Delhi HC restrains P. Rajesh Ram from using GOOCLE, GOOGLE, GIPAY, GEOGLE marks in a trade mark infringement plea by Google LLC

Delhi High Court: The present suit relates to plaintiff’s rights in the trade marks GOOGLE, , , GOOGLE PAY, GPAY, and . Sanjeev Narula, J., restrained Defendants 1 to 5, or anybody acting on their behalf, from rendering, selling, offering for sale, advertising, broadcasting, or directly or indirectly dealing with any services under the marks ‘GOOGLE’, ‘GEOGLE’, ‘GOOCLE’, ‘GIPAY’, , , , , , , , , , , , or any other trade mark in any language, representation or form, which was identical or deceptively similar to plaintiff’s ‘Google’ and ‘GPay’ trade marks, and which amounted to infringement or passing off of plaintiff’s ‘Google’ and ‘GPay’ trade marks.

Background

Plaintiff, Google LLC was the registered proprietor of the ‘Google’ trade marks in India in classes 9, 38, 42, 35, 16, 25, 36, for computer hardware and software, advertising, books, manuals, telecommunication services. Plaintiff also had multi-class registrations of ‘GPay’ trade marks in respect of smart phones, digital payment services, online retail services etc. Plaintiff’s registrations in India for the trade mark ‘GOOGLE’ and ‘GPAY’ date back to 1999 and 2015, respectively. The domain name/website ‘www.google.co.in’ was registered in plaintiff’s name on 23-6-2003.

In June 2023, plaintiff discovered applications for registration of the marks , , and in Class 35 and for mark in Class 36, all filed by Defendant 1. Plaintiff initiated further investigation and found that Defendant 1, was a partner of Defendants 2 to 5 namely, Goocle Housing LLP, Goocle Tamil News LLP, GIPAY Online Service LLP, and Goocle Trade Payment LLP, which were incorporated in June-October 2022. Defendant 1 was also the owner of several domain names that either subsume the plaintiff’s ‘GOOGLE’ trade mark, or contain a deceptively similar mark ‘GOOCLE’. Further, Defendants 1 to 5 operate multiple accounts on several social networking websites using the username/handle which incorporate the marks/ terms ‘GOOCLE’, ‘GEOGLE’, ‘GIPAY’.

Plaintiff submitted that Defendant 1 had used terms ‘GOOCLE’, ‘GOOGLE’, ‘GIPAY’, ‘GEOGLE’, that were deceptively similar to plaintiff’s registered ‘GOOGLE’ and ‘GPAY’ marks, thus amounting to trade mark infringement.

Comparison of defendants’ marks with plaintiff’s marks

Plaintiff’s Marks	Defendants’ Marks
GOOGLE	GOOGLE, GOOCLE, GEOGLE
GPAY	GIPAY

Analysis, Law, and Decision

The Court opined that the impugned trade marks ‘GOOGLE’, ‘GOOCLE’, ‘GEOGLE’ and ‘GIPAY’ were structurally and phonetically similar to plaintiff’s ‘GOOGLE’ and ‘GPAY’ trade marks, with the only difference being of replacement/addition of one alphabet. Prima facie, the impugned marks appear to be deceptively similar to plaintiff’s marks.

The Court noted that defendants were utilizing the impugned marks and domain names for online news, advertising, TV, banking, and payment services, which also correspond to plaintiff’s scope of business operations, and was likely to cause confusion among the consumers.

The Court agreed with plaintiff’s contention that in case of a typographical error in entering the concerned URL/domain name, a potential user could be misled to the impugned website, which did not emanate from plaintiff. Such use of the impugned marks also was detrimental to the distinctive character of plaintiff’s well-known trade mark ‘GOOGLE’. The use of the impugned marks thus prima facie constituted infringement of plaintiff’s registered trade marks.

The Court thus issued the following directions:

Till the next date of hearing, Defendants 1 to 5, or anybody acting on their behalf, were restrained from rendering, selling, offering for sale, advertising, broadcasting, or directly or indirectly dealing with any services under the marks ‘GOOGLE’, ‘GEOGLE’, ‘GOOCLE’, ‘GIPAY’, , , , , , , , , , , , or any other trade mark in any language, representation or form, which was identical or deceptively similar to plaintiff’s ‘Google’ and ‘GPay’ trade marks, which amounted to infringement or passing off of plaintiff’s ‘Google’ and ‘GPay’ trade marks.
Defendants 1 to 5 or anybody acting on their behalf were restrained from rendering, selling, offering for sale, advertising, broadcasting, directly or indirectly dealing any services under the impugned trade name ‘Goocle Housing LLP’, ‘Goocle Tamil News LLP’, ‘Gipay Online Services LLP’, and ‘Goocle Trade Payments LLP’ or any other trade name which was identical or deceptively similar to plaintiff’s ‘GOOGLE’ or ‘GPAY’ trade marks or trade name.
Defendants 1 to 5 shall also delete/takedown the impugned online content, including their social media pages, bearing the marks ‘GOOCLE’, ‘GEOGLE’, and ‘GIPAY’.