenpeace International (Delhi High Court, 2011): an online game, “Turtle v. Tata”, criticising a port project, was not restrained, because it was non-commercial critical speech and damages were the proper remedy if it was defamatory.
Social media handles and app names are treated like domain names; platforms run their own complaint procedures.

Debate: is invisible use infringement? For: the trader diverts consumers by exploiting the goodwill in the mark, which is what trade mark law forbids; the harm is real even if the user is not confused at the point of sale. Against: trade mark law protects against confusion about origin, and a user who sees a clearly labelled competing result is not confused; treating keywords as infringement restricts comparative information and competition. Indian courts are taking the second view as the default, but are not treating search engines as neutral.

How this is examined

Likely long questions: “Discuss the online protection of trade marks under the Trade Marks Act, 1999 and the law of passing off.” “What is meta tagging? Is it an infringement of trade mark? Discuss with cases.” “Examine the liability of search engines for keyword advertising.”

Likely short notes: meta tags; initial interest confusion; Brookfield; Google France; DRS Logistics; passing off on the internet; nominative fair use.