Invisible Marks May Still Infringe - The crackdown on meta-tag abuse continues

According to a recent holding in the English High Court, use of the trademark of another may infringe, even if no human can perceive the trademark.

In Road Tech Computer Services, Ltd. v. Mandata Ltd., a company which used its competitor's trademark as a keyword "meta-tag" to attract Internet browsers to its website was held to have "passed itself off" as being associated with its competitor, and to have infringed its competitor's trademark. This is the first "meta-tag" case in the United Kingdom following several similarly situated cases in the United States. Road Tech highlights the possibility that trademark owners may be able to utilize intellectual property laws to protect against misleading meta-tag use under trademark infringement and passing off causes of actions.

Note, however that the law is not uniformly developed in meta-tag cases; while an Internet service provider was enjoined from using the name of a law firm in the United States, no cases of this kind have been decided in Australia where "use as a mark" and related goods may be required.

Preventing Parallel Imports: Consider Australian labeling requirements

While specific laws have been applied to prevent parallel importation of goods in Australia in the past, the restrictions on such imports have eased recently. In attempting to prevent the parallel importation of goods, consideration should be given to whether:

• the packaging and labeling information on the goods is complete;
• all the statements on the goods are accurate in the Australian context; and
• the goods meet minimum Australian standards (e.g., labeling, safety, and warnings).

These considerations can be valuable alternative legal remedies for manufacturers in Australia where intellectual property laws do not offer sufficient relief.

Change in Trade Mark Office procedures

The Australian Trade Marks Office has announced that it will now accept trademark applications which broadly specify services such as "retail services," "entertainment services," "education services" etc. The practical consequences for this change could include an increase in the number of citations due to broader specifications, an increase in the number of oppositions, further investigations into the precise services offered by a registrant, and an increase in vigilance in engaging "watch" services.

Use of the TM and ® symbol in Australia

Until a trade mark application proceeds to registration, owners cannot represent that a trademark is registered in Australia with the "®" symbol. Although such a symbol has no statutory significance in Australia, any use before registration may constitute an offense under the Australian Trade Marks Act of 1995. However, it is permissible to represent that the trade mark is pending registration, or is in use with the symbol "TM".