Ask the Lawyer: Trademark disputes and stopping spammers

Lawyers Simon Briskman, Sarah Wright and Lise-Anne Dunn from London-based firm Olswang answer your questions on trademark infringement in search meta tags and how to deal with a spammer who's stealing the name of a small business. If you have questions related to IT or business for the laywers, email editorial@silicon.com.

Q: 'BIW' is a registered trademark of BIW Technologies Ltd, certificate number 001769926, registered in all countries of European Community. One of our UK competitors is using 'BIW' as a keyword to prompt the appearance of its 'sponsored link' (i.e. an advert) on Google Adwords. When we objected, the competitor claimed it is not breaching the trademark as it is not using BIW in its advert and cites an American court case involving an insurance company Geico (though I cannot see how a US case is necessarily relevant to the UK/EC situation).

Who is right? I thought this kind of trademark abuse would be covered by the same kind of regulations that cover use of other organisation's trademarks as keywords in website meta tags, etc. --Paul Wilkinson, London

A: The law on both sides of the Atlantic in respect of keywords is uncertain at the moment, with both the UK and US courts yet to give a definite ruling on the issue.

In the Geico v Google case referred to by your UK competitor, the relevant US court found that use of a trademark as a keyword did constitute use of the mark "in commerce" but that since Geico, the trademark owner, had failed to provide any evidence that Google's use would confuse the public, Geico's application for summary judgment should not succeed. However this judgment was only at the summary judgement stage and is therefore not conclusive of how the court will deal with the matter at full trial, expected later this year. In any event, as you say, US case law does not impact English law.

Currently the English law position is unclear. The latest case dealing with the use of trademarks on the internet is the Court of Appeal's judgment in Reed dating from March 2004. The defendant was facing a claim of trademark infringement in relation to its use of a similar mark to REED as a meta tag. Since the meta tag used by the defendant was not identical but only similar to the REED mark, the trademark owner needed to show confusion to secure an infringement. (Under English law, where the mark and the goods and services are identical, there is no need to show confusion, unlike in the US.) As with the Geico v Google case, the UK Court of Appeal found no evidence of confusion.

However the Court of Appeal went further and commented that even if the defendant had used a meta tag identical to the REED mark, he doubted whether the claim for infringement would be made out. It questioned whether meta tag use was "use of a trademark in the course of trade".

Trademarks are badges of origin and function to distinguish goods or service from one company from those of another. Use of a trademark as a meta tag, the judge argued, was invisible, so could not be "trademark use". By invisible, the judge was referring to the fact that an internet user using a search engine would not be aware that the hits generated from his search were selected on the basis of a meta tag identical to the trademark in his search terms. This was particularly the case when the hits listed did not themselves include the trademark.

Given these comments in relation to meta tags, the legal position in respect of keywords is equally uncertain. Most English lawyers would nevertheless advise their clients to be wary of using meta tags or keywords which are identical to registered trademarks since the likelihood of receiving a claim for trademark infringement will be high. And with the law unsettled, it is hard to predict who would be the winner, the trademark owner or the meta tag/keyword user.

Rather than addressing your complaint to your competitor, you may get a better result contacting Google. At the moment it is applying a different policy to US or Canadian trademark rights to those protected in the rest of the world. Their Trade Mark Complaint Procedure for Trade Mark Rights outside the US and Canada (accessible on the Google UK website) states that they will act where one of their advertisers uses a term that "corresponds" to a registered trademark - either in the text of an advert or as a keyword to trigger the advert - upon receipt of a complaint from the relevant trademark owner. This would therefore appear to be the quickest and most efficient way to deal with the issue.

Q: I own and operate a small website called www.Herb-Island.com. I sell health and wellness-related products. I noticed that someone out there is destroying my public standing by sending spam emails out with the send url being 'Sales@Herb-Island.Com'. When you look at the actual IP address you can see that it is not actually from my server at all but from a French company called Proxad. To top it all off, the little git is sending the MyDoom virus out with every mail. I have now tried for several weeks to get in touch with anyone from Proxad (phone, emails) and had no response. I've left messages, emailed abuse@proxad.net but to no avail.

