Delhi High Court
M/S Drs Logistics (P) Ltd & Another vs Google India Pvt Ltd & Anr on 30 October, 2021
IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment delivered on: October 30, 2021
+ CS(COMM) 1/2017 & I.As. 21153/2011, 4474/2014, 2645/2020,
2646/2020, 7203/2020
M/S DRS LOGISTICS (P) LTD & ANR. ..... Plaintiffs
Through: Mr. Chander M. Lall, Sr. Adv. with
Ms. Nancy Roy, Adv.
versus
GOOGLE INDIA PVT LTD & ORS. ..... Defendants
Through: Mr. Sandeep Sethi, Sr. Adv. with Mr.
Neel Mason, Ms. Ridhima Pabbi, Ms.
Ekta Sharma, Ms. Vennela Reddy and
Ms. R. Ramya, Advs. for D-3
Mr. Arun Kathpalia, Sr. Adv. with Mr.
Saransh Jain, Ms. Shlok Narayan and
Mr. Tejpal S. Rathore, Advs.
for D-1
Mr. Kshitij Parashar, Adv. for D-2
Ms. Haripriya Padmanabhan, Adv.
with Mr. Shrutanjaya Bhardwaj, Adv.
for applicant in I.A. 7203/2020
CORAM:
HON'BLE MR. JUSTICE V. KAMESWAR RAO
JUDGMENT
V. KAMESWAR RAO, J
IAs. 21153/2011 and 4474/2014
1. The present suit has been filed by the plaintiff seeking
permanent injunction against the defendants. The plaintiff has
also filed the I.A. 21153/2011 under Order XXXIX Rules 1 and 2
CS (COMM) 1/2017 Page 1/137
of the Code of Civil Procedure, 1908 ('CPC' hereinafter) with
the following prayers:
"A. The Defendants, it directors, officer, servants,
agents, representatives and assigns be restrained by an
order of interim and ad-interim ex-parte injunction from:
(i) using or permitting third parties to use
AGARWAL and / or AGGARWAL PACKERS &
MOVERS and / or DRS LOGISTICS or any other
trade mark or name similar to the Plaintiffs'
registered trademark AGARWAL PACKERS &
MOVES and / or DRS LOGISTICS either as a key
word or as a meta tag or as a trade mark or part of
a key word or meta tag or trade mark or in any
other manner so as to infringe the registered trade
marks of the Plaintiffs;
(ii) permitting third parties from advertising
AGARWAL and / or AGGARWAL, PACKERS &
MOVERS and / or DRS LOGISTICS in various
combinations on its website or any trade mark or
name similar to the Plaintiffs' registered trade
mark AGARWAL PACKERS & MOVERS and / or
DRS LOGISTICS or any other trade mark either as
a trade mark or part of a trade mark, a trade name
or corporate name or as part of a trade or
corporate name, or in any other manner
whatsoever so as to allow third parties from
passing off their services or business as and for the
services or business of the Plaintiffs; except
Agarwal Packers & Movers Ltd. or any other
company / entity enjoying registered users licence
or permission to use the name
(iii) permitting any third parties from using any
other indicia whatsoever to show any association
or affiliation or connection of with the Plaintiffs
or their services on its website;
B. The Defendants, it directors, officer, servants,
agents, representatives and assigns be restrained by an
order of interim and ad-interim ex-parte injunction from:
CS (COMM) 1/2017 Page 2/137
(i) remove all references on its sponsored links
to third party websites, when the words AGARWAL
and / or AGGARWAL, PACKERS & MOVERS and
/ or DRS LOGISTICS are used in various
combinations in the search engine of the Defendant
website. except Agarwal Packers & Movers Ltd or
any other company / entity enjoying registered user
license or permission to use the name:
C. The Defendants be called upon to immediately and
forthwith allow inspection of their accounts to assist in
ascertaining damages;
D. Costs of the present application be awarded to the
Plaintiffs; and
E. Any other relief which the Hon'ble Court thinks fit
and proper in the circumstances of the case be allowed in
favour of the Plaintiffs and against the Defendant."
2. The plaintiff has subsequently filed another application
numbered as I.A. 4474/2014 under Order XXXIX Rules 1 and 2,
CPC, seeking ad interim relief against defendant No. 3, i.e.,
Google LLC with the following prayers:
"A. The Defendant No.3, it directors, officer, servants,
agents, representatives and assigns be restrained by an
order of interim and ad-interim ex-parte injunction from:
(i) using or permitting third parties to use
AGARWAL and / or AGGARWAL PACKERS &
MOVERS and / or DRS LOGISTICS or any other
trade mark or name similar to the Plaintiffs'
registered trademark AGARWAL PACKERS &
MOVES and / or DRS LOGISTICS either as a key
word or as a meta tag or as a trade mark or part of
a key word or meta tag or trade mark or in any
other manner so as to infringe the registered trade-
marks of the Plaintiffs;
(ii) permitting third parties from advertising
AGARWAL and / or AGGARWAL, PACKERS &
CS (COMM) 1/2017 Page 3/137
MOVERS and / or DRS LOGISTICS in various
combinations on its website or any other trade
mark or name similar to the Plaintiffs' registered
trade mark AGARWAL PACKERS & MOVERS
and / or DRS LOGISTICS or any other trade mark
either as a trade mark or part of a trade mark, a
trade name or corporate name or as part of a trade
or corporate name, or in any other manner
whatsoever so as to allow third parties from
passing off their services or business as and for the
services or business of the Plaintiffs; except
Agarwal Packers & Movers Ltd. or any other
company / entity enjoying registered users licence
or permission to use the name.
