Invisible use of Trademark as Meta-tag: A case for Infringement under sec 29 of Trademark Act

24th January, 2023 - 7:55 am Categories: Trademark 0 Comments

Introduction

In India, section 29 of the Trademark Act (hereinafter, the act) outlines what constitutes a registered trade mark infringement. According to Section 29(4)(c) of the act, anyone who uses a registered trade mark in the course of business without being the registered proprietor or using the mark in accordance with a permit, and who does so in a way that unfairly benefits from or harms the mark’s distinctive character or reputation in India, is infringing on the registered trade mark.

As a consequence, if the use of a registered mark impairs the distinctive character of the mark, it is infringement for the purposes of the act. Furthermore, Section 29(8)(b) specifies that any advertising of a registered trade mark that is harmful or which dilutes the distinctiveness of the mark is infringement within the meaning of the section.

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According to this rule, utilising another’s trade mark to obtain an unfair advantage is an infringement if the advertising is detrimental and contrary to the mark’s distinctive character. In addition, advertising that is adverse to honest practises in industrial or commercial enterprises, as described by Sec 29(8)(a), constitutes an infraction.

As a logical outcome, with a basic interpretation of the previous sentences, the following question emerges out of investigation, Is utilising a competitor’s trade mark (although not in visible form) on one’s website deemed advertising & infringement for the purpose of Sec 29 of the act ?

In this circumstance, and in the lack of a clear legislative instrument dealing with the issue, it is reasonable to refer to leading court pronouncements that have dealt with the same matter of law before them.

Meta-Tagging — Invisible Usage of Trademarks

Prior to truly going into the body of the case and learning about the Court of Law’s rulings, it’s necessary to appreciate how the meta-tagging or Google Adwords method of online advertising works.

In essence, meta tags are words that are incorporated in a website’s code. Users won’t be able to see them while they browse the site, but they supply search engines information about it, and search engines employ meta tags to figure out what a website is about.

For example, if a search is conducted for “Books for CPC” and the meta tags embedded in the source code of a website are “bare acts,” “CPC,” “CRPC,” “Law Books,” and so on, the search engine may gauge the suitability of the website for the searcher by comparing the meta tags with search words and then display the site alongside other websites in order of matching meta-tags. As a consequence, companies pay money to try to push their websites to the top of search engine results pages.

Meta-tags have an influence on how Google indexes a page. Meta tags enable Google grasp the content of your website, enabling them to show up in relevant searches or, more precisely, beside or above the competitor’s site to attract potential customers.

In this respect, Rajesh Vellakat states, “A topic that is being contested in courts all over the world is whether utilising a competitor’s name, website information, trade marks, or trade symbols in hidden texts or as meta-tags as part of one’s SEO strategy is violative of the competitor’s trade mark.”[1]

The Indian Picture

In Makemytrip India Private Limited v. Booking.com,[2] before Delhi HC, MakeMyTrip (Plaintiff) filed an action for perpetual injunction seeking protection of its registered trademarks. Booking.com (Defendant) allegedly utilised marks such as ‘MakeMyTrip’, ‘MakeMy’, MyTrip’, ‘MMT’ etc. which were registered marks of the plaintiff as keywords (metatags) on Google Ads Program.

The Plaintiff presented the allegation that when a search is done for “MakeMyTrip”, often frequently the first advertising which is shown in the advertisement is that of Defendant.

Curiously, the defendant also placed bids on the Google Ads programme for the keyword “makemytrip” to ensure that its website appears at the top of searches for the marks.

According to the court’s interpretation of Section 29 of the Act, taking unfair advantage of a registered trademark’s distinctive qualities or repute (as in this case) without a valid basis constituted infringement under Section 29(4)(c) (c).

Encashment of the goodwill

Another major legal issue that surfaced in the aforementioned case was whether or not it would constitute infringement for third parties to profit from the goodwill and reputation of a registered trademark mark by competing for it as a keyword through the Google Ads Program?

The nature of using a trademark as a keyword on the Google Ads Program was taken into account by the court as well. The plaintiff invested money in the mark’s goodwill growth, and as a result, the mark became the subject of searches.

In essence, the bid for usage of a registered mark as a metatag on Google Ads Program forced a trademark owner to bid for the use of his own registered mark, so that his own products and offerings be displayed in response to a search for the mark and  not be subverted by a competitor.

Thus, the court granted injunction in favour of the plaintiff.

Other Authorities

In Kapil Wadhwa & Ors. v. Samsung Electronics Co. Ltd[3]., the Plaintiff contended that the defendants were running their website by meta-tagging the registered marks of the plaintiff. And such use caused infringement of marks held by Plaintiff.

The Single Bench of Delhi HC ruled in favour of the plaintiff and injuncted the defendants from future use of registered marks of Plaintiff in meta-tagging of defendant’s website[4].

The Division Bench affirmed the ruling of single judge bench in the regard of meta-tagging in an appeal before it[5].

Further in DRS Logistics (P) Ltd & Ors.v. Google India Pvt. Ltd.[6], Court stated that even imperceptible use of the mark might create infringement.[7] The court emphasised that using a trademark in an undetectable manner to divert users from the website of the owner to an advertiser’s or infringer’s website counts as use of the mark for the purposes of Section 29 of the Act.[8]

Thusly, it may be very clearly interpreted and shown that use of registered marks as meta-tag by third party without agreement or due cause might create infringement for the purpose of section 29 of the Trademark act.

Another instance where the court confronted similar situation was People Interactive (I) Pvt. Ltd. v. Gaurav Jerry[9], before Bombay HC wherein the defendant’s use of plaintiff’s registered mark “shaadi.com” in the meta-tags of his own website blatantly diverted Internet traffic from plaintiff’s site. The court took notice of the same and stated that the unique nature of the Plaintiff’s mark is thus diluted and damaged by defendants[10].

Conclusion:

Without a doubt, firms invest a large amount of money to develop goodwill and awareness for their trademark, which typically represents their brand to the general public. Any consumer who seeks up the brand in order to employ the company’s services is a result of the brand’s hard work and effort.

In the same case, the existence of another site or competitor’s business in a search for a trademark of another firm not only creates consumer confusion, but it also undermines the trademark’s unique character.

The notion of Initial interest confusion authorises a plaintiff to be granted infringement remedies even if the asserted infringement produces transitory consumer uncertainty. The courts’ decisions in circumstances of covert trademark use as meta-tags are a typical application of this idea, where such tags could lead to consumer deception.

The use of a trademark as a meta-tag has led to another important issue: bidding for the use of a registered mark as a meta-tag on the Google Ads Program, which would compel a trademark owner to pay for his own trademark in order to have its goods and services marketed under that brand.

As a consequence, it is plausible to assume that the use of registered marks in an inconspicuous way constitutes infringement under Section 29 of the Trademark Act.

Author: Yash Arjariya, 2nd year law student at Hidayatullah National Law University, Raipur, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[1] Rajesh Vellakat, Does Seo Using Competitors’ Trade Marks Constitute Infringement?, (2015) PL  (IT) November 81, available at http://www.scconline.com/DocumentLink/mV10481Q (Last visited on June 6, 2022).

[2] CS (COMM) 268/2022

[3] 194 (2012) DLT 23

[4] (2012) 49 PTC 571.

[5] Supra note 3 at Para 74.

[6] 2021 (88) PTC 217 (Del)

[7] Id. Para 82

[8] Id. Para 86.

[9] 2014 SCC OnLine Bom 4607

[10] Id. Para 14.