In present times, a brand’s business is judged by the scope of its advertisement through various platforms, including search engines such as Google. A brand needs to bring the attention of consumers from a single keyword/Ad word towards its business. However, a recent trend in this era of buying keywords/Ad words has emerged wherein business competitors use the keyword/Ad word similar or identical to a famous or well-known trademark of their competitors to diverge the internet traffic towards their business under the disguise of its rival’s reputation.
In the present case, a similar issue has been discussed at length. The division bench of the Hon’ble Delhi High Court in the case of Google LLC vs Makemytrip (India) Private Limited and Ors., decided on the appeal which was filed against an ad interim order dated April 27, 2022 (impugned order) in favour of the respondents. The factual background of the impugned order was that the plaintiff/respondent, namely, MakeMyTrip (India) Private Limited (MIPL), had filed a suit seeking permanent injunction against Defendant Nos. 1 and 2 (Booking.com) refraining the use in any manner of its registered word marks ‘MakeMyTrip’, ‘MMT’ and ‘MakeMyTrip Hotels Ltd.’ or any deceptive variant thereof as keywords through the Google Ads Program or infringing the same.
The respondent also sought a mandatory injunction against the appellants/defendant nos. 3 and 4 (Google), requiring them to ensure that Booking.com does not promote its business by using MIPL’s trademarks as keywords in the Google Ads Program. In the said impugned order, the Learned Single Judge restrained the Defendants from using MIPL’s trademarks in any form and on the Google Ads Program. It was submitted that MIPL had commenced its business initially with airline ticket bookings, which has now grown to be one of the largest travel companies in India.
MIPL also claimed that it maintained an active and extensive presence on several social media platforms to engage with its customers and promote its services. It was also submitted that Google manages and operates an advertisement program (Google Ads Program) in conjunction with the search engine to display sponsored links and advertisements on its search engine result page. MIPL stated that the search results displayed on Google pursuant to any search query are primarily of two types, including organic/natural and inorganic/sponsored. The display of sponsored search results was pursuant to the advertisers subscribing to the Google Ads Program. These sponsored results are pre-fixed with the letters ‘Ad’.
Further, when a person feeds in the search query, which is either a keyword or contains a keyword, the link to the website of the advertiser who has selected the keyword is considered for display on the Google Sponsored Ad section. Google also auctions such keywords in real time. The advertisers desirous of selecting a particular keyword specify the maximum price they are willing to pay if a user clicks on their advertisement. In this regard, Google gets paid the bid amount for every user visiting the advertiser’s landing page by clicking on the sponsored link. Given this, the Learned Single Judge passed the impugned order and prima facie concluded that using a registered trademark as a keyword constituted trademark infringement.
However, the crucial point of issue emerged from the decision of the Learned Single Judge, whose interpretation deemed the usage of trademarks as keywords as trademark infringement. This judgment was contested through the present appeal. In this regard, the division bench considered the decision in the case Google LLC v. DRS Logistics (P.) Ltd. and Ors., held that using marks as keywords would not amount to use as trademarks. Therefore, the use of such marks as keywords would not constitute infringement under Section 29(1) of the Trade Marks Act, 1999 (“the Act”).
In addition, this Court held that the trademarks as keywords were used in connection with the goods and services of the advertiser. Thus, it was held that if the goods and services advertised covered under the sponsored link and those covered under the trademark were similar, Section 29(4) of the Act would have no application. Thus, the use of trademarks as keywords lacking any confusion or unfair advantage would not infringe on the trademark.
Further, the Court held that Booking.com was a well-known and popular platform offering travel services. Prima facie, the Court could not accept that an internet user was likely to be misled into believing that the services offered by Booking.com were those of MIPL. It was rightly held that the MIPL’s trademarks were not applied to any material when used as a keyword. Further, there was no application to any material for advertising goods or services. Thus, Section 29(7) of the Act was also not applicable.
MIPL also contended that as per Section 29(3) of the Act, it must be presumed that using MIPL’s trademarks would result in confusion. It was further submitted that the burden to rebut the presumption would rest with the defendants, and the same could be done only at the stage of trial. Thus, in the first instance, an ad interim injunction was required to be issued. However, Google countered the aforesaid. Google argued that it was unnecessary for the presumption to be rebutted only at the trial stage.
The defendants could, at a threshold and based on the material on record, dispel such presumption and rely on the decision of the Bombay High Court in the case of Meso Pvt. Ltd. v. Liberty Shoes Ltd. The Court further held that the impugned order indicates that the learned Single Judge had not found the use of MIPL’s trademarks to be infringing under Section 29(2) of the Act. Thus, sensu stricto, this question would not arise in this appeal. In view of the above, the present impugned order was set aside.
As the world of intellectual property evolves and businesses invest in their intellectual property rights, the current practice of buying similar or identical keywords/ad words as trademarks of business owners by their competitors has become alarming. However, the Courts are approaching this issue with an intellectual perspective that the consumers are well-versed with the renowned brands, and any such confusion may not arise by using similar keywords/ Ad words by third parties. The legal approach towards this issue is also evolving day by day, depending on the facts and circumstances of each case.
Authors: Manisha Singh and Garima Chopra
First Published By: Mondaq here