(iii) permitting any third parties from using any
other indicia whatsoever to show any association
or affiliation or connection of with the Plaintiffs or
their services on its website;
B. The Defendant No.3, it directors, officer, servants,
agents, representatives and assigns be restrained by an
order of interim and ad-interim ex-parte injunction from:
(i) remove all references on its sponsored links
to third party websites, when the words AGARWAL
and / or AGGARWAL, PACKERS & MOVERS and
/ or DRS LOGISTICS are used in various
combinations in the search engine of the Defendant
website except Agarwal Packers & Movers Ltd. or
any other company / entity enjoying registered user
license or permission to use the name
C. The Defendant No.3 be called upon to immediately
and forthwith allow inspection of their accounts to assist
in ascertaining damages;
D. Costs of the present application be awarded to the
Plaintiffs; and
E. Any other relief which the Hon'ble Court thinks fit
and proper in the circumstances of the case be allowed in
favour of the Plaintiffs and against the Defendant No.3."
CS (COMM) 1/2017 Page 4/137
3. I shall proceed to decide both these applications
simultaneously. This Court vide order dated January 22, 2020
had recorded the submission of the plaintiff wherein it had
stated that the only issue which need to be decided for the
purpose of injunction is, whether providing a trademark of an
owner as a keyword to a third party would amount to
infringement of a trademark. The same has been reproduced as
under:
"2. In other words, he clarifies that Google does not
allow any third party to put / publish / refer to a
trademark of an owner in the Adtext / Adtitle as per
its policy. Mr. Sethi also states that the said policy is
still in vogue and shall be implemented in favour of
the plaintiff.
3. On this, Mr. Chander M. Lall, learned Senior
Counsel appearing for the plaintiffs, states that in
view of the statement of Mr. Sethi, the only issue
which needs to be decided for the purpose of
injunction is whether providing a trademark of an
owner as a keyword to a third party shall amount to
infringement of a trademark."
I further note from the plaint that plaintiff No.1 is the
owner of the trademarks and copyrights and plaintiff No.2 has
been granted license for use of trademarks and copyrights vide
agreement dated July 22, 2009. It is also clear from the plaint
that plaintiff No.2 has filed an application before the Registrar
CS (COMM) 1/2017 Page 5/137
of Trademarks to take on record the fact that it is a registered
user of the trademarks of plaintiff No.1. Plaintiff No.1 and
plaintiff No.2 have been in this order collectively referred to as
'plaintiff' for the sake of brevity.
4. Mr. Lall, learned Senior Counsel who appears along with
Ms. Nancy Roy on behalf of the plaintiff has stated that through
the present suit the plaintiff seeks to restrain defendants Nos. 1
and 3 i.e. Google India Pvt. Ltd. and Google LLC (hereinafter
'Google') from the use of the plaintiff's registered trademarks
which constitute a part of ad-title, ad-text, URL and meta-tag or
keyword. Mr. Lall states that meta-tags or keywords trigger
search results on Google i.e. by way of Google Ads.
5. It is the case of the plaintiff that several third party
infringers use the services of Google for inserting their
infringing advertisements when a user on the internet looks for
the plaintiff by typing "Agarwal Packers & Movers". Plaintiff
has moved against third parties and despite having decrees in its
favour it states that Google did not stop the use of infringing
advertisements on their platforms. He stated that one party
namely Agarwal Packers India (Agarwal Express Links Pvt.
CS (COMM) 1/2017 Page 6/137
Ltd.) against whom a decree has been passed, continues to
appear in the keyword, Ad-title and URL.
6. It is the case of the plaintiff that obtaining orders against
individual advertisers on the Google platform was ineffective
and it is due to this reason that the plaintiff was compelled to
initiate the present suit against defendant Nos. 1 & 3 and
defendant No.2 i.e. Just Dial. Mr. Lall has pointed to the
averments made in the plaint wherein it has been stated that the
plaintiff has been asked to pay more money or else the
defendants would advertise the infringers of the plaintiff's
brand on their website.
7. Mr. Lall argued that these actions of the defendants
amount to blackmailing through the AdWords Program. He has
argued that there are numerous tutorials available online which
suggest that by bidding for one's own brand, which is used as a
keyword by the Google AdWord Services the owner can protect
the advertisement panels on the search engine result page from
being used by the competitors and from stopping the
competitors from stealing the traffic.
CS (COMM) 1/2017 Page 7/137
8. It is the case of Mr. Lall that the suit has been initiated
against Google alone and not against their customers who use
Google services, which are constantly changing. The suit targets
the mechanism of Google and the cause of action relates to all
activities where the registered trademark of the plaintiff is used
to direct internet traffic to the website of the infringer and seeks
injunction from using the same as a keyword / meta tag, etc.
9. He has pointed out, that at the time of filing of the suit
brand infringement was permissible on Google by use of
registered trademarks in the ad-title and ad-text as also in the
URL and of course keywords. However, Google has agreed to
block the trade mark "Agarwal Packers & Movers" and other
similar marks of the plaintiff from appearing in the Ad-title and
Ad-text. According to him, on URL, the defendants in their
written statement in paragraph 14 have also stated that, in terms
of the policies of Google Inc., which are implemented by
Google Inc, itself no registered trademarks will be displayed in
the Ad-text and Ad-title of an advertisement or sponsored link.
