Use of Google Keywords is "Invisible Use”: May Amount to Trademark Infringement
Recently in the case of MakeMyTrip India Private Limited v. Booking.com B. V. & Ors., the Delhi High Court granted an interim injunction in favor of the Plaintiff, restraining Defendant from using the Plaintiff’s registered trademark on Google as part of the Google Ads Program and the keywords system as this would amount to trademark infringement and passing off.
Background
The Plaintiff claimed protection for its trademark “MakeMyTrip” and its variants and alleged that the Defendant, Booking.com B. V. was using the Plaintiff’s marks on the Google Ads Program to promote their own business and website. The Plaintiff claimed that when a search was carried out for “MakeMyTrip” in the Google search bar, one of the first advertisements displayed in the search results of the ads section was for Booking.com. It was further alleged that the Defendant, being one of the biggest competitors of the Plaintiff, was infringing upon their trademark rights by using their trademark on Google for the purpose of their own personal gain.
It was submitted that a series of letters had been exchanged between the parties preceding this suit wherein the Defendant had agreed to cease bidding and using the trademark of the Plaintiff through the Google Ads Program. The Plaintiff further submitted that in 2022, however, the Defendant refused to comply with the requisitions of the Plaintiff in view of the decision given by the European Commission in AT.40428-GUESS dated 17th December, 2018 (hereinafter “Guess Judgment”), where it was held that there cannot be any restrictions on the use of a trademark on the Google Ads Program as a keyword, including use by competitors.
Further, the Defendant claimed that any restriction upon it would be in contradiction to the Guess Judgment and put them in contravention of the law of other foreign jurisdictions since they are an international entity in the field of providing hotel bookings, airline bookings etc. with worldwide business operations. The Defendant went on to argue that any restriction on use of the Plaintiff’s mark as a keyword would be contrary to competition law. Finally, the counsel for the Defendant also submitted that the words “make”, “my” and “trip” are all generic words and can be used in a descriptive fashion without contradicting the law.
It is pertinent to note that the counsel for Google also argued the international position stating that such use of a trademark cannot amount to trademark infringement, keeping in mind the positions taken by the courts in UK, US, European Union, Australia, New Zealand, Russia, South Africa, Canada, Spain, Italy, japan and China.
Decision
The Court opined that, “the use of the mark ‘MakeMyTrip’ as a keyword through Google Ads Program by one of its major competitors, Booking.com is infringing use…It is now well settled in India that use of a registered mark by competitors even as metatags would be infringement…”
In fact, the Court took into account the decision of DRS Logistics (P) Ltd & Ors. v. Google India Pvt. Ltd. 2021 (88) PTC 217 (Del) where it was held that, “invisible use of trademark to divert the traffic from proprietors' website to the advertisers' / infringers' website shall amount to use of mark …”
With regards to whether use of a trademark for the purpose of advertisements on the Google Ads program amounts to “use” per the definition of section 2(2)(b) of the Trademarks Act, 1999, the Court stated that, “there is no doubt … that use of the Plaintiff’s mark by Defendant No.1 as a keyword on the Google Ads Program is use for the purpose of ‘advertising’.”
Thus, the Court found that the Defendant’s use of the mark, even though not visible, for the purpose of advertising in an attempt to divert business from the Plaintiff’s website to its own, amounts to taking “unfair advantage of the Plaintiff’s mark.”
With regard to the Guess Judgment, the Court also stated that the factual background of that case was completely different. The said case dealt with intra-brand competition and partitioning national markets, being restricted contractually. Meanwhile, the Court noted that the present case concerns a competitor using the Plaintiff’s trademark as a keyword through the Google Ads Program.
Furthermore, the Court also noted that the actions of the Defendant amounted to passing off, stating that, “The concept of `deceit’ which forms the fulcrum of an action for passing off is clearly present in cases such as this one.”
Lastly, the Court also took into account the fact that the “use” per se in this case was not “visible use”. However, it noted that the traditional notions cannot apply in this case and such invisible use may also amount to misrepresentation or passing off in some circumstances.
The Court took into account Kerly’s Law of Trade Marks and Trade Names (15th Ed., p.628 & 629) where it was observed that ‘third party bidding on trademarks sponsored by keywords for use by internet search engines can constitute trademark infringement’.
Therefore, finding a prima facie case in favor of the Plaintiff, the Court granted an interim injunction restraining the Defendant from using the mark “MakeMyTrip” together/in conjunction, with or without spaces for the purpose of using it as a keyword on the Google Ads Program till the next date of hearing. It is also worth noting that the Court did not in fact restrain the Defendant from using the words “make”, “my”, “trip” separately or non conjunctively on a standalone basis “in a descriptive or generic sense on the Google Ads Program”. It was also clarified that this decision would only apply within the territory of India and not have any global repercussions at this stage.
Conclusion
The Delhi High Court’s decision reflects the Court’s willingness to recognize the more modern definitions of “use” in the technological era. Despite being invisible per se, the Court found that use of a competitor’s trademark as a keyword through the Google Ads Program may amount to trademark infringement and passing off. This is because the elements of misrepresentation with “deceit” may amount to passing off or infringement in such matters. In the present case, it seems that the intention of the Defendant was to divert traffic towards its own website by using the Plaintiff’s trademark. This decision seems to shed light in this area of law which certainly needs some clarity at this point in time and will set a precedent for the future.
For any queries, please contact the author, Ms. Vrinda Sehgal at vrinda@iprattorneys.com.
1. MakeMyTrip India Private Limited v. Booking.com B. V. & Ors. CS (COMM) 268/2022
Comments