The Conundrum Of Trademark Infringement And Keyword Advertising: A Case Analysis Of Google Llc V. Make My Trip

16th February, 2024 - 10:00 am Categories: Trademark Infringement 0 Comments

INTRODUCTION

Recently, a division bench of Delhi High court in the case of Google LLC V. Make my Trip[i] dealt with the question that whether a trademark used as keyword for advertisement constitutes infringement of trademark. This question is of very significant nature specifically in the current era where commerce is highly driven by electronic means. In the current framework of e-commerce keyword advertising plays a very significant role. Keyword advertising simply refers to the practice where a company bids for a keyword offered by search engine giant Google, after which whenever a person searches the given keyword that company’s sponsored link is being displayed.

BACKGROUND OF THE CASE

• MakeMyTrip (India) Pvt. Ltd. (hereinafter referred as ‘MIPL’) is a company registered under Companies Act,1956. Initially this company was only engaged in airline ticket booking related business but now has expanded its horizons to be one of the largest travel companies present in India. It claims to give a variety of travel services to its customers through its website.
• MIPL claims to be registered proprietor of several trademark, including word marks “MAKE MY TRIP” and “MMT”.
• Google is a company which runs the most used search engine in the world, i.e., (google.com). It also runs an advertisement program which in intermingled with the usage of its search engine.
• To use its search engine, a person has to simply type a word and it shows all relevant information related to that ‘key word’. However, it is pertinent to note that the search results displayed pursuant to any query of two type- ‘organic’ or ‘natural’ and other is ‘inorganic’ or ‘sponsored’. Now it is with regard to the sponsored search result that a company can pay to Google to show its advertised website whenever that specific ‘key word’ is searched for.
• MIPL claims to have subscribed to the Google Ads Program to advertise its website. MIPL contends that when a user searches for ‘MakeMyTrip’ as a keyword in seven cases out of ten, Booking.com’s sponsored link appears in the second position as advertised link.
• Aggrieved by the fact that Booking.com is bidding for ‘MakeMyTrip’ as keyword that is to be advertised by Google is an infringement of their trademark and hence the case.

ISSUE Involved

Whether the use of MIPL’S trademarks: ‘MakeMyTrip’ and ‘MMT’ as keywords in Google Ads Program for displaying the links/ads of Booking.com constitute infringement of its trademark under section 29 of the Trade Marks Act.

STANCE OF SINGLE JUDGE BENCH

• After briefly examining the matter in hand, the learned Single Judge held that prima facie there exists infringement of trademark by the defendant to use the plaintiff’s registered trademark as ‘Keyword’ for advertisement.
• To support this view, the court relied upon the M/s DRS Logistics (P.) Ltd. and Anr. V. Google India Pvt. Ltd. and Ors[ii].
• The learned Single Judge prima facie accepted the contentions of MIPL that the use of its trademark as a keyword for advertisement would amount to infringement of trademark under Sections 2(2)(b), 29(4) (c), 29(6)(d) and 29(8)(a) of the Trade Marks Act.
• The court was of the opinion that such usage of a trademark as keyword for advertisement constitutes infringement of trademark and also that Google was enchasing upon the goodwill of MIPL. It was highlighted that Google was exploiting the goodwill of MIPL by allowing its competitors to use MIPL trademark as keyword.

STANCE Of DIVISION BENCH

• It held that mere use of trademark as keywords per se would not constitute infringement of trademark. The court emphasized on the aspect that there must exist a likelihood of confusion or misleading of internet users for a trademark as keyword to constitute infringement. To support this view the court relied on the case of Google LLC V. DRS Logistics (P.) ltd. and Ors.[iii].
• In the given case, the court had held that mere use of trademark as keyword would not constitute infringement under section 29(1) of the Trademarks Act.
• Further the division bench highlighted on the stance of the single judge bench that held that use of trademark of MIPL as keyword would constitute trademark infringement under section 29(4) of the Trademarks Act is erroneous.
• To support this contention the division bench highlighted that section 29(4)(b) it is explicitly mentioned that it can only be used in relation to goods and service which are not similar to those for which the trade mark is registered. And in the present case both MIPL and Booking.com deals with the similar services. To support this view the court relied upon the case of Renaissance Hotel Holdings Inc. V. B. Vijaya Sai and Ors[iv].
• Further the court rejected to accept the view that use of trademark of MIPL as keyword would fall under section 29(8). The reason behind this stance was that there existed no confusion or misleading of customers due to such usage.
• The court also clarified that the present case cannot fall under the ambit of section 29(7). This is because use of trademark as keyword cannot interpreted by any means as ‘applying the registered trademark to any material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services.’

CONCLUSION

In a nutshell, it can be seen that the court emphasized on the aspect that for a trademark used as keyword to constitute trademark infringement under the meaning of Trademark act, there must exist likelihood of confusion or misleading of users by the usage of the same.

Author: Arunav, 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.

REFERENCES-

[i] 2023 SCC OnLine Del 7965

[ii] 2021 (88) PTC 217 DeL

[iii] 2023 SCC OnLine Del 4809

[iv] AIR 2022 SC 44: 2022 (5) SCC 1