The trademarked term would also not appear in the URL of the
CS (COMM) 1/2017 Page 8/137
advertisement and that the said policies would be applicable to
the plaintiff as well.
10. According to him, on the issue of keywords, Google had
asserted that it only implements the policy to restrict keywords
in certain countries which include China but does not include
India. Mr. Lall has pointed to the policy of Google as existing
before the Madras High Court in Consim Info Pvt. Ltd. vs.
Google India Pvt. Ltd. & Ors. 2011 (45) PTC 575 (Mad) (SJ)
('Consim I' hereinafter) and Consim Info Pvt. Ltd. vs. Google
India Pvt. Ltd. & Ors. 2013 (54) PTC 578 (Mad) (DB)
('Consim II' hereinafter) to list the countries where it restricts
the use of keywords. However, when it comes to India the
defendant Nos. 1 and 3 have stated that Google would not
investigate or restrict the use of a trademark term in keywords,
even if a trademark complaint is received. According to him,
Google does not consider use of trademarks as keywords as use,
or infringement of a registered trademark.
11. As per Mr. Lall in the earlier cases before the Madras
High Court viz. Consim I and Consim II both Google India and
Google Inc. were parties and the stand taken by Google has
CS (COMM) 1/2017 Page 9/137
changed from 2009 to 2014 which is when the current suit was
filed.
12. According to Mr. Lall, the Division Bench of the Madras
High Court held the Plaintiff/Appellant therein to be entitled to
an injunction. He stated that the Court had given a finding
stating that Google had discriminated against the appellants
therein and also arbitrarily used the trademark words as
keywords; and that Google could have used some other words
as keywords on sponsored link and also held that Google's
action would only create confusion in the minds of the public.
Further that Google was bound by the policy that has been
reproduced in the order of the Division Bench.
13. He further pointed to the written statement of the
defendant No. 1 to state that they have in paragraph 20 admitted
to the applicability of judgment in the case of Consim I to the
instant case and therefore the change in policy now is
completely mischievous and contumacious. Further, he stated
that in an affidavit filed by Google there was an admission that
right up to 2009 the AdWords Policy applicable to India did not
allow trademarks as part of keywords. According to him,
CS (COMM) 1/2017 Page 10/137
Google asserts that they revised their Ad Policy on June 4, 2009
to allow use of trademarks as keywords in more than 100
countries including India. The decision in Consim I is dated
September 30, 2010 wherein Google was bound to follow the
keyword policy in India prior to amendment. The policy that
was to be followed for India was also clarified in paragraph 51
of Consim II.
14. Mr. Lall relied on the judgment of the Bomaby High
Court in the case of People Interactive (I) Pvt. Ltd. vs. Gaurav
Jerry, MIPR 2014 (3) 101, to state that, meta-tags are special
lines of code embedded in the web pages which provide
structured data (meta data) about the web page and that these
meta-tags are used by search engine robots to assess webpage
contents and other relevant material relating to a webpage in the
building of search engine indices. The illicit use of meta-tags
could be severely damaging and that this is a form of hijacking
the plaintiff's reputation and goodwill. Similarly, Mattel Inc. &
Ors. vs. Jayant Agarwalla & Ors., 2008 (38) PTC (416) (Del)
held that meta-tags are machine readable codes used by search
engines to index sites. Additionally, he stated that meta-tags are
CS (COMM) 1/2017 Page 11/137
included in the code that defines the functionality of a website
by a website owner and that the use of trademarks as meta-tags
constitutes infringement and passing off since the defendant
Nos. 1 and 3 through such tags divert internet traffic away from
the plaintiff's website.
15. By placing reliance on Consim I, he also argued that
keywords are meta-tags which have been commercialised and
are available to third parties for a price. According to him,
defendant No.3 describes a keyword as words or phrases you
choose that can trigger your ad to show on search and other
sites; these keywords are used synonymously with 'search
terms' and 'AdWords'.
16. Mr. Lall argued that Google is not an intermediary, but
rather a direct beneficiary through the sale of keywords. As per
the judgement of Consim II, Google explained that advertisers
who vie with one another are asked to bid upon the basic price
fixed by the search engine for selection of the keyword; and
parties can advertise their services on the sponsored links by
paying necessary charges to Google. According to the written
statement of defendant No.3, Google India is the reseller of
CS (COMM) 1/2017 Page 12/137
Adwords Program in India and as per Consim I. Google guides
the advertiser in selection of the keyword and charges them
either a fixed rate or gives it to the highest bidder.
17. Mr. Lall has pointed to Google's policy to state that
Google maximises its revenues by linking keywords with the
goods/services of the advertisers and that these keywords enable
the advertisements to appear on diverse Google platforms. The
relevant section of Google's policy has been reproduced as
under.
"With a keyword-targeted ad on Google and its
search partners, your bid is based on your
maximum cost-per-click (max. CPC) bid, the
maximum amount you're willing to pay for each
click on your ad (though the final amount you're
charged per click - your actual CPC - could end up
being less). Your Quality Score is based on the
relevance of your keywords, the quality of your
landing page, your ad's click through rate (CTR),
adjusted for its position on the page, and a few
other factors.
xxx xxx xxx
Keywords can trigger your ads to appear next to
search results on Google and other search sites.
But keywords can also trigger your ads to show on
other sites across the Internet - Google-owned
properties like YouTube as well as Google's
partner sites like NYTimes.com or Families.com,
for example. We call these placements, which are
part of what we call the Display Network."
