Google can’t absolve from liability of ensuring that ‘keyword’ is not trademark infringement,says Delhi HC while directing them to investigate ad’s effect to ascertain if same can infringe trademark

Read Judgment: M/S DRS Logistics Pvt. Ltd. & Anr. vs. Google India Pvt. Ltd. & Ors. 

Pankaj Bajpai

New Delhi, November 10, 2021: Quoting the decision in the case of Hamdard National Foundation & Ors. vs. Hussain Dalal & Ors , the Delhi High Court has opined that what is infringement, is not merely visual representation of the product in bad light under the provision of Section 29(9) of the Trademark Act, 1999, but it is infringement of the trademark if the same is caused by way of spoken use of the words and the visual representation of the said words.

The Single Judge V. Kameswar Rao therefore relying upon the decision in case of Amway India Enterprises Pvt. Ltd. and Ors. vs. 1MG Technologies Pvt. Ltd. and Ors. , observed that invisible use of trademark to divert the traffic from proprietors’ website to the advertisers’ / infringers’ website shall amount to use of mark for the purpose of Section 29, which includes Section 29 (6) and 29(8) of the Act, 1999, related to advertising. 

The observation came pursuant to an application filed by DRS Logistics (Plaintiff) seeking ad interim ex parte injunction against Google India, Google LLC and Just Dial thereby restraining them from using or permitting third parties to use plaintiff’s registered trademark AGARWAL PACKERS & MOVES or DRS LOGISTICS either as a keyword or as a trademark. 

The counsel for the plaintiff submitted that a user on internet searches for the plaintiff by typing “Agarwal Packers and Movers” despite the plaintiff having a registered trademark in its favour with regard to the said mark. The website of the advertiser who may be a competitor of the plaintiff or having similar / deceptive mark pops up over and above the organic results pertaining to the plaintiff within the sponsored results by using Google’s services. 

The counsel explained the reason for that by submitting that because of the AdWord program of the defendant under which an advertiser having Ad Word account can create, select, keywords based on which their advertisement shows up as a sponsored link thereby diverts the traffic from the plaintiff’s website to the advertiser.  

Opposing the same, the counsel for Google contended that Google Ads program is an advertising platform where any advertiser can create and display an online advertisement in relation to its website, and therefore, a keyword provided by the advertiser is just a backend trigger for display of such Ad.  

The counsel therefore contended that mere use of a trademark as a keyword does not amount to infringement or unfair competition. 

After considering the arguments and the provisions, the High Court found that Google, being a search engine, does give information about the number of searches made, using any popular keyword, that too in the same field of business. So, assuming that, the advertiser chooses the keyword, but that is with the help of the information provided by Google. 

In the case in hand, the keyword is “Agarwal Packers and Movers”, which keyword, has been selected by the advertiser on the basis of statistical information provided by Google and the keyword is the registered mark of the plaintiff. This factum is not disputed by the Defendant’s counsel, added the Court. 

Justice Rao opined that the legislature has expressly departed from the ordinary construction of the expression “use” under the Trademark Act to include instances to construe “use” u/s 29 of the Act.

“It is not the case of Google that as keywords are not visible to a consumer the use of same shall not amount to an infringement of trademark. However, under the AdWords Program they also see the landing page i.e., website of the advertiser, which in a given case shall have the infringing trademark, which is also used as a keyword, in such a scenario, Google cannot absolve themselves from the liability of ensuring that the keyword is not an infringement of trademark”, observed Justice Rao. 

Justice Rao therefore went on to highlight that had the AdWords Program of Google not existed, the only option available to the infringer / prospective advertiser in order to achieve the same result would have been to change their meta-tags (source coding) which has already been held to be “use” of trademark and as such infringement. 

The High Court also observed that allowing individuals who are not owners of a trademark to choose a keyword which is a trademarked term or use parts of the trademark interspersed with generic words in the Ad-title and / or Ad-text may constitute an infringement of a trademark and / or passing off. 

Hence, the High Court stated that once the search engine has been made aware of a registered Trademark in a certain jurisdiction, it is incumbent upon the search engine to exercise a higher duty of care to ensure protection of the goodwill attached to such Trademark. 

“Surely there is an obligation on part of Google to ascertain that the keyword chosen by the advertiser is not a trademark and even if it is a trademark the same has been licensed / assigned. Not ascertaining this factum by Google, it cannot take / seek the benefit of exemption u/s 79 of the IT Act”, observed the High Court. 

Hence, Justice Rao stated here that the plaintiff can seek protection of its trademarks which are registered in view of Section 28 of the TM Act, but cannot have any right on surnames / generic words like Packers or Movers individually. 

Justice Rao therefore allowed the applications subject to final determination of the suit, and listed the matter for next date and asked Google to investigate any complaint to be made by the plaintiff to them alleging use of its trademark and its variations as keywords resulting in the diversion of traffic from the website of the plaintiff to that of the advertiser.