‘Use of Trademarks as Keywords’ : Case Summary of Google v. DRS

23rd August, 2023 - 8:58 am Categories: Trademark 0 Comments

INTRODUCTION

The Delhi High Court in Google LLC v. DRS Logistics (P) Ltd.^[1] has ruled in favour of DRS (‘Respondent’) in an appeal favoured by Google LLC (‘Appellant’). The division bench upheld the order of the single bench to the extent that the use of the respondent’s trademark as a keyword in the Google Ads Programme would amount to infringement under the Trade Marks Act, 1999 (‘TM Act’) and that Google LLC was not entitled to the safe harbour provision under §79 of the Information Technology Act, 2000. (‘IT Act’). Besides giving a verdict on the aforesaid contentions, the division bench also made observations concerning ancillary aspects to the primary contentions and led a detailed and instructive discussion on trademark infringement in online commerce. The judgement is extensive, elaborate, and detailed. It is an academician’s research paradise; thus, it is constructive to delimit this blog to a case summary and expound on other critical aspects.

FACTS & THE SUBMISSIONS

The Respondent provided carriage for goods, passengers, merchandise etc. It alleged that the Appellant was using the respondent’s trademark as a keyword in its Ad Program, which resulted in the diversion of traffic from the respondent’s website to its competitors and, therefore, amounted to infringement under the TM Act. Respondent also claimed that internet users are deceived into believing that they are availing the services of the respondent.^[2] Inter alia, the Appellant responded by stating that:

The use of ‘Keywords’ (which is the same as the trademark) in its Ad Program does not amount to ‘use’ under the TM Act. This was substantiated on the basis that use of keywords is not per se infringement across many jurisdictions.^[3] Moreover, the Appellant argued that since it is an intermediary, it can claim safe harbour under § 79 of the IT Act.^[4] Further, the Appellant also contended that since the keywords are invisible, the statutory test of confusion (based on the marks perceptibility) is not met ^[5] Lastly, the Appellant argued that the single bench’s reasoning was erroneous since a ‘Meta Tag’ and ‘Keywords’ are not the same thing^[6].  Disputing these contentions, the respondent submitted that the Appellant actively promotes sponsored Ads and cannot claim safe harbour^[7] & ‘Meta Tags’ & ‘Keywords’ serve similar functions.^[8]

ANALYSIS UNDERTAKEN

Whether ‘Use’ of Trademarks as ‘Keywords’ amounts to ‘Use’ within the TM Act?

The principal contention of the Appellant in this regard was that since keywords are not visible to internet users, therefore, their use does not qualify as ‘use of a mark’ since ‘use’ under § 2(2)(b) of t􏰀he TM Act is to be construed as ‘use of printed or other visual representation of the mark’.^[9] For this contention, the Appellant relied on a catena of foreign judgements.^[10] However, the division bench observed that judgements relied on by the Appellant vary in determining the precise law. Moreover, some of the judgements were in the context of the Australian trade marks Act, the scope of which is smaller than that of §29 of the Indian act. Therefore, the Division bench relied on the Supreme Court’s judgement in Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd^[11] wherein it was held that § 2(2)(c)(i) of the TM Act (which explains use of mark) is couched in wide terms and ‘use’ of a mark, other than physical form, could also be “in other relation whatsoever” to such goods.^[12] Additionally, the bench observed that words “unless the context otherwise requires” at the beginning of §2(2) limit the section’s applicability to where it is contextually relevant.^[13] Accordingly, the use of trademarks as keywords amounts to the use of trademarks in advertising as per §29(6) of the TM Act.^[14] Put differently, the use of a trademark to trigger advertising of goods and services means the ‘use’ of the mark in advertising.

Whether such ‘Use’ is made by Google?

Besides this argument already proffered, the Appellant also claimed that even if ‘use’ of keywords amounts to using a trademark, such use is made by the advertiser and not by the Appellant. In other words, the Appellant ‘merely permits the advertisers to use keywords for display of sponsored links; it does not select the keywords.’^[15] Inter alia, the Appellant placed reliance on Google France SARL v. Louis Vuitton Malletier SA^[16], where the court held that ‘use’ of Keywords by the Appellant did not amount to use ‘in relation to goods & services’.^[17] But the division bench did not accept the dicta adopted by the European Court of Justice in view of the fact that Appellant is an active participant in promoting the use of trademarks as keywords.^[18] Thus, it is the Appellant (and not the advertiser) who was liable.

