Delhi High Court: In a case wherein it was alleged that the use of trade marks as keywords in the Google Ads Programme amounted to ‘use’ under the provisions of the Trade Marks Act, 1999 (‘Act’) and could constitute infringement, the Division Bench of Vibhu Bakhru* and Amit Mahajan, JJ., opined that the use of a trade marks as keywords for display of advertisements in respect of goods or services clearly amounted to use of the trade marks in advertising within the meaning of Section 29(6) of the Act. The Court further held that it found no infirmity with the conclusion of the Single Judge that if it was found that Google had infringed DRS’s trade mark or was contributorily liable for the same, then the benefit of safe harbour under Section 79(1) of the Information Technology Act, 2000 (‘IT Act’) would not be available to it.
Background
The appellant owned, managed, and operated the Google Search Engine (www.google.com/www.google.co.in) as well as the Google Ads Programme (‘the Ads Programme’). Google India (P) Ltd. (‘Google India’) was a subsidiary of Google and was appointed as a non-exclusive reseller of the Ads Programme in India. DRS Logistics (P) Ltd., Respondent 1 and Agarwal Packers and Movers (P) Ltd., Respondent 2 (collectively as ‘DRS’), were the leading packaging, moving and logistics service providers in India.
DRS claimed that due to long and continuous use, extensive advertising campaign, marketing network and quality control, its trade mark/trade name ‘AGARWAL PACKERS AND MOVERS’ had acquired goodwill and reputation amongst the public and the said trade mark was a ‘well-known’ trade mark. DRS alleged that Google actively encouraged the use of its registered trade marks as keywords for third parties to display their sponsored links pertaining to websites that infringed its trade marks. DRS also claimed that use of its trade marks as keywords infringes the trade marks. DRS alleged that Google profits from persons infringing its trade marks by ensuring that their advertisements were reflected on the Search Engine Results Page (‘SERP’), which was displayed as a result of search queries relating to DRS’s trade marks, if they pay a higher amount to display their advertisements (links to their website/webpage). DRS claimed that such activities of Google constituted infringement of its registered trade marks.
Analysis, Law, and Decision
The issues for consideration before this Court were:
1. Whether the use of trade marks as keywords was ‘use’ for the purposes of the Trade Marks Act, 1999?
The Court noted that Clauses (b) and (c) of Section 2(2) of the Act provided for the meaning to be ascribed to the expression, “use of a mark”. The Court stated that it could not accept that the use of trade marks must necessarily be limited to use in a visual form on the goods. Thus, the Court opined that the words ‘in any other relation’ to goods would also include use in relation to the goods, in any form whatsoever. The Court further noted that Section 29(6) of the Act expressly listed out certain actions, which would amount to use of a registered mark for the purposes of Section 29 of the Act. Thus, if any action falls within the scope of Section 29(6) of the Act, the same would necessarily have to be construed as use of the mark, for ascertaining whether the trade mark was infringed in terms of Section 29 of the Act.
The Court observed that the Ads Programme was Google’s commercial venture to monetize the use of the Search Engine for advertising by displaying the sponsored links of various advertisers, who seek to display their advertisements on the SERP pursuant to search queries initiated by an internet user. Thus, the Court opined that the use of trade marks as keywords for display of advertisements in respect of goods or services clearly amounted to use of trade marks in advertising within the meaning of Section 29(6) of the Act. The expression “in advertising” as used in Section 29(6)(d) of the Act was not synonymous to the expression ‘in an advertisement’. It was not necessary that the registered trade mark physically appeared in an advertisement for the same to be used “in advertising”. The use of trade marks as a keyword to trigger display of an advertisement of goods or services would, in plain sense, be use of the mark in advertising.
Further, the Court agreed with the Single Judge’s decision that the use of meta-tags and keywords, in one sense, served similar purpose for displaying advertisement and attracting internet traffic and opined that meta-tags served as a tool for indexing the website by a search engine, thus, if a trade mark of a third party was used as a meta-tag, the same would serve as identifying the website as relevant to the search query that included the trade mark as a search term. The use of keywords in the Ads Programme also served the same purpose. Further, the Court did not accept Google’s contention that merely because the trade mark was not visible, its use as a keyword in the Ads Programme would not amount to use of trade marks under the Act.
The Court did not accept Google’s claim that even if it was held that use of trade marks as keywords amounted to use of the trade marks; the said use was by the advertiser and not use by Google. The Court further rejected Google’s contention that it was a passive service provider and merely permitted the advertisers, the use of keywords without using it itself. The Court opined that review of the Ads Programme clearly indicated that Google’s role was anything but passive and Google had an active participant in promoting use of trade marks as keywords for the purpose of its Ads Programme. The final decision as to which Ad was displayed on a search page was not that of the advertiser but was the qualitative decision that was taken by Google.
