E-Commerce: Frequently Asked Questions

What is a trademark?

A trademark is any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. Trademarks are registered in "classes", which relate to different sectors of goods or services in respect of which the trademark is to be used. For example, a trademark might be registered in class 32: mineral and aerated waters and other non-alcoholic drinks. The registration would enable the owners to oppose use by another party using the same mark for soft drinks but not for a computer program, unless a likelihood of confusion between the products as to their origin could be proven. Trademarks are registered in England under the Trade Marks Act 1994 and it is also now possible to obtain an EU wide trade mark (Community Trade Mark). However, even where a trade mark is unregistered it may still have some proprietary rights through use of the mark which may be defended by bringing an action for passing off in the UK and under similar laws in other countries.

What type of Metatags may I use on my site?

There has been much debate regarding the use of metatags in the code of web pages to increase the profile of websites in response to searches by users. Certain cases, initially in the United States, have highlighted the problems, which may occur where trades marks are used as metatags. In Brookfield Communications Inc -v- West Coast Entertainment Corp [1999] on the basis that meta-tagging could involve a misappropriation of goodwill the use of a third party's mark was prohibited by the courts. However, in some instances, fair use has been admitted (again in America) (Playboy Enterprises, Inv -v- Welles [1998]) where a former Playmate of the Year was allowed to describe herself as such as she did not use any other of the Playboy or Playmate trade marks. The issue has recently come before the UK Courts in Road Tech Computer Systems Limited -v- Mandata, [2000] where Road Tech was able to win its action on the basis that use of its trade mark as a metatag on Mandata's website was trade mark infringement and passing off.

Can I link to other sites?

In the past there has been much debate about whether linking to another site requires permission. Some have argued that linking is an inherent part of the Internet, the manner by which it is navigated and that placing information on the Internet gives an implied licence for another party to link to it. However, case law in the UK (Shetland Times Limited -v- Jonathan Wills et al [1997] FSR 604) and the United States (Microsoft -v- Ticketmaster) means that in certain instances, depending on the use made of the link, it is advisable to obtain permission and if possible enter into a linking agreement before setting up links between different sites. The cases mentioned above have shown that intellectual property and commercial concerns combine to play a role in linking and framing (see below). It may be a copyright or trade mark infringement to use certain elements as links and for the linked site, depending on where the link is too, a user entering the site through the link may not pass through the site via the intended route (i.e. via the home page, this is often referred to as a "Deep Linking"), missing advertising or data collection areas, and thus having a significant commercial impact. Where uses such as these are made of links the courts are likely to find that an infringement has taken place. It is also advisable to place a disclaimer on your own website stating that the site may not be linked to without consent. This should act to revoke the implied licence referred to above. The obligation on other sites to seek your permission should help to try to avoid links being created by sites, which may be damaging to your reputation or the contents of which you do not approve.

Can I frame pages from other sites?

Framing may occur in two-ways; (i) where the identity of the framed website is clear, or (ii) where the user will not, without checking the URL, be aware that he or she is now viewing another site. The same implications and considerations as apply to linking also apply to framing and it is advisable to obtain permission and enter into an agreement before framing websites, in particular where the user may be unaware that he or she is viewing a different site. This type of framing is particularly objectionable and is often viewed as being parasitic. A US case involving Total News and the Washington Post, whilst it settled before judgment, has been held to establish a basis that framing for commercial purposes is not generally to be permitted without the consent of the owner of the framed contents.

If you have any queries about these questions and answers, please contact John Armstrong at CMS Cameron McKenna by e-mail on [email protected] or phone 020 7367 2701.