So as far as I am concerned I have done everything possible to contact these people but they're just not interested. In other words they are not taking steps to ensure that their servers cannot be used for malicious purposes and are in fact aiding the hackers/spammers of this world.

Is there any way I can get some kind of legal recourse against these people as ultimately it is my reputation which is being flushed down the pan here, not theirs? --Paul Foley, Geneva, Switzerland

A: There are three possible avenues of legal recourse that you could pursue against the 'spammer' but unfortunately each brings associated difficulties and problems.

The main issue confronting you, which is typical in any complaint of this sort, is that whilst you do have a strong legal case, you are in fact trying to pursue a spammer in a different country, in this case France. You may, therefore, have to pursue an action in France, under French law and although many of the key principles are similar there, we have only looked at the English law issues involved.

Option one: An action for trademark infringement
The first possibility is to pursue an action for trademark infringement, for use of the trademark 'Herb Island' as part of the offending domain name (assuming, of course, that you have registered 'Herb Island' as a trademark). Infringement of a registered trademark occurs where there is unauthorised use in the course of trade of a sign that is identical or similar to that trademark. If this could be proved, then you would be able not only to seek damages but you would also be able to seek an injunction to prevent the perpetrator from continuing to use Sales@Herb-Island.com.

Option two: An action for 'passing off'
If you have not registered the domain name as a trademark, you might still be able to rely on your rights by pursuing a passing off claim - a claim that the perpetrator is passing off your reputation. Here you would have to prove three things:

• Goodwill: You would need to be able to prove that your business has goodwill in its domain name, which is simply the benefit and advantage of a good name, reputation and connection of a business.

• Misrepresentation by the defendant: Here the court will look at the perception of the public, and whether they could be misled into thinking that the spam emails from Sales@Herb-Island.com were legitimate emails being sent out by your business.

• Consequent damage: You must show that you have suffered, or are likely to suffer, damage to the property in your goodwill because of the misrepresentation.

Option three: A complaint to the police
Since each spam email that is being send from Sales@Herb-Island.com contains a virus, it is possible that the perpetrator is committing an offence under Section 3 of the Computer Misuse Act 1990 (CMA) - causing unauthorised modifications of the contents of any computer. You might therefore consider reporting your problem to the police.

Whilst it seems you have three separate possible avenues of legal redress, there are a number of associated problems.

From a practical viewpoint, your situation is problematic since you don't know from where exactly the spam emails are originating. This is likely to make it very difficult for you to establish the identity of the perpetrator. Even if you could find out, pinpointing them in order to issue proceedings against them could be complex.

However, there is a strong argument that, since you have notified the host of the website of the spamming (as you say by emails, phone messages and so on), they could be jointly liable with the perpetrators for the spamming. Proxad may be concerned about incurring any such liability, and therefore, a more formal notice to them from the police or other such authority may work.

Separately, you may be able to ask Proxad to close down the sender, assuming that in their standard terms and conditions of use with the subscriber, they have 'take down' rules which entitle them to stop such illegal behaviour.

On top of these practical difficulties, should you decide to complain to the police, they still may not process your complaint, whether through lack of resources or other priorities. However, changes to be brought in under the Computer Misuse Act will mean that the Department of Public Prosecutions will soon help to facilitate private prosecutions to enable private companies to take action in cases which the police and CPS do not intend to pursue. You may be able to take advantage of this new change.

Finally, not only are you likely to experience complicated jurisdictional issues in terms of the country in which any complaint or action should be processed but to pursue a legal action of the sort outlined above will also be both expensive and time consuming.

Simon Briskman, Sarah Wright and Lise-Anne Dunn are lawyers in Olswang's Media, Communications and Technology Group.

Disclaimer: Olswang is a firm of solicitors practising English law. This feature contains general responses to readers' letters based on English law, which are intended to be informative and interesting. Although we endeavour to ensure that the content is correct, readers should always seek appropriate legal advice before taking or refraining from taking any action. The contents of this feature should not be construed as legal advice and we disclaim any liability in relation to its use.