CS (COMM) 1/2017 Page 13/137
18. Mr. Lall points out to the averments made by the
defendant No.3 in their written statement that the sponsored
results / ads are obtained by the mechanism put in place under
the AdWords Program. Only advertisers having an AdWords
account can access the AdWords Program, which allows
advertisers to create, select, edit and manage keywords based on
which their advertisements can show up as a 'sponsored links' /
ads in response to a search query entered by any user. He stated
that the defendant admitted that the keyword mechanism is at
the heart of Google's programming, as they have stated in the
written statement that, the automated response which Google
search engine makes to a user's search request by displaying a
sponsored link is wholly determined by the keywords and other
content of the sponsored link which the advertiser has chosen.
19. Mr. Lall has pointed to the Plaintiff's affidavit with a
screenshot of how the keyword Planner which assists the
advertisers in selecting certain terms and combinations thereof
as keywords under the AdWords Program which can help
improve the likelihood of an advertisement receiving a higher
relevancy score of Ad rank; which reads that the keyword
CS (COMM) 1/2017 Page 14/137
'agarwal packers and movers' has 170 as average monthly
searches and the screenshot reads that the competition against
this keyword as 'High' and suggests a bid of ₹168.69. The
keyword planner tool according to them provides data and
information to an advertiser relating to popular keywords in the
same field of business and gives information such as average
monthly searches for any popular keyword or a suggested value
of the bid amount to help the advertiser plan its bid value,
keeping in mind other advertisers in the same field of business.
Mr. Lall argued that by the virtue of the above acts, Google
cannot be termed as an intermediary, as the term has been
defined under the Information Technology Act, 2000 ('IT Act'
for short). It is not entitled to claim the harbour of Section 79 of
IT Act as it is Google itself which provides the service of
keywords, selects the people who can participate and actually
shepherds them through the process and conspires and abets the
commission of unlawful acts. Mr. Lall has placed reliance on
the affidavit of Ramesh Agarwal filed on April 19, 2014,
wherein screen-shots of the Keyword Suggestion Tool which
shows the advertiser the Ad group ideas along with keyword
CS (COMM) 1/2017 Page 15/137
ideas as well as country specific options, language, negative
keywords, etc. This is also succeeded by a column for Keyword
filters with Keyword options, Show broadly related ideas, Hide
keywords in my account, Hide keywords in my plan. The
prospective advertiser is offered a menu of keywords to choose
with the following information:
CS (COMM) 1/2017 Page 16/137
20. He argued that Google's argument is merely an
afterthought. Its AdWords Policy itself acknowledged that the
use of trademarks as part of keywords constituted violation of
trademark rights and merely because they now unilaterally
decide to change that policy, the legal position remains
unchanged and Google is estopped from claiming to the
contrary. He further anchors his argument on the fact that the
use of keywords by search engines require licenses, a fact
which has been acknowledged by Google; as per the plaint
wherein the plaintiff has submitted that the plaintiff also
participates in the Google AdWords Program and when it does,
in such a case the plaintiff licenses the use of its registered
trademark to the defendant No.1 and the defendant No.3 for use
as a keyword. According to him defendants specifically admit
the position that its AdWords Policy, Terms of Service requires
the trademark owner to grant to Google a license to use the
keywords in future. The need to obtain a license by Google
constitutes an admission that unlicensed use is not authorised.
21. He submitted, that as per section 29(7) of the Trade
Marks Act, 1999 (TM Act 'for short') clearly sets out that a
CS (COMM) 1/2017 Page 17/137
registered trademark is infringed by a person who applies such
registered mark to a material intended to be used for
advertisement of goods or services and here the goods or
services are not restricted to goods/services for which the
trademark is registered.
22. Mr. Lall has argued that defendant No.2 Just Dial is
another service provider which collaborates with Google and its
AdWords Policy; when one searches for the plaintiff's
registered trademark a Just Dial advertisement appears on top.
The name of Just Dial is in juxtaposition to the trademark of the
plaintiff. Just Dial is then able to direct traffic to a telephone
number who pays them the highest fee, just like Google. The
first number that appears on Just Dial is of the person who pays
the highest fee for the listing.
23. Mr. Sandeep Sethi and Mr. Arun Kathpalia, learned
Senior Counsels who appear with Mr. Neel Mason and Mr.
Saransh Jain on behalf of defendant Nos. 1 and 3 (collectively
referred to as 'Counsels for Google'), argued that the Google
Ads program, is an advertising service where any advertiser can
create and display an online advertisement in relation to its
CS (COMM) 1/2017 Page 18/137
website, including search-based advertising on the Google
search engine. The search results on the first page of the Google
Search engine are of two types, i.e., 'Sponsored Search Results'
and 'Organic Search Results'. The former comprises of
advertisements and appear separately from the organic search
results; and are differentiated from the label 'Ad'.
24. The Counsels for Google have submitted that for creation
of an advertisement, the advertiser inter alia has to provide the
text of his Ad, i.e., the Ad-Text and also provide the search
terms or phrases, which are known as keyword(s), which the
advertiser believes are most relevant to its business. When the
said keyword is typed in by any internet user on the Google
Search Engine, as a search query, the Ad of the advertiser may
be eligible for display on the Google Search Engine Results
Page. Counsels for Google have maintained that each and every
element of the Ad is created and provided solely by the
advertiser, whereas the Google Ads program merely provides
an advertising platform and interface for creating and placing
such an Ad on Google Search. A keyword provided by the
advertiser is treated as just a backend trigger for an Ad to be
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displayed and is never used in a trademark sense. Keywords
provided by the Advertiser are not visible anywhere within the
advertisement nor are they used in any tangible or perceptible
manner to the end user.
