Aumirah

 Is The Use Of Keywords Of A Registered Trade Mark In Google Ads An Infringement Of Trademark?

Introduction

Google challenged the order of ad-interim injunction by a single-judge bench of the Delhi High Court in the case of Google LLC v. MakeMyTrip. The single-judge bench had restrained the use of ‘MakeMyTrip’ in different forms as a keyword on Google Ads. The division bench overruled the judgment and held that the use of ‘MakeMyTrip’ as a keyword by Booking.com would not amount to trademark infringement and is not violative of Section 29(4)(c) of the Trade Marks Act, 1999.

Background

Google manages the Google search engine and the Google Ads program, which helps promote and advertise businesses by using sponsored links and advertisements. MakeMyTrip entered the market with airline ticket booking, and it has now expanded to become one of the largest travel companies in the world. It has registered trademarks such as ‘MakeMyTrip’ and ‘MMT’.  On the other hand, ‘booking.com’ is also a well-known and popular platform offering travel services.

When we google something, the results displayed in the ‘Search Engine Results Page’ are of two categories, ‘organic’ and ‘sponsored.’ The Google Ads Program powers the sponsored results. These results are pre-fixed with the letters’ Ad’. The sponsored results are sometimes even displayed in the sponsored results section.

Google auctions keywords in real time. The advertiser chooses a particular keyword and specifies the maximum price they are willing to pay if a user clicks on their advertisement. Google is paid the bid amount if and when a user visits the page by clicking on the sponsored link. MIPL is aggrieved by Booking.com bidding for its trademark as keywords to display their advertisements.

Judgment

The Court had relied on Google LLC v DRS Logistics (P.) Ltd., wherein it was held that using trademarks as keywords would amount to ‘use’ by Google and the advertiser. However, the ‘use’ would not amount to ‘use as a trademark’; consequently, it would not lead to infringement of Section 29(1). If an advertiser used a sponsored link and contended the mark’s goods and services are similar to the link, it does not amount to infringement of 29(4). The Court clarified that using a mark as a keyword per se did not amount to infringement; to constitute an infringement, it should lead to confusion or mislead internet users to associate the registered trademark with the sponsored link. In conclusion, using trademarks as keywords not to cause any confusion or unfair advantage is not an infringement of a trademark.

Here, in the given case, the Court observed that it is unlikely that an internet user can be influenced to believe that the services offered are being offered by ‘Make My Trip.’ Booking.Com is a well-known trademark, and using the sponsored link would likely lead to confusion and mislead the consumer.

The Court decided that it does not agree with the view that Section 29(4) of the Act would be applicable when the goods and services are similar to the alleged infringing mark. The Court extrapolated that the Single Judge judgment has a significant fallacy and has looked into clause (c) of 29(4) in isolation, without reading it with the other provisions. The legislative intent is clear by the use of the word ‘and” after clause (a) and (b). If we read sub-clause (b), it says it is an infringement; read along with the other provisions if the goods and services are not similar to the registered trademark.

Conclusion

The given case has re-established and reiterated the judgment in Google LLC v. DRS Logistics Ltd. This is a significant judgment when the competition between e-commerce and emerging start-ups is ever-increasing. The Court managed to clarify and look into the nuances of using other companies’ trademarks to promote their own companies. The Court drew a thin line between using the trademarks of other companies and causing confusion among the public because of the use of the keyword.


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Shivangi Singh
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