Keyword strategy can also lead to Trademark Infringement
We are living in the 21st century an era of digitation we are surrounded by the digital world, all thanks to the internet. Internet users are rapidly increasing throughout the world, particularly in relation to our country. In fact, it has become an essential part of peoples’ lives and can’t separate it.
Businesses can’t avoid the effect of this digital era, and businesses are also bound to adopt digital modes for their business through websites, social media, and mobile applications. All such business organizations are using various advertising mediums and many digital campaigns, for this they adopt a Keyword/AdWord strategy to create their own space in the online market to flourish their businesses.
In this article, we have covered a very useful aspect in relation to the IPR law. Does using keywords, AdWords or metatags on search engines the same as a registered trademark constitute trademark infringement?
So far, the answer to the aforementioned issue is twofold because the law specifically doesn’t talk about or prohibit anyone but rather through interpreting various useful sections of the Trademarks Act, 1999 the hon’ble high courts have passed certain rulings.
Before we begin, let us understand what keywords or AdWord and metatag mean. Keywords are those words, phrases, sentences, etc. that, if they match certain terms chosen by the advertiser to trigger an advertisement, may cause some sponsored results or commercials to appear. “Keywords” are the words or expressions that an advertiser chooses to make an ad appear. For example, a user might write “Trains from Mumbai to New Delhi” into the search box on the Google website as an example of a “search term.” In order for his advertisement to appear, the advertiser can use the keyword “Mumbai Delhi Trains,” which is based on the search terms. Metatags are short pieces of code that provide key information to search engines about your website, such as how they should show it in search results. The key difference between the two is that it former is visible to the public and the latter is invisible to the public and can only be seen by the search engine.
- Use of a generic or descriptive trademark as a keyword or metatag
The plaintiffs were the registered owners of roughly 22 trademarks, including Bharatmatrimony, Telugumatrimony, Tamilmatrimony, etc. in the matter of Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd[1]. Four of them were registered under Class 42, which includes services like “marriage bureaus, horoscope matching and other matrimonial services, services to facilitate online marriages, profile references, matchmaking services, etc.” The remaining ones were listed under Class 16, which deals with printed matter.
The plaintiff’s grievance was that the other 3 defendants, besides Google, who operate their business/services under the names shaadi.com, jeevansathi.com, and simplymarry, also have matrimonial web portals and offer online matrimonial services, advertise their services in the search engine “Google” by using AdWords and texts that are either identical to or misleadingly similar to the plaintiff’s registered trademarks. As a result, Google does not prevent anyone from using the plaintiff’s registered brand, which is being exploited by its competitors.
In its defence, Google contended that because they have its Adword Trademark policy in place, they do not permit the other defendants or anyone else to use registered trademarks. However, since the plaintiff’s trademark consists of two generic and descriptive terms that are used in daily communication, the plaintiff would be unable to assert exclusivity and monopoly over terms like “matrimony,” “Bharat,” “Tamil,” “Punjabi,” etc.
The Hon’ble High Court of Madras ultimately decided that the petitioner was not entitled for an injunction. Additionally, it was decided that Google could not deny the plaintiff the advantages of its Adwords Trademark Policy. Later on, this decision was also upheld by the Division Bench.
The Delhi High Court in the matter of M/S Drs Logistics (P) Ltd & Another vs Google India Pvt Ltd & Anr.[2] held that if it is determined that the use of a trademark or its variations as keywords and/or the overall effect of the advertisement results in the infringement or passing off of the plaintiff’s trademark, the defendants shall enjoin the advertiser from using the same and remove or block such advertisements.
Moreover, it also held that In accordance with Section 28 of the Trademarks Act, the plaintiff is entitled to seek protection for its registered trademarks, but is not entitled to assert any rights with respect to surnames or generic terms.
Further in the matter of Havells India Limited & Anr vs Shanghai Cet Electric Co. Ltd. & Ors.[3] the Delhi High Court directed the defendants to remove all its websites bearing the meta-tags that are in infringement of the plaintiff’s trademark HAVELLS.
- Use of a fancy or combination trademark as a keyword or metatag
The Hon’ble Delhi High Court, however, took a different view in the case of MakeMyTrip India Pvt. Ltd. v. Booking.com B. V. & Ors[4]. The plaintiff had registered the domain name ww.makemytrip.com, as well as the trademarks “MakeMyTrip” under classes 9, 35, 39, and 43, “MakeMy,” “MyTrip,” and logos as well as other variations. It was held that using the plaintiff’s registered trademark, “MakeMyTrip,” as a term in the Google Ads Program would constitute trademark infringement. The Court was of the opinion that it is not acceptable to permit rivals like www.booking.com and even Google to profit financially from the goodwill associated with Plaintiff’s mark. The balance of convenience lies in the plaintiff’s favour, and if the injunction is not granted, the plaintiff’s mark, brand equity, and business would suffer irreparable loss.
Therefore, until the next hearing date, the Defendants were prohibited from using the mark “MakeMyTrip” in connection with, or without spaces, for the purpose of advertising it as a keyword on the Google Ads Program. However, this did not prevent the Defendants from utilising the words “make,” “my,” and “journey” in a descriptive or generic manner on the Google Ads Program without using them in conjunction.
It is also a well-settled law that use of a registered mark by competitors even as metatags would be an infringement though the same may be invisible to the user.[5]
The trademarks law is still on the verge of evolution in India. With the increased use of technology in our day-to-day businesses, there is a demand for more settled law and the introduction of new concepts in accordance with the circumstances. But one thing which is clear is that if your trademark is not a generic term and it is used as a keyword by another would amount to infringement under Sec 28 of the Trademark Act.
[1] 2011(45) PTC 575
[2] CS(COMM) 1/2017
[3] CS(COMM) 11/2019
[4] SCC OnLine Del 1227
[5] Havells India Limited & Anr vs Shanghai Cet Electric Co. Ltd. & Ors. CS(COMM) 11/2019
This article is written by Adv. Dhriti Laddha, practising in Rajasthan High Court. Trademark law is one of her interest areas. Her intent is to spread legal awareness related to Trademark law and other IPR laws.
Disclaimer: This article is for knowledge-sharing purposes only and is not to be treated as legal advice. The trademarks and brand names used in the article belong to the right holder only and are not related to the company.