25. The Counsels for Google have explained that the search-
based Ads are triggered by a way of automated software
algorithms that match the search query entered by a user with
the set of keywords provided by various advertisers and
algorithmically determines which Ad is most relevant to the
search query and should be triggered, if at all. The actual
display and ranking of an Ad is not determined by the selection
of keywords alone nor the highest bid, but is a function of a
combination of the bid amount, quality score (that factors the
relevance of the Ad), the context of a user's search and the
expected impact of Ad formats and extensions. It is the case of
Google that revenue is not earned or generated by Google
merely by an advertiser participating in the Google Ads
program or upon the mere display of an Ad. A charge is made
to the advertiser only if the Ad is clicked upon by the end user.
CS (COMM) 1/2017 Page 20/137
26. It has been argued by the Counsels for Google that the
keywords are neither sold by Google nor are they purchased by
the advertiser in the sense of exclusively reserving the term or
phrase for the purpose of triggering Ads. Google has stated that
none of the Advertisers acquire any proprietary rights in the
keywords provided by them to Google and that multiple
advertisers can select the same keyword.
27. With regard to the keyword Planner Tool, the Counsels
for Google have argued that, this is a standalone research tool,
i.e., the keyword planner which was earlier known as Keyword
Suggestion Tool. They have submitted that this is a tool for the
benefit of advertisers to gain statistical information and
understanding about the kind of words, expressions,
combinations that may be relevant for an advertiser to consider
as keywords for triggering their advertisements. They state that,
the keyword planner tool is not a mandatory step for creating or
running advertisements on Google Ads and is simply a free
facility or a software tool that is separately available to the
advertiser and can be used to help plan an advertisement
campaign, should the advertiser choose to avail of it. This
CS (COMM) 1/2017 Page 21/137
keyword planner is only for the internal reference of advertises
and is not publicly accessible except to advertisers who
specifically look for this tool on the Google Ads program.
According to them, prospective advertisers can use this tool to
generate and compile lists containing some relevant statistical
data e.g., number of average monthly searches, the competition
level, the amounts bid by advertisers for a keyword, etc.,
regarding a given business field and learn which keywords and
search phrases would generate an optimum value for the
advertiser. They have stated that, the information that is
ultimately displayed using this tool is based on the millions of
bits of data that is being stored dynamically to the extent it
matches with the queries fed in by the user of the tool; and
Google has taken a stand that the advertiser is free at all times
whether or not to use the keyword planner tool and has the full
discretion and choice to provide or not provide a keyword,
irrespective of whether it forms a part of keyword planner or
not and may even provide a keyword that is not a part of the
keyword planner at all. Google has maintained that the said tool
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is line, both with the applicable law in India as well as honest
commercial/industrial practices.
28. In context of their trademark policy vis-a-vis the Google
Ads, the Counsels for Google have stated that the Google Ads
Trademark policy explicitly prohibits any advertisements that
infringe the trademark rights of others. They have also stated
that under the policy, Google investigates the use of
trademarked terms in the Ad-Text of competitor ads, i.e., in the
visible portion of the ad that appears on the search results page.
Google does not restrict or investigate use of trademarks as
keywords. They have stated that the, trademark policy permits
use of the trademark term in the Ad-text by resellers,
informational sites and authorized advertisers, if they meet the
necessary requirements, consistent with the applicable law in
India. According to them, Google Ads Trademark policy which
is applicable globally including in India is aligned with global
legal precedent, finding that a mere use of a trademark as a
keyword, without more, does not amount to infringement or
unfair competition. They have stated that the said policy had
been recorded and accepted in Consim I and reiterated by the
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Division bench in Consim II. The said policy has not
undergone any significant change since then, contrary to what
the plaintiff has alleged. They have stated that the only issue
subsisting in the present matter is whether permitting a third
party to register a keyword that is a registered trademark
amounts to infringement, which according to them is a question
answered in the negative, based on the findings of numerous
foreign Courts.
29. It is the case of Google that, once the Ad is created or
edited by an advertiser, the Ad is reviewed in an automated
manner for compliance with the Google Ads policies and
applicable laws. The process of review involves the Ad being
reviewed in an automated manner and algorithmically without
any human intervention to check any Ad that may be placed in
the system for violations of applicable laws. The content,
including headline, description, keywords, destination and any
images and videos are reviewed within one business day. Ads
which on the face of it violate Google Ad policies; for instance,
Google algorithms will automatically track and block
advertisements which are prohibited under the Pre-Conception
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and Pre-natal Diagnostic Techniques Act, 1994 ('PCPNDT
Act', for short). At the same time, for certain policy violations
such as trademark violations (in the Ad Text), the Ads tools can
detect and block the misuse of a trademarked term in the Ad
Text once the owner of such rights has informed Google of its
valid and existing rights and as to how a particular
advertisement is in violation of such rights. It is Google's case
that the plaintiff itself has benefitted from the said feature and is
very well aware of the nature and functioning of review of Ads
by Google.
