Trademark infringement through metatags and SEO plugins

The use of third-party trademarks in meta tags or via SEO plugins is a common practice in digital marketing, but one that carries legal risks. Under certain circumstances, these methods can constitute trademark infringement and be subject to a warning. The legal assessment of this practice is complex and has been addressed in several court rulings that have defined the boundaries of what is permissible over time. It is important to understand that case law in this area is dynamic and evolves with the development of technology and online marketing.

Basic ruling of the BGH from 2006

The German Federal Court of Justice (BGH) issued a groundbreaking ruling on this issue on May 18, 2006 (case no. I ZR 183/03). The BGH ruled that the use of a third-party trademark as a metatag can constitute a trademark infringement. The court argued that although metatags are not visible to the average Internet user, they can still fulfill a function of identifying the origin of goods or services. This decision was groundbreaking, as it clarified for the first time that non-visible elements of a website can also be legally relevant. The BGH emphasized that the use of third-party trademarks in metatags is likely to exploit or impair the distinctive character or reputation of the trademark.

Recent case law

In the following years, courts have largely confirmed and clarified this line, taking into account changing technical circumstances and marketing practices:

1) In 2010, the Federal Court of Justice confirmed (case no. I ZR 51/08) that the use of a third-party trademark in the part of a website that is not immediately visible generally constitutes trademark use. This decision extended the scope of protection to other non-visible elements of a website, such as hidden texts or keyword stuffing. The court emphasized that it is not the perceptibility by the user that is important, but the function of the trademark as an indication of origin.

2 The Frankfurt Higher Regional Court clarified in 2014 (case no. 6 W 12/14) that the use of third-party brands in metatags is generally permitted if products of this brand are actually offered on the website. However, it is not permitted if users are to be redirected to other products. This decision differentiated the previous case law and created a framework for the legitimate use of trademarks in metatags. The court recognized that in certain cases there may be a legitimate interest in referring to the offer of branded products.

Current legal assessment

The use of third-party trademarks in metatags or SEO plugins can constitute trademark infringement if certain criteria are met. These criteria have emerged from the case law of recent years and provide a guideline for legal assessment:

1. the trademark is used without authorization. This is the case if the website operator is neither the owner of the trademark rights nor has a license to use them.

2. there is a likelihood of confusion on the part of the consumer. This may be the case if the type of use gives the impression that there is an economic or organizational connection to the trademark owner.

3. the use is not purely descriptive. Descriptive use, for example to indicate compatibility with products of the trademark, may be permissible.

It is important to note that not every use of another person’s trademark automatically constitutes an infringement. The context and type of use are decisive. Courts consider the overall circumstances of the individual case, including what is customary in the industry and the expectations of the average internet user.

Risk of warnings

Companies that use third-party brands in metatags or SEO plugins run the risk of being warned. Trademark owners can take action against such practices if they suspect an infringement of their rights. Warning letters in this area are not uncommon and can incur considerable costs. They usually include a request to cease and desist, the submission of a cease and desist declaration with a penalty clause and often also claims for damages. The costs of defending against an unjustified warning or fulfilling justified claims can be considerable. It is therefore advisable to carefully check the use of third-party trademarks in SEO measures and to seek legal advice in case of doubt.

Recommendations for practice

To minimize legal risks while implementing effective SEO strategies, companies should consider the following recommendations:

1. only use trademarks to which you own the rights or for whose use you have express permission. This is the safest way to avoid trademark infringements.

2. only use third-party trademarks in a descriptive context if you actually offer their products or provide services related to these products. Make sure that the use is fair and appropriate.

3. avoid using trademarks that have nothing to do with your offer. This could be seen as an attempt to profit from the brand’s reputation and is legally problematic.

4. regularly check your meta tags and SEO settings, especially if you use plugins or external service providers for your SEO. Brands are often inserted into meta tags unconsciously or automatically.

5. document your SEO strategy and the reasons for using certain keywords. This can be helpful in the event of a legal dispute to prove your intentions.

Conclusion

The use of third-party trademarks in metatags and SEO plugins remains a legally sensitive issue that requires careful consideration. While there are legitimate use cases, companies should be cautious and seek legal advice when in doubt to avoid warning letters and potential litigation. Case law in this area is constantly evolving and it is important to stay up to date. A balanced SEO strategy that considers both legal aspects and marketing objectives is the key to success in the digital age. Companies should always bear in mind that short-term SEO benefits from using other people’s trademarks can bring long-term legal and financial risks.

Author: Marian Härtel

Marian Härtel ist Rechtsanwalt und Fachanwalt für IT-Recht mit einer über 25-jährigen Erfahrung als Unternehmer und Berater in den Bereichen Games, E-Sport, Blockchain, SaaS und Künstliche Intelligenz. Seine Beratungsschwerpunkte umfassen neben dem IT-Recht insbesondere das Urheberrecht, Medienrecht sowie Wettbewerbsrecht. Er betreut schwerpunktmäßig Start-ups, Agenturen und Influencer, die er in strategischen Fragen, komplexen Vertragsangelegenheiten sowie bei Investitionsprojekten begleitet. Dabei zeichnet sich seine Beratung durch einen interdisziplinären Ansatz aus, der juristische Expertise und langjährige unternehmerische Erfahrung miteinander verbindet. Ziel seiner Tätigkeit ist stets, Mandanten praxisorientierte Lösungen anzubieten und rechtlich fundierte Unterstützung bei der Umsetzung innovativer Geschäftsmodelle zu gewährleisten.