AdWords and Trademark Infringement: It's Time for a Resolution to the Legal Quandary over Online Advertising
Contributor: Sonalika Gupta
Business has taken a complete plunge into the virtual world with this era of technology growth and increasing dependence on the internet. The most productive channel of advertising in today’s world is online advertising. The basic or intrinsic object of every online advertisement is to present the most relevant advertisement to the probable customer at the right time. Most importantly, keyword advertising allows companies to expand their online presence by leaps and bounds on search engines. But this has also given rise to a series of legal issues in the form of trademark infringement with the inclusion of trademarked keywords in keyword advertising.
Keyword advertising is the promotion based on words, phrases, symbols, or numbers used by a potential customer to search for an item on the internet. A business places a bid to be displayed prominently on keyword searches. For example, a sneaker company may bid on shoes, women’s boots, and running shoes so that when people type in these terms, the search will route them to their web page. Keyword advertising programs make it possible for businesses to acquire these terms in order to direct search traffic to their product or service.
Trademark Infringement in Keyword Advertising
Infringement of trademark is governed through the Trade Mark Act, 1999, in India. However, this Act remains silent on the issue of trademark infringement through the usage of a trademark as a keyword. This is simply because the Act came into effect when the keyword-linked advertising was at a very nascent stage. Thus, aggrieved trademark owners have turned to existing trademark laws in this regard for seeking redress.
The trademark should be used in the aid of Section 2(2)(b) to amount to infringement of trademark under Section 29 of this Act, which mentions that for the purpose of this Act, use includes the use of printed or other visual representation of the mark in relation to the goods or services. However, use of a trademark in other instances is provided under Sections 29(6), 29(7), and 29(8) of the Act. Section 29(9) includes infringement of a trademark by way of ‘spoken use’; meaning use is not required to express visual representation.
Judicial Pronouncement
The issue of trademark infringement through keyword advertising was first discussed in detail in India in Consim Info Pvt. Ltd. v. Google India Pvt. Ltd. & Ors., the plaintiff, a leading online matrimonial services company, sought to restrain the defendants from using its registered trademarks as keywords. The court held that the registered marks were descriptive in nature, thereby nullifying the liability of both the advertiser and the search engine.
Further in the case of DRS Logistics Pvt. Ltd. & Others vs. Google India Pvt. Ltd. & Others, the plaintiff prayed for an injunction against Google and other third parties using its registered trademark “Agarwal Movers and Packers” as a keyword. The Delhi High Court held that though the keyword is invisible, it generates Internet traffic to the website of the competitor, causing confusion to the public at large. Hence, the practice amounted to trademark infringement.
In Upcurve Business Services Pvt. Ltd. vs. Easy Trip Planners Private Limited & Ors., the plaintiff, more particularly a travel business entity, had alleged that the defendants were utilizing its registered trademark “UdChalo” as a keyword under the Google Ads Program. The Delhi High Court gave an injunction by which it restrained the defendant from using the mark of the Plaintiff as a keyword, expressly noting this to be part of the infringement aspect relating to trademark.
That has made trademark infringement in keyword advertising a contested issue in courts. Most of the defences of the search engines, particularly Google, rely on an interpretation where using a trademark as a keyword is not considered “use” under the Trade Marks Act. However, recent judicial interpretations have expanded the scope of “use” to include digital contexts.
In recent case of MakeMyTrip v. Booking.com that the Delhi High Court granted an interim injunction restraining defendants from using the plaintiff’s registered trademark as a keyword on Google Ads in India. The court equated the invisible use of a registered trademark by a rival to online piracy, and the encashment of goodwill and reputation of a registered trademark by third parties by bidding on it as a keyword through the Google Ads Program amounted to infringement and passing off.
Conclusion
Google’s AdWords program has, for sure, established an international marketplace for online advertising. The interest in protection against unfair competition from the interests of business has to be weighed in relation to protection of trademarked branded items. The jurisprudence continually evolves and case after case definitely acts as a precedent to settle future disputes. Keyword advertising is an effective tool of online advertising, targeting customers at that very moment when they are seeking information. The legal complexities involved in trademark infringement through keyword advertising are yet evolving in India. There are no rules and regulations that govern keyword advertising explicitly, and thereby the threat of infringement remains. While the business goes on in the cyber world, interests of businesses have to be saved by having an awareness of the principles of trademark laws and precedents provided by leading cases in order to avoid falling into legal pitfalls.