30. According to the counsels for Google, Google
Advertisement Policies also include the Misrepresentation
Policy. The thrust of the said policy is to route out ads that seek
to mislead users or misrepresent themselves to offer genuine or
authorised goods or services or in any manner seek to play a
fraud on the users. For instance, Ads scamming users by
impersonating brands or businesses by referencing the brand
content in the ads, URL, destinations or an advertiser
misrepresenting itself as the brand or business in user
interactions is not permitted under the said policy. An Ad which
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is suspended for violation of this policy also leads to suspension
of the associated accounts of advertisers of such Ads, since this
is considered to be a gross violation of the Ad policies. It had
also been submitted, that the Plaintiff in the present proceedings
had reported certain Ads for violation of their trademark rights.
However according to Google, such ads were not found to be in
violation of the Trademark policy of Google Ads because they
did not feature the plaintiff's trademark in the Ad Text, the
same were found to be in violation of the Misrepresentation
policy and had been acted upon accordingly. It has been
submitted that, Google Ads program does not permit bad ads,
that are intended to deceive users by excluding relevant
information or providing misleading information and such ads
will be reviewed under the Misrepresentation Policy, as and
when reported by the Plaintiff.
31. Another limb of argument advanced by the Counsels for
Google, has been that keywords are not meta-tags. According to
them, meta-tags are neither used by Google in the organic
search result nor are they part of sponsored links/Ads section.
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On the specific issue of meta-tags the Counsels for Google
addressed the following issues:
i. That there is neither any pleading nor any factual
foundation laid down in the plaint to allege what meta-
tags are or how Google is allegedly infringing the
Plaintiff's trademark rights through meta-tags.
According to them the only reference is in the prayer
clause of the plaint, which is entirely unsupported by
pleadings. The arguments raised regarding meta-tags
have been raised for the first time in rejoinder arguments
and that too only in oral submissions. It is a well settled
principle that a party cannot be allowed to bring a fresh
cause of action at the stage of rejoinder.
ii. It is their argument that the plaintiff should be precluded
from raising this argument at this stage. It has been their
submission that meta-tags are 'website descriptors' or
'tags' that can be words, expressions or phrases that are
put in the source coding of any website to help describe
the contents of their website. If the website owner puts
certain keywords in his website's source coding and
CS (COMM) 1/2017 Page 27/137
designates them as met-tags, they are referred as
'keyword meta-tags'. However 'keyword meta-tags'
cannot be confused with 'keywords'. A keyword is
conceptually different from a meta-tag. A keyword is a
word/phrase that is provided by an advertiser to act as a
trigger for its ad. It is not embedded, included or
incorporated into any source code or other text of either
the ad or the advertiser's website. On the other hand a
meta-tag is a word /phrase put in source code by a
website developer.
iii. According to them the difference had been discussed by
the Federal Court of Australia in the judgement of Veda
Advantage Ltd. vs. Malouf Group Enterprises Pvt. Ltd.
[2016] FCA 255, wherein it has been noted that
"keyword meta-tags" were trademarked words embedded
in the source code of a website and its pages by the
creator/editor of the site. It had also been that unlike the
'keywords' employed by Google as a trigger at the
backend, 'keyword meta-tags' were not entirely invisible
CS (COMM) 1/2017 Page 28/137
and were visible to those who know what to look for, in
the source data.
iv. They have argued that the reliance placed by the plaintiff
on the judgments in the cases of People Interactive
(supra) and Mattel (supra), is misplaced and
unsustainable. According to them the Courts have not in
any way held a search engine responsible for use of
meta-tags by a website owner in his website's coding and
are being read by the Plaintiff to suit his own case. They
have argued that the aforesaid cases are inapplicable to
the facts of the present case and that the plaintiff has read
orders as well as concept of meta-tags to its own liking
and same does not reflect the correct position of facts.
32. Another argument taken by the counsels for Google has
been that the use of Trademarks as keywords does not amount
to "use" under the TM Act. According to them, section 2(2) (b)
requires a trademark to be used "in a printed or other visual
representation" as a prerequisite before use under section 2
(2)(c) can even be examined. The key requirement here is that
the use of a trademark is in some visible or tangible form which
CS (COMM) 1/2017 Page 29/137
is "represented" to an end user / consumer. Mere providing of a
trademark term as a keyword as a back-end trigger by the
advertiser to display its ads does not in any manner amount to
such "representation" and does not qualify as "trademark use"
particularly by Google.
33. It has been their case that as per the Federal Court of
Australia in Veda Advantage (supra) wherein the Court had
held that the use of a trademark as a keyword "which is
invisible to the consumer" is not a use as trademark. The Court
rejected the proposition that using the words which are invisible
and inaudible, indeed imperceptible, to consumers, amounts to
trademark use. Further, the UK Court of Appeal in the case of
Reed Executive Plc & Anr. vs. Reed Business Information
Ltd. and Ors., [2004] EWCA (Civ) 159 had stated in relation to
use of trademarks as keywords, that an invisible use of such
sort, may not be use at all, for the purpose of the trademark
legislation as there is no meaning being conveyed to anyone -
"no sign". In another decision given by the Moscow City
Arbitrazh (Commercial) Court in the case of Nebo vs.
Almazakh, Case No. A40-128465/17-91-1116 (2017) had held
CS (COMM) 1/2017 Page 30/137
that using a trademark as a keyword does not constitute use of a
trademark and observed that keywords cannot be viewed as
means of using a trademark as such words do not carry the
"branding" capacity. The Court had observed that keywords do
not form part of the advertisement proper, they are not included
in its content and are not shown to the user. Keywords cannot
even be used for identifying a particular ad as the same
keywords may be used for multiple advertisements. Therefore,
users do not know on the basis of which keyword a particular
advertisement is shown nor can they determine which exact
keywords correlates with the said advertisement.
