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Infringement and Passing off of trademarks are strictly prohibited by the legal provisions and judicial precedents. When a person uses a trademark without permission, it amounts to infringement. Passing off involves creating some false representation that is likely to lead someone to believe that the goods or services are those of someone else. The organization usually intends to operate under the goodwill and reputation of another trademark. Passing off arises when there is harm to the brand’s reputation due to misrepresentation by the competitor. Recently, in a case both the aspects were analyzed.
[Picture Credit : Wikipedia]
In the recent order dated 27th April, 2022, Justice Pratibha Singh awarded an interim injunction in favor of the plaintiff i.e., MakeMyTrip within India in the judicial pronouncement of MakeMyTrip India Private Limited vs Booking.com B.V.& Ors. The hon’ble court restricted the defendants from using the registered marks of the plaintiff as keywords on the Google Ads as it shall amount to trademark infringement and passing off.
The complaint was brought by the Plaintiff to defend its registered trademark against the exploitation by the Defendant no. 1- Booking.com B.V. The said defendant used the trademarks as keywords on the Google Ads Program to promote its services as and when Google would show the results. The Plaintiff further argued that the first result on searching ‘MakeMyTrip’, which is its registered trademark, is Booking.com. Therefore, the said action should constitute infringement.
Defendant no. 1 is an online travel portal, similar to the plaintiff. Relying on the European Commission’s decision in the “Guess case”, the defendant argued that there can be no restrictions on the use of a rival’s trademark as a term in the Google Ads Program. Hence, it was contended that the restriction on the use of ‘MakeMyTrip’ shall be illegal under the present regime. Henceforth, it was also stated that the terms ‘make’, ‘my’ and ‘journey’ are common and thus, can be allowed under Sections 34 and 35 of the Trademarks Act, 1999.
The other defendant i.e., Google supported the former defendant by stating that allowing the use of one’s trademarks as terms in the Google Ads is a recognized concept.
Issues involved in the case
- Whether the encashment of the goodwill and reputation of a registered trademark by third parties by bidding on it as a keyword on the Google Ads Program amounts to infringement or passing off?
- Whether allowing non-proprietors to bid for a registered trademark as a keyword is justified when it amounts to taking advantage of the distinctive character and reputation of the registered prophttps://www.ipandlegalfilings.com/services/trademark-registration/rietor’s trademark?
- Whether the use of a registered trademark as a keyword through the Google Ads Program can amount to misrepresentation?
Analysis of the Judgment
Infringement under Sections 2(2)(b) and 29 of the Act
The court recognized that the Plaintiff is forced to bid for its own registered trademark and invest crores on monthly basis because Google Ads Program allows even the non- proprietors such as Defendant no. 1 i.e., Booking.com, to bid for a registered trademark as a keyword. Thus, compelling the owner to make investments in the said Program.
Moreover, the court also stated that there is no difference in the use of a mark in a metatag or a source code of a website which is not visible and in use of a mark as a keyword by Google Ads Program in as much as the mark being used in a hidden manner does not take away the meaning of ‘use’ as under Section 2(2)(b) of the Act. Further, the court stated that even if the use is hidden in the advertising and therefore, shall fall under the provision of unfair advantage given under Section 29(8) of the Act.
The court noted that it is quite evident that the use of Plaintiff’s mark by Defendant no. 1 as a keyword on the Google Ads Program is for the purpose of ‘advertising’. Google is encashing the goodwill of the trade mark owner by allowing the competitor to book the said mark as a keyword. The defendant did not even deny the use of the registered trademark for advertising purposes solely. Therefore, the Court clearly stated that the act is in violation of Section 29(6)(d) of the Act and it certainly covers the use of registered trademarks in advertising.
A similar interpretation has also been adopted in the cases of MakeMyTrip (India Private Limited) vs Happy EasyGo India Pvt. Ltd. and MakeMyTrip (India) Private Limited vs Easy Trip Planners Pvt. Ltd. The Court restrained competitors from bidding for any ‘keywords’ on the Google Ads Program that are identical or deceptive variants of the Plaintiff’s mark ‘MakeMyTrip’. Hence, the act of bidding for the mark on the Google Ads Program would amount to infringement and passing off.
It is clear that the user who intended to go specifically to MakeMyTrip actually gets diverted from that quest then remains unexamined. This impact of Google Ads Program can be very well depicted through an illustration: If a person is looking to buy an air ticket and types ‘MakeMyTrip’ in the search bar, and the first result in the Ad section is of Booking.com, the user may simply visit the latter’s website by clicking on the link and book the ticket. In effect therefore, the user has been directed to a competing website and a direct business loss has been caused to the trademark owner’s business. Therefore, it is an act of misrepresentation as a matter of principle. As already stated, the defendants had relied on the Guess judgment and stated that there was no violation. The Court clearly stated that the said judgment does not apply in this case.
Claim of Passing-Off
The Court clearly discarded the traditional view that there is no passing off in the use of a mark as a keyword solely because there is no visible use. Relying on Kerly’s Law of Trademarks and Trade Names, it was stated that the “invisible” use of a mark as a keyword can constitute passing off. The misrepresentation leads to deception, which in turn leads to an act of passing off. This gives further cause to appreciate that a data driven approach would be beneficial to derive conclusions in this space.
The Court clarified that as a general rule the “invisible” use of a mark as a keyword can constitute passing off, however, the proprietor of the mark has all the right to book its own trademark for the purpose of advertising. This inclusion of invisible use under the ambit of passing off does seem necessary in light of the technological advances in the current digital world and cases rising related to the use of keywords and meta-tags.
There have already been certain petitions where ‘MakeMyTrip’ is a plaintiff and the focus was on using the Google Ads Program to bid the keywords of the registered proprietor to acquire the existing goodwill and reputation of the owner of the mark. This order is another addition to the cases wherein the unlawful use of trademarks on Google Ads Program was questioned. It is essential that the courts and legal provisions provide clarity on the use of trademarks on such platforms.
Author: Tanya Saraswat – a student at School of Law, Narsee Monjee Institute of Management Studies, in case of any queries please contact/write back to us via email firstname.lastname@example.org or at Khurana & Khurana, Advocates and IP Attorney.