Invisible Trademark Infringement

In today’s incredibly globalized world, a business’ website is integral to its growth and sustenance. The worldwide web, however, comes with its own set of issues in a domain where the regulations have failed to catch up to the advancement of technology. One of the issues concerning the registered proprietors of trademarks is how much of these marks are protectable in the digital space. Over the years, there have been multiple instances of proprietors approaching the judicial authorities in order to secure a much-needed injunction against the competitors who are engaging in keyword advertising trademark infringement against their registered marks in order to direct traffic to their websites.

What is Invisible Infringement of Trademarks?

The misuse of a trademark by utilising the same as ‘meta-tags’ (words which are part of an internet website’s HTML programming source code) is commonly known as an invisible infringement of a trademark or keyword advertising trademark infringement. The move is characterised by attempting to cash on the reputation of a well-known brand name of a competitor and using the same to one’s benefit in order to direct the traffic that was meant for the registered proprietor to one’s own website/business. The meta-tags as such manipulate search engines such as Google in relation to the listing of websites in searches so as to achieve higher rankings and in this process divert internet traffic according to such use of meta-tags.

Indian judicial pronouncements on keyword advertising trademark infringement

One of the earliest cases pertaining to the issue of keyword advertising trademark infringement was instituted back in 2009 when the online matrimony service provider Bharat Matrimony filed a suit of infringement against the search engine Google for allowing its competitors to use its trademarked name as a keyword for its online searches. It was Bharat Matrimony’s contention that Google’s advertising program permits third parties to purchase keywords that generate sponsored links when a user types the phrase in an online search. This feature in itself, according to Bharat Matrimony, was being abused by their competitors to use Bharat Matrimony’s registered trademark unfairly and was, therefore, an infringement of their rights. In its finality, however, the case failed to make an impact in the jurisprudence concerning infringement in the digital space and in the judgment, the court chose to favour the defendants holding that an order restraining the defendants from using Bharat Matrimony would reduce the choice of keywords available, which would inevitably result in an unfair monopolisation of the word ‘matrimony’.

Further, another landmark judgment delivered on the issue of Google ad-words trademark infringement is M/s. DRS Logistics (P) Ltd. & Anr. v. Google India Pvt. Ltd. & Ors., [CS (COMM) 1/2017]. This case entailed an application being filed by the plaintiffs against Google India, Google and Just Dial to restrain them from using or permitting third parties to use the plaintiffs’ registered trademarks, Agarwal Packers & Movers or Drs Logistics, as keywords or as a meta tag or trademark.

In this case, Justice V Kameswar Rao of the High Court of Delhi held that ‘a perusal of Section 29 (9) makes it clear than an infringement of a trademark can be by way of spoken use which is different from printed or visual representation of the mark. That is invisible use of the mark can also infringe a trademark’. Additionally, the court observed that ‘it is clear that the use of the mark as meta-tags was held to be infringement of trademark. It follows, that invisible use of trademark to divert the traffic from proprietor’s’ website to the advertisers’/infringers’ website shall amount to use of mark for the purpose of Section 29 ’.

The High Court of Delhi in this case relied on the precedents as laid down in the cases of Hamdard Foundation & Ors v. Hussain Dalal & Ors CS(OS) No.1225/2013 and Amway India Enterprises & Ors. v. 1MG Technologies & Ors, CS (OS) 410/2018 wherein the court observed that the keyword trademark infringement through invisible use of a trademark done in order to redirect the traffic from the proprietor’s website to the advertiser’s or infringers’ website shall amount to use of a mark for the purposes of Section 29 which includes Sections 29(6) and 29(8) of the Trademarks Act, 1999.

Most recently, Justice Pratibha M. Singh of the High Court of Delhi, vide order dated April 27, 2022, awarded an interim injunction in favour of Makemytrip in the case of MakeMyTrip India Private Limited Vs Booking.com B.V. & Ors., CS (COMM) 268/2022. While the final judgment is yet to be pronounced in this case, the defendants were restrained from using the plaintiff’s registered marks on the Google Ads Program as keywords since it would amount to trademark infringement and passing off. The brief facts of the case are that the plaintiff filed the current suit in order to protect its various registered trademarks that were being used by the defendant as keywords for promoting its services. The plaintiff further contended that when a search for ‘Makemytrip’ is carried out on Google, the first result displayed is that of the defendant’s website. This unauthorized usage of trademark rights of the plaintiff led the court to decide in the plaintiff’s favour at least until the finality of the suit.

Conclusion

The jurisprudence pertaining to the infringement of trademarks in an invisible manner, especially through the use of the internet, has come a long way since one of the first cases of its kind before the High Court of Madras when the restriction on keywords was considered an impediment to the fair competition to the latest interim injunction granted by the High Court of Delhi. The deliberate shift in the courts’ opinions has to do with the popularity of the use of the internet as a tool for conducting business. Since the worldwide web has become intrinsically linked with the daily lives of the majority of people around the globe, it has therefore become more necessary to protect one’s rights offline as well as online.