34. It is their case that section 2(2)(c) further requires that the
Plaintiff's trademarks be used "as or as part of any statement
about the availability, provision or performance" of its services
for it to qualify as trademark use. Mere providing of a
trademark term as a keyword as a back-end trigger by the
advertiser to display its ads does not in any manner amount to a
"statement" to the end user / consumer and does not qualify as
"trade mark use", especially by Google. The High Court of New
Zealand in the case of NZ Fintech Limited T/A Moola vs.
CS (COMM) 1/2017 Page 31/137
Credit Corp Financial Solutions Pty Ltd T/A Wallet Wizard
[2019] NZHC 654 held that an advertiser is not using a
keyword as a "badge of origin" for its goods or services, but
rather it is being used in Google's paid service "to place its
comparative or competitive offering" in the search results along
with the trademark owner's offering which indicates that there
is "no use as a trademark"; and also in the case of Veda
Advantage (supra) it was observed that keywords being
indiscernible to the consumers are not being used by the
advertiser to "distinguish the services of one trader from
another" and cannot denote a connection in trade between
them. Such use by the advertiser is merely to "identify internet
users who may have interest in using its services".
35. Counsels for Google, have argued that section 29(6) is to
be read in addition and as a further elaboration of use under
Sections 2 (2)(b) and 2(2)(c) that particularly identifies four
specific forms of "use" of a trademark, which may qualify as
infringement under section 29. Use of trademarks as keywords
at the "back end" for triggering ads does not qualify as use,
including under any of the subsections of section 29(6),
CS (COMM) 1/2017 Page 32/137
especially by Google. It is their case that it has been held across
various international Courts that internal use of the trademark at
the backend for triggering ads does not amount to use and hence
cannot amount to trademark infringement.
36. It is their case that, if there is no use of trademark for five
years as contemplated under section 47(1)(b), which provides
that a trademark may be removed from the register, if a
trademark owner is permitted to claim to be making "trade mark
use" of a trademark solely by using the term as a keyword at the
backend without it otherwise appearing anywhere in the
trademark owner's advertising materials or business activities,
"non-use" as contemplated under Section 47 and its purpose
would stand defeated.
37. The Counsels for Google have argued that, even if use is
established, there are no elements for infringement and/or
passing off under the TM Act which have been established.
According to them section 29(1) stated that the use of a
trademark is infringing only if it is "likely to be taken as being
used as a trademark". The High Court of New Zealand in
Intercity Group (NZ) Limited vs. Nakedbus NZ [2014] NZHC
CS (COMM) 1/2017 Page 33/137
124 had held that use of a trademark as a keyword is an act
which is not "seen" or "known" or understood by the
consumer, it could thereby not be "taken as" anything, let alone
amounting to use that this is "likely to be taken as being used as
a trademark". This view was also accepted by a Court of the
United States of America in the case of Merck & Co. Inc. &
Anr. vs. Mediplan Health Consulting, 425 F. Supp 2d 402 and
it was observed that internal use of a trademark as a keyword on
Internet Search results does not constitute a trademark use.
They state that, Courts have around the world held that in cases
of no visible appearance of a third-party trademark in keyword
advertising, it cannot amount to infringement. Reliance has
been placed on Reed Executive (supra) and Veda Advantage
(supra). They also submitted the judgement of the Chancery
Division Court in the case of Cosmetic Warriors Ltd. & Anr.
vs. Amazon.uk. Ltd & Anr., [2014] EWHC 181 (Ch), wherein
it was held that the use of third party trademarks as keywords to
trigger advertisements does not constitute trademark
infringement.
CS (COMM) 1/2017 Page 34/137
38. Google has taken a stand that there is no prima facie
evidence of confusion for infringement under sections 29(2) and
29(3) of the TM Act which state that use of a trademark is
infringing if it is "likely to cause confusion on part of the
public". They have contended that it is settled law that
confusion to the public or even likelihood of confusion cannot
be automatically assumed in a vacuum where the actual
advertisement and corresponding website does not mislead the
consumer in any way. In absence of any actual or visible use of
a trademarked term within the text of an advertisement, no
question of likelihood of confusion or deception arises. Mere
triggering of an advertisement of a third party cannot per se
give rise to an assumption of confusion in public. Counsels for
Google have also relied on McCarthy on Trademarks and
Unfair Competition to state that a computer user who sees a
search engine results page and clicks on a non-deceptive
advertising link resulting from a trademark keyword purchased
by a competitor is not confused as to the source of affiliation of
any ultimate purchase that is made from that website and after
trial, almost all Courts have found no likelihood of confusion
CS (COMM) 1/2017 Page 35/137
exists. They have placed reliance on the judgement of District
Court of New York in Alzheimer's Disease & Related
Disorders Association vs. Alzheimer's Foundation of America
Inc. 307 F. Supp. 3d 260 (2018), to state that purchase of
competitor's trademarks as keywords alone, without additional
behaviour that confuses consumers is not actionable.
39. Moreover, the relevant class of consumers who access the
internet and, more particularly, use the Google Search Engine to
search for the Plaintiff's alleged marks are likely to be
discerning class of users that is literate or at the very least semi-
literate, having a basic understanding of how to search websites
on the internet, having a basic knowledge of English language,
understand how search results appear, and understand the
difference between normal organic search results and Ads, and
also are aware of the various industry players in the packing and
moving business. Such users are also likely to be familiar with
the websites like www.amazon.in, www.flipkart.com,
www.bing.com, in.search and yahoo.com, all of which includes
results for alternatives to the brand searched in a user's query.