2. Whether use of trade marks as keywords per se constituted infringement of trade marks?
The Court opined that infringement of a trade mark under Section 29(2) of the Act rested on the likelihood of confusion. Thus, unless it is established that in a particular case, the use of trade marks as a keyword had resulted in the internet user being confused, the action for infringement of a trade mark under Section 29(2) of the Act would not lie. Thus, the Court held that the use of a registered trade marks as a keyword, absent of any confusion, dilution, or compromise of the trade mark, would not amount to infringement of the trade mark.
The Court rejected DRS’s contention that Google’s activity in permitting others to bid for its trade mark as keyword was an infringing activity. The Court opined that it found nothing illegal in Google using trade marks as keywords for display of advertisements if there was no confusion that the links or Ads displayed were not associated or related to DRS. If the Ad or link displayed did not lend itself to any confusion, DRS’s grievance regarding use of its trade marks as keywords in the Ads programme was not actionable.
3. Whether confusion at the initial stage was sufficient to establish infringement of trade marks?
The Court observed that the doctrine of ‘Initial Interest Confusion’ had been applied where the courts have found material confusion albeit at an initial stage, resulting from the display of the use of meta-tags, keywords and domain names for reflecting results which were identical or similar to registered trade mark. In cases where the internet users were deceived, to access websites other than the websites offering goods, services and information as might be associated with the trade mark, the use of the trade mark in internet advertising might be actionable.
The Court opined that the trigger for application of Section 29(2) of the Act was use of a mark, which would result in confusion or indicate any association with the registered trade mark. Thus, even if the confusion was for a short duration and an internet user was able to recover from the same, the trade mark would be infringed. Thus, the Court accepted the contention that even confusion for a brief period of time would violate Section 29(2) of the Act.
4. Whether use of trade marks as keywords was detrimental to the character or repute of trade marks?
The Court opined that the use of trade marks as keywords to identify the internet users who might be interested in the Ads was not per se deceitful and the proprietor of a trade mark did not have any extended right for interdicting any and all use of marks, which were similar to his trade mark. The Court rejected the contention that the use of a trade mark as keyword, absent any element of blurring or tarnishiment of the trade mark, was detrimental to the character or repute of the trade mark. However, the Court opined that if in a given case, the Ads displayed were found to be detrimental to the distinctive character or repute of the registered trade mark, an action for infringement of the trade mark would lie. Further, the Court opined that a fair use of a trade mark by a person who was otherwise not the owner or otherwise authorized to use the same, was also permissible.
5. Whether Google was absolved of any liability by virtue of Section 79 of the Information Technology Act, 2000?
The Court noted that it was Google’s case that since it was an intermediary, as defined under Section 2(w) of the IT Act, it was exempted from any liability under Section 79 of the IT Act. The Court opined that in the present case, the allegations of infringement were in relation to the Ads Programme which was run by Google, thus prima facie, Google was an active participant in use of the trade marks of proprietors and selecting the recipients of the information of the infringing links. Thus, the Court opined that it was difficult to accept that Google was entitled to exemption under Section 79 of the IT Act from the liability of infringement of trade marks by its use of the trade marks as keywords in the Ads Programme.
The Court also noted that prior to 2004, Google did not permit use of trade marks as keywords, however, Google amended its policy, obviously, for increasing its revenue. The Court opined that merely because the said business was run online and was dovetailed with its service as an intermediary, did not entitle Google to the benefit of Section 79(1) of the IT Act, in so far as the Ads Programme was concerned. Thus, the Court held that it concurs with the prima facie view of the Single Judge that the said benefit would be unavailable to Google if its alleged activities were found to be infringing DRS’s trade marks.
The Court held that Google’s use of the trade marks as keywords did amount to ‘use’ in advertising under the Act. The Court further held that it found no infirmity with the conclusion of the Single Judge that if it was found that Google had infringed DRS’s trade mark or was contributorily liable for the same, the benefit of safe harbour under Section 79(1) of the IT Act would not be available to it.
[Google LLC v. DRS Logistics (P) Ltd., 2023 SCC OnLine Del 4809, decided on 10-08-2023]
*Judgment authored by: Justice Vibhu Bakhru
Advocates who appeared in this case :
For the Appellant: Sandeep Sethi, Senior Advocate; Neel Mason, Ankit Rastogi, Vihan Dang, Aditya Gupta, Abhilasha Nautiyal, Aditi Umapathy, Parva Khare, Sauhard Aulang, Devangini Rai, Sriparna Dutta Choudhury, Advocates;
For the Respondents: Arun Kathpalia, Chander M. Lall, Sandeep Sethi, Senior Advocates; Nancy Roy, Jeevesh Nagrath, Ananya Chug, Prakriti Varshney, Kirti Mewar, Arjun Gaur, Sriparna Dutta Choudhury, Kshitij Parashar, Neel Mason, Ankit Rastogi, Vihan Dang, Aditya Gupta, Abhilasha Nautiyal, Aditi Umapathy, Parva Khare, Sauhard Aulang, Devangini Rai, Advocates.
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