Would it be considered trademark infringement if a registered trademark were used as keywords in the Google AdWords Program

INTRODUCTION

A temporary injunction was recently granted by the Delhi High Court in the matter of MakeMyTrip India Private Limited vs. Booking.com B.V. & Ors in favour of Makemytrip (Plaintiff). The Court was determining whether or not passing off or trademark infringement would result from the use of trademarks as keywords on the Google AdWords Program.

Judge Pratibha M. Singh ruled that the defendants were forbidden from utilizing the plaintiff's brand as keywords on the Google AdWords Program because there is a commonly held belief that such covert use of the registered trademark would constitute infringement.

This article will walk you through the pertinent case facts, then through the major points raised and the court's reasoning.

RELEVANT FACTS

In the current case, the plaintiff registered the domain name www.makemytrip.com back in the year 2000. Moreover, it has long been the registered owner of the MakeMyTrip trademark across a number of classes, including 9, 35, 34, and 43, and it also claims to have used this mark in a number of other nations. The aforementioned mark has been used by the plaintiff for the past 22 years in several variants and logo designs. It has also spent a significant amount of money promoting and advertising its services. The Defendants are also engaged in activities associated with an online travel agency.

In order to prevent the defendant from utilizing the plaintiff's registered trademarks as keywords in the Google AdWords Program to market his services when search results are shown on the Google search engine, the plaintiff filed a lawsuit for a permanent injunction against the defendant. Plaintiff claims that frequently when a user searches for MakeMyTrip on Google, Defendant No. 1's first advertisement that appears in the advertisement column is displayed. As a result, the plaintiff claims that Defendant No. 1's use of the plaintiff's registered mark in bad faith would violate Sections 29(6)(d), 29(7), and 29(9) of the Trade Marks Act, 1999 (the "Act").

On the other hand, Defendant No. 1 asserted that there cannot be any bidding limits on the use of the term or precise mark, which also includes trademarks, in reliance on the Guess judgment.

Hence, any such order preventing Defendant No. 1 from placing a bid on a trademark would be unlawful or unconstitutional and would go against the competition statute. Moreover, it was contended that sections 34 and 35 of the Act permit the use of general phrases like "made," "my," and "journey."

 ISSUES INVOLVED

  KEY REASONING

1. Whether or whether it would be considered infringement and passing off for third parties to use the goodwill and reputation of a registered brand by using it as a keyword in the Google AdWords Program?

2. Does it count as misrepresentation if a registered brand is used as a keyword in the Google AdWords Program?

Infringement under section 29 of the Act

The Court stated that by using a registered trademark as a term, this service creates a platform for two rivals to fight for better search engine exposure while shedding information on the operation of the Google AdWords Program. As a result, it requires the owner of the trademark to place a bid for his own trademark in order to prevent competitors from stealing his adverts for goods and services on Google.

The owner of the trademark must make substantial daily investments in the Google AdWords Program in order to stop competitors from using the registered trademark to market their goods and services. The Court was thus evaluating whether such conduct was appropriate given that it amounted to exploiting the Plaintiff's reputation and distinctiveness.

Based on the aforementioned considerations, the Court found that Google is exploiting the trademark owner's goodwill by allowing the rival to bid on the abovementioned mark as a keyword. The Court stated that it would constitute trademark infringement under section 29(6)(d) read in conjunction with section 2(2)(b), as Defendant No. 1 is using the Plaintiff's trademark, even though the same use is invisible, for advertising to direct traffic away from the Plaintiff's website and towards his website instead.

Based on the aforementioned considerations, the Court found that Google is exploiting the trademark owner's goodwill by allowing the rival to bid on the abovementioned mark as a keyword. The Court stated that it would constitute trademark infringement under section 29(6)(d) read in conjunction with section 2(2)(b), as Defendant No. 1 is using the Plaintiff's trademark, even though the same use is invisible, for advertising to direct traffic away from the Plaintiff's website and towards his website instead.

Moreover, the Court first believed that Defendant No. 1's practise of profiting from the goodwill of the Plaintiff's mark constituted to taking unfair advantage of the Plaintiff's mark and was infringing under Section 29(8)(a) of the Lanham Act.

The Court further declared that Section 29(4) would be violated by using the trademark on the Google AdWords Program (c). A reading of the cited provision reveals that, in addition to breaking sections 29(6) and 28(7) of the Act, any person that unfairly exploits the unique character or reputation of a registered trademark without reason would also be infringing.

The Court ruled that the factual setting of the Guess Judgment was completely different from the current case; as a result, the same was not relevant in the present instance.

The claim of Passing off

A deception made by the Defendant with the intent to harm the Claimant's company or goodwill is one of the requirements for passing off, the court determined in relation to the passing off claim. The Court fully rejected the conventional wisdom that says using trademarks as keywords inadvertently won't be considered passing off. According to Kerly's legislation of Trademark Marks and Trade Names[5], third-party bidding on trademarks as sponsored keywords for use by internet search engines like Google can be considered misleading. This is what the Court based its decision on.

As a result, passing off will result from the concealed use of the plaintiff's trademark as a keyword. The Court also explained that if the plaintiff chooses to do so, he or she is not prohibited from using their own trademark as a keyword.

JUDGMENT

The Court came to the conclusion that trademark infringement would occur if the Plaintiff's registered trademark was used as a keyword on the Google AdWords Program based on the aforementioned justification. Such competitive use of the registered trademark will have a detrimental financial and brand awareness impact on the Plaintiff. The Court was happy to issue an order prohibiting Defendants from using the mark "MakeMyTrip" together/in conjunction, with/without spaces to use it as a keyword on Google Ads Program because the balance of convenience favoured the Plaintiff and irreparable harm would be caused to Plaintiff if the injunction is not granted.

CONCLUSION

The Honorable Court's ruling in the present case is one of several instances in which it has addressed the problem of exploiting registered trademarks on the Google AdWords Program. Even while the courts have already dealt with the problem, it's past time legal measures addressing such usage are introduced to provide very much-needed clarity.