The issue of misrepresentation of registered trademark through Google Ads Program came up before Delhi High Court in Makemytrip India Private Limited v. Booking.Com B. V. & Ors. (Date of Decision: 27th April, 2022). Google Ads Program uses registered trademark as a keyword and makes such trademark available for auction, forcing even the registered proprietor to bid for his/ her own trademark preventing it to fall into hands of its competitor. This forces trademark owner to make continuous investments in Google Ads to have higher listing on the Google Search results otherwise their competitor would use his registered trademark as keyword and have a higher listing. The question here considered by court is whether such use of registered trademark either in the Ad title, metatags or in the Ad text and hidden use be considered as misrepresentation. Delhi High Court primarily referred to two cases namely, DRS Logistics (P) Ltd & Ors. v. Google India Pvt. Ltd. 2021 (88) PTC 217 (Del) and People Interactive (I) Pvt. Ltd. v. Gaurav Jerry [MIPR 2014(3)101].
In DRS Logistics (P) Ltd & Ors. v. Google India Pvt. Ltd. 2021 (88) PTC 217 (Del), Court had opined that Use of a registered mark by competitors even as metatags would be infringement, though the same may be invisible to a user, this use registered trademarks in Google Ads Program is infringing use.
In DRS Logistics (Supra) it was observed that, “….. that had the AdWords Program of Google not existed, the only option available to the infringer / prospective advertiser in order to achieve the same result would have been to change their meta-tags (source coding) which has already been held to be “use” of trademark and as such infringement. This aspect also highlights the fact that the same result is sought to be achieved through different means.”
Bombay High Court observed in People Interactive (I) Pvt. Ltd. v. Gaurav Jerry [MIPR 2014(3)101] that invisible use of registered trade mark by non- proprietors dilutes the mark and amounts to online piracy as, “Meta-tags are routinely used by the search engines and search engine robots to assess webpage contents and other relevant material relating to a webpage in the building of search engine indices. This is where an illicit use of meta tags can be severely damaging. For, if in the meta tags of one website a person uses the domain name or other unique identifying marks, characters or name of another, a search engine, being robotized, is bound to confuse the two, and to report that the first and the second are the same. A search for the latter (the original, the victim) is very likely to yield results for the former, the one that has pirated the identifying marks or name. Now if any individual was to run up a web site and use this Court’s “keywords” or “description” meta tag contents, a search engine robot would identify that illicit website as being the “official website of the Bombay High Court.”…….. “Diversion of internet traffic away from trademark owner’s website to infringer’s website there cannot be better evidence of passing off, confusion and deception. This is, plainly, hijacking the Plaintiffs’ reputation and goodwill and riding piggyback on the Plaintiffs’ valuable intellectual property. This amounts to hijacking traffic from the Plaintiffs’ site by a thoroughly dishonest and mala fide use of the Plaintiffs’ mark and name in the meta tags of his own rival website. The distinctive character of the Plaintiffs’ mark is thus diluted and compromised by the actions of the Defendant.”
Restraining the defendants, Delhi High Court observed that:
i. use of trademark here is a use which construed as reference to the use of printed or other visual representation of the mark (Section 2(2)(b) Trademarks Act, 1999);
ii. where such trademark has reputation, such use of trademark would amount to taking unfair advantage of or is detrimental to the distinctive character of the registered trademark (Section 29(4)(c) Trademarks Act, 1999);
iii. such use of registered trademark in Google Ads Program is considered to be use in business papers or in advertisement [Section 29(6)(d) Trademarks Act, 1999];
iv. such use is further considered as knowingly unauthorised use business papers or in advertisement , labelling, packaging goods [Section 29(7) Trademarks Act, 1999 ]
v. use in Google Ads Program amounts to unfair advantage and contrary to honest practices in industrial or commercial matter [Section 29(8)(a) Trademarks Act, 1999]
This “invisible” use of a mark as a keyword can constitute passing off as a matter of principle, but this in no manner stops Plaintiff from booking its own trade mark as a keyword.
Similarly in another case Upcurve Business Services Pvt Ltd v. S Easy Trip Planners Private Limited & Ors., Delhi High Court decided that use of a trademark as a keyword on the Google Ad program, would constitute infringement observing that the use of ‘udchalo’ as a keyword to promote Defendant own business would be violative of the Plaintiff’s trademark rights.