In this age of technological advancements, our reliance on search engines particularly Google®, for swift and accurate answers, has increased multi-fold. All the information we need is just one click away.
Search engines cater to our increasing need through several curated programmes, like the Google Ads Programme (Ads Programme) to generate revenue. The Ads Programme helps businesses to advertise when a potential consumer surfs on the web for products or services which are similar/identical to their product or services. However, with this comes a set of challenges. One such challenge with the Ads Programme is how it uses registered trademarks as keywords, leading to the diversion of internet traffic to competitors.
A single-judge bench of the Delhi High Court discussed this issue in the case of M/s DRS Logistics Private Limited & Others v Google India Pvt Ltd & Others. In this matter, the plaintiffs sought an ad interim ex-parte injunction against Google India Private Limited, Google LLC and Just Dial to restrain them from permitting third parties to use the plaintiffs’ trademark ‘Agarwal Packers and Movers’ or ‘DRS Logistics’ as keywords or meta-tags on their search engines, as the same leads to diversion of traffic from the plaintiffs page to that of the competitor’s webpage resulting in confusion about the source and infringement and/or passing off the owner’s trademark.
The plaintiffs submitted that it owned the registered trademarks ‘Agarwal Packers and Movers’ and ‘DRS Logistics’.In addition to the above, the plaintiffs had also succeeded in infringement actions against third parties, however, it was not able to get the third-party infringers to cease the use of its trademarks as keywords.
Thus, the plaintiffs moved to court against Google and Just Dial. Google LLC and Google India Private Limited were made parties to the suit because of the Ads Programme. The confusion caused by the Ads Programme was supported by the affidavit of one of the aggrieved consumers, who availed itself of services of a third party, assuming that it was the plaintiffs’ services, and suffered a loss. Excerpts of the affidavit were reproduced in the judgment.
Additionally, Just Dial was also impleaded for using trademarks as keywords like Google, in a similar manner, thereby causing confusion and diverting traffic. However, it submitted that it did not use the mechanism of providing trademarks as keywords for triggering ads and the court upheld the same.
The counsels for Google argued that the Ads Programme of the defendants was an advertising service where any advertiser can create and display an online advertisement in relation to its website, which is inclusive of search-based advertising. Thus, when one conducts a search, two types of results will be generated one are ‘sponsored search results’ (the Ads Programme), and the second are the ‘organic search results’, generated automatically.
They further submitted that in order to create an advertisement, the advertiser had to provide the text and the search terms or phrases for the ads, which are known as keywords. When the chosen keywords are entered by a user as a search query, the relevant ad will be displayed in the search results. The keywords are treated as a backend trigger for the advertisement and are not displayed anywhere or in any manner tangible or perceptible to the end-user.
The actual display of the ads is determined by a combination of the bid amount, the relevance of the ad, the context of the internet user’s search query and the expected impact of the ad formats and extensions. An advertiser only pays when a consumer clicks on the link. In addition to the above, Google explained that it also has a Keyword Planner Tool, a free research tool that allows the advertisers to gain statistical information and understanding of the kind of relevant words, expressions and combinations used in ads. In view of the same, it was submitted that Google was a mere intermediary, as it simply provides a platform, and all parts of the advertisement are selected by the advertisers themselves. The court held that the contention that the Ads Programme falls under the provisions of Section 79 of the Information Technology Act, is unmerited.
Further, the defendants argued that the use of third-party trademarks as keywords did not amount to infringement or unfair competition, as per the Google Ads Trademark Policy which is applicable globally. The same policy offers a redressal of trademark infringement complaints as well.
The court held that Google is not an arbiter of third-party disputes and shall not investigate complaints of violation of trademark infringements. Even if Google investigates the complaints, it does not answer if the use of a trademark as a keyword is an infringement.
Further, it still shows that the usage of a trademark as a keyword amounts to a diversion of traffic from the website of the trademark owner to the webpage of the advertiser which causes prejudice to the trademark owner in terms of goodwill and reputation, as elucidated in the affidavit of the plaintiffs’ complaint, and the same should be investigated by Google, as the advertiser is free-riding on the goodwill of the trademark owner through Google.
The defendants further argued that the use of the trademarks as keywords does not amount to use under the Trade Marks Act (“Act”). To constitute use of the mark as per the Act, the mark must be visually represented or printed in some tangible form to the end consumer and if the mark is used in relation to the goods or services or as part of any statement relating to such goods or services.
The defendants stated that mere use of the mark as a keyword that acts as a back-end trigger does not amount to the use of the trademark. It was also submitted that the provisions of Section 2(2) must be read with Section 29(6) of the Act which specify forms of ‘use’ of the trademark that qualify infringement.
Such use of trademarks does not fall under the provisions of Section 29 read with Section 2(2) and thus, it does not satisfy the provisions of trademark infringement and passing off. Reliance was placed on a wide array of international judgments, wherein it was held that such invisible use of the mark, does not amount to infringement. However, the court did not agree with those due to the differences between the law in India and other jurisdictions.
Google, itself, had on several occasions submitted that Google Ads is an advertising programme. Accordingly, Section 29 includes advertisements as the use of trademarks, which can amount to infringement. Thus, the Ad Programme’s trademark policy may be in tune with other jurisdictions, but not with that of India. The invisible use of trademarks will amount to infringement of trademark even in the form of keywords.
The defendants also submitted that the relevant classes of consumers who have access to the internet and use search engines like Google are likely to be literate or semi-literate with a basic understanding of how search engine’s function and a basic knowledge of the English language to understand the difference between the organic and ad results. This contention was also rejected by the court. It held that the average intelligence and imperfect recollection of an Indian consumer cannot be compared and equated with a consumer from UK or elsewhere. The court reiterated that the advertisements triggered by a third party will lead to confusion regarding the origin of the goods and services advertised.
After going through all the submissions, the court disposed of the interim applications. A set of directions were issued by the High Court against Google, as follows:
The Delhi High Court has set an important precedent because it has decided on infringement caused by the invisible use of trademarks as keywords especially when there is no provision of the Act dealing with such use.
Further, the court has directly held Google liable for its actions through the Ads Program, as it has enabled competitors to free-ride on the reputation and goodwill of trademark owners.
The directions of the court ordering Google to investigate the infringement complaints or take suo moto action will keep Google and the advertisers in check to avoid infringing on another party’s rights. This order of the Delhi High Court is one in the right direction and sets a good precedent for similar matters relating to the usage of keywords. The decision provides respite to aggrieved trademarks owners and will hopefully be backed by more similar decisions in the future.
T: +91 11 2371 6565
Manisha Singh is a founder and the managing partner of LexOrbis. She oversees and supervises all practice groups at the firm.
Manisha is known and respected for her deep expertise on prosecution and enforcement of all forms of IP rights and for strategising and managing global patents, trademarks and designs portfolios of large global and domestic companies. Her keen interest in using and deploying latest technology tools and processes has immensely helped the firm to develop efficient IP service delivery models and to provide best-in-the-class services.
Manisha studied law at the Campus Law Centre of Delhi University of Delhi after completing her masters' degree in economics from Patna.
T: +91 11 2371 6565