Trademark Infringement in Case Of Using A Third-Party Trademark As A Keyword

Introduction

Since the Internet has the potential to identify and engage the target audience, online promotion is the most convenient and appealing approach for businesses to offer their goods and services. Therefore, businesses attempt to get people to their websites by using the Google Ads word programme, hyperlinking, deep linking, and meta-tagging. The main benefit of search advertising is that it places worthwhile advertisements in front of the target audience at precisely the time when the user is expressing interest while browsing. Therefore, the primary goal of internet advertising is to present the most suitable adverts to the target customers at the proper moment. The matter of emergence here is that making use of a third-party trademark as keywords amount to trademark infringement.

Protection By Way of IPR

Since there is a very high possibility that consumer interaction will be taking place in the metaverse, efforts are being put in to give it a much more realistic feel by encouraging brands and businesses to set up there. Recently, ‘Mcdonald’s filed trademark applications seeking brand protection in the Metaverse. Apart from Mcdonald’s, even ‘NIKE’ filed applications for getting design marks for its ‘swoosh logo’ mark as well as the tagline, ‘Just do it’, covering various virtual goods and services. Similarly, brands like ‘CROCS’ are eager to protect their goods covering footwear, clothing and accessory goods, and entertainment services in a virtual environment as well as ‘WALMART’ for covering the creation and sale of virtual goods such as electronics, toys, decorations, sporting goods, and personal care products.

Understanding from the View of the Case Decided by Hon’ble Delhi High Court

In M/S DRS Logistics Pvt. Ltd. V. Google India Pvt. Ltd. a single-judge bench of the Delhi High Court dealt with the matter of trademark infringement rooted in the alleged issue of keywords in search engines. In this case, the plaintiff had sought an injunction against Google India Private Limited, Google LLC, and Just Dial Limited to restrain the defendants from permitting third parties to use the plaintiff’s trademark in ‘Agarwal Packers & Movers’ as keywords or metatags on their search engines. Google argued that even when the keyword is a trademark, it is never used in a ‘trademark sense’, thereby the invisible use of trademarks, like keywords, failing to meet the threshold to constitute infringement. The Court held that the use of the Google Ads program undisputedly qualifies as advertising, which falls under Indian trademark law. The Indian Act specifically considers the use of a trademark in advertising as ‘use’ sufficient for infringement under section 29(6)(d) of the Act and hence Google’s keyword policy on third-party trademarks is restricted by the application of section 29(6)(d) in India. Despite reasoning in the plaintiff’s favour, the Court disposed of the interim applications. The Court, however, ordered Google India and Google LLC to investigate complaints made by plaintiffs alleging the use of its trademarks as keywords and the overall effect of an advertisement to check if it results in infringement or passing off and then to remove such ads.

The higher Indian legal executive keeps pondering the utilisation of outsider trademarks as catchphrases on web indexes, especially Google, almost 10 years prior in Consim v. Google I and II, examined here. Preceding the DRS request, the Consim choices offered little respite to reserve holders given the Madras High Court couldn’t decide for Consim because its trademarks were spellbinding of its administrations. Resultantly, Consim simply momentarily alluded to the utilization of outsider trademarks as watchwords as potentially encroaching and there was no limiting Indian point of reference for trademark holders.

Albeit the Delhi High Court wouldn’t pass an order against Google at this stage, the thinking of the Court could never have come at a more advantageous time. The holding that utilisation of outsider trademarks as watchwords on web crawlers adds up to ‘utilise’ and eventually encroachment/passing off of the imprint under the aegis of the Act starts to address a lacunae that has tormented Indian innovation regulation for the last ten years. Additionally, this starts a dependable trend for the suits against Google concerning watchword strategy are consistently stacking up in courts the nation over.

The choice of the Delhi High Court likewise mirrors the overall attitude of Indian law on this topic. The Delhi High Court has given a few time orders for various offended parties to injunct their rivals from involving the offended party’s trademarks as watchwords on Google Ads. In any case, the Court’s structure in DRS is novel in that it is one of the main orders in the country which straightforwardly expects Google to take responsibility for its Ads strategy and its dynamic job in encroachment of protected innovation freedoms. Incidentally, an interval request passed by a Bangalore District Court injuncting Google from permitting utilization of a specific trademark as a catchphrase was cleared only days before the DRS request. Given the number of comparable petitions forthcoming under the steady gaze of the Delhi High Court and potentially the Karnataka High Court (if the get-away of the between-time request is pursued), this request for the Court in DRS might end up being the start of an intriguing cascading type of the influence.

One can’t deny the way that internet searcher promoting has changed the scene of web-based publicising, making a worldwide commercial centre with the possibility to propel exchange advancement. Hence, while dissecting the issue of whether Google AdWord’s practice of selling reserved terms as catchphrases would comprise ‘trademark use’ under trademark regulation ought to adjust the interest in safeguarding organizations from out-of-line rivalry with the interest in guaranteeing a free progression of data. This is the actual reason for trademark regulation and ought to be safeguarded.

Indian Court has stood firm for the assurance of the trademark proprietors on the Google internet search by disallowing the unapproved clients to offer for the trademarks of different substances as that would add up to legal and precedent-based regulation freedoms of the trademark proprietor. In actuality, CJEU via its most recent decision has cleared a murmur of help for organizations whose trademarks are not enrolled by expressing that the term ‘use’ requires dynamic lead and immediate or backhanded command over the demonstration of a purpose. In the future, a tight understanding can be embraced by Indian Courts so there stays harmony between contending elements and simultaneously stays in speech with the translations of the ‘trademark use’ prerequisite as has been given in different wards.

Conclusion

An extensive understanding of ‘trademark use’ could shift the equilibrium for the trademark proprietors and lead to a smothering rivalry in the commercial centre limiting deregulation and contest.

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