The Aspect of Infringement

Having noted that the use of ‘keywords’ amounts to the use of a trademark, the Division bench laid down a caveat that the use of a trademark as a keyword does not constitute an infringement per se. The bench observed that rights conferred upon registration of a trademark will not give the respondent a monopoly upon the results of a sponsored search.^[19] This point was crucial since it concerns the extent of rights conferred upon registration. The bench was silent herein but noted that since the respondent’s grievance is that internet users are being diverted to the websites of their competitors (than their own website), they have rights and a remedy.^[20] In this aspect, the application of § 29(1) was rejected since it requires that the embezzler uses the mark in relation to goods or services in respect of which it is registered. This was evidently not the case here.^[21] Similarly, application of § 29(4) was also not applicable to the facts at hand. Coming then to § 29(2), the Division bench, while referring to several foreign judgments, put to use the Doctrine of Initial Interest Confusion. The bench held that if an internet user is initially confused upon opening the sponsored links containing the respondent’s mark, the indicia of infringement, as under § 29(2), will stand fulfilled.^[22] Thus, infringement under § 29(2) was made out.

‘Meta Tags’ & ‘Keywords’

The Appellant submitted that ‘Meta Tags’ are different from ‘Keywords’ because Meta-tags form part of the source code of the website, but keywords do not form a part of such a source. Moreover, keywords are not visible and are merely used for shortlisting the Ads that may be displayed pursuant to a search query that includes the relevant keyword.^[23] While the bench noted that there is some merit in this contention, they upheld the decision of the single bench by reasoning that ‘Meta-tags’ and ‘Keywords’ serve a similar purpose for displaying advertisements and attracting internet traffic.^[24] Thus, the dicta of Indian judgments where use of a trademark as a Meta-tag was considered infringement, would squarely be applicable to keywords.

Safe Harbour Provision

The bench held that ‘safe harbour is also unavailable to the intermediary if he selects the receiver of the transmission.’^[25] Noting that Google is an active participant where it monetized the keywords and sold the use of them, it cannot be said that Google is merely an intermediary.

CONCLUDING REMARKS

The judgement is significant on two accounts: Firstly, it undertakes a comparative analysis of the trite law on the subject matter, bringing to the fore the differences between foreign jurisdiction and our law. And secondly, it endeavours to harmonise the change in electronic commerce vis-á-vis the rights in a trademark for a proprietor. Having said that, two observations could be made herein: Firstly, it seems quite apparent that the reasoning for the difference between ‘Meta tags’ & ‘Keywords’ needs further elucidation since both serve a different function and involve a significant technical question. Thus, it must be critically examined. And secondly, the bench has left the question open whether the unpermitted use of a registered trademark as a meta-tag by a third party would lead to infringement of the trademark under the TM Act, leaving a substantial grey area about the law to be answered.

Author: SANCHIT SHARMA, Student at HPNLU, Shimla, 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] 2023 : DHC : 5615 – DB (Neutral Citation).

^[2] Ibid, ¶ 28.

^[3] Ibid, ¶ 45.

^[4] Ibid, ¶ 30-34.

^[5] Ibid, ¶ 46.

^[6] Ibid, ¶ 47.

^[7] Ibid, ¶ 35.

^[8] Ibid, ¶ 52.

^[9] Ibid, ¶ 56.

^[10] ¶ 60-79.

^[11] (2003) 11 SC 92.

^[12] Ibid., ¶ 42-45

^[13] Supra note 1,  ¶ 60-79.

^[14] Supra note 1,  ¶ 90.

^[15] Supra note 1,  ¶ 107.

^[16] ECLI:EU:C:2010:159

^[17] Ibid., ¶  57 & 59.

^[18] Supra note 1,  ¶ 110-130.

^[19] Supra note 1,  ¶ 110-131.

^[20] Supra note 1,  ¶ 132.

^[21] Supra note 1,  ¶ 133.

^[22] Supra note 1,  ¶ 164.

^[23] Supra note 1,  ¶ 97

^[24] Supra note 1,  ¶ 99.

^[25] Supra note 1,  ¶ 182.