Such users accordingly anticipate that they will encounter ads
CS (COMM) 1/2017 Page 36/137
promoting alternatives to the term they searched, and they are
very much in a position to make well-informed choices. The
likelihood of confusion in respect of such a select class of
consumers is even less likely and is in fact negligible, especially
when Plaintiff is appearing prominently in the organic results
and that the entire right-hand side of the page which displays
the search results on the desktop, features information about the
Plaintiff; as well as in sponsored links. They have stated that in
any case consumers are unlikely to be confused by the
appearance of the advertisement as the advertisement is clearly
marked as 'Ad' and depicts the details of the advertiser and
therefore there is no likelihood of initial interest of confusion.
40. Reliance has been placed on the judgement of District of
Utah and North Carolina respectively of the United States of
America in Jive Commerce LLC vs. Wine Racks Am., Inc
Case No. 1:18-CV-49 TS-BCW and Passport Health LLC vs.
Advance Health System, Inc., Case No. 5:17-CV-187-BO.
They have also placed reliance on the case of Nebo (supra)
wherein it had been observed that the use of a trademark as
keyword does not create the possibility of confusing any
CS (COMM) 1/2017 Page 37/137
products of the claimant with those of the advertiser and it is
merely one of the technical criteria provided by the advertiser
for displaying its ad in the online advertising spaces. The
Supreme Court of South Africa (Court of Appeals) in the
judgements in the cases of Cochrane Steel Products (Pty) Ltd.
vs. M-Systems Group (Pty) Ltd & Anr. (227/2015) [2016]
ZASCA 74 and Esquire Electronics Ltd. vs. Roopanand Bros.,
[1991] R.P.C. 425, had observed that it would be unnatural for
a consumer to get misled by a clearly labelled ad, which clearly
identifies the source. If neither the advertisement nor the
advertiser's website contains any reference to the trademark
owner then consumers ought to conclude that it is not related to
the trademark owner's products or services, causing no
confusion, and this was supported by absence of any evidence
of actual confusion. Reliance is also placed on a judgment of a
Coordinate Bench of this Court in Havells India Ltd. & Anr. vs.
Amritanshu Khaitan & Ors., 2015 SCC OnLine Del 8115, to
contend that advertising forms a part of commercial speech and
it is an essential facet covered by Article 19(1) of the
Constitution of India. Moreover, counsels for Google have
CS (COMM) 1/2017 Page 38/137
stated that comparative advertisement is permissible and in the
interest of public enlightenment and competition. Such use is
permissible under the umbrella of fair use. Any comparison
which is unfavourable to a competitor does not mean that it is
dishonest or detrimental to the mark of the owner.
41. The Counsels for Google have argued that there is no
prima facie basis to establish ingredients of section 29(4) of the
TM Act, as there is no basis to establish that the use of
Plaintiff's alleged trademark as a backend trigger is without due
cause or takes unfair advantage of the Plaintiff or is detrimental
to the distinctive character or repute of the trademark. They
have also argued that a case under section 29(5) of the TM Act
is also not made out, as plaintiff's case is that the advertiser or
Google has used the Plaintiff's alleged trademarks as its trade
name or part of its trade name, business concern or part of the
name, of its business concern dealing in goods and services in
respect of which the plaintiff's alleged trademarks are
registered.
42. It is the case of Google that comparative advertising is
permitted under sections 29(7) and 29(8) assuming that the use
CS (COMM) 1/2017 Page 39/137
of trademark as a keyword is presumed to be "use" under
section 29(6)(d). The trademark laws permit comparative
advertising where a person can lawfully use his competitor's
registered trademark within the advertisement itself to compare
his goods/services to those of the competitors' and offer
consumers with choices to make informed decisions. If the law
permits honest usage of trademarks within the advertisement, it
can be permitted as a back-end, invisible trigger for
advertisements, even more so when the "overall effect" of the
advertisement is neither misleading nor deceptive.
43. Another argument that has been advanced, is that the
plaintiff has failed to make out any case of passing off, in the
absence of establishing any confusion or misrepresentation to
the end user or any harm to the plaintiff's reputation and
goodwill by any advertiser's use of the Google Ads program. In
relation to passing off, reliance has been placed on Vancouver
Community College vs. Vancouver Career College (Burnaby)
Inc. & Ors. 2017 BCCA 41 to state that mere bidding on a
keyword is not sufficient to amount to a component of passing
off and factors like how the advertiser has presented himself
CS (COMM) 1/2017 Page 40/137
and his advertisement is what needs to be considered to test any
misrepresentation. Reliance has also been placed upon Reed
Executive (supra) to state that when the user clicks through the
advertisement and then finds misleading material on the website
of the advertiser and not on the advertisement of a search
engine result page.
44. The Counsels for Google have argued that Google has
not used the plaintiff's trademarks "in course of its trade" or
"in relation to the goods or services in respect of which the
trademark is registered" or "within its advertising" or "in a
manner to have taken unfair advantage of or in a manner
detrimental to alleged distinctive character or repute of the
plaintiff's trademarks" or "in a manner likely to be taken as
being used as a trademark". According to them, a reliance on
keywords at the backend for triggering Ads does not amount to
either "use" of a trademark or "infringing use" or "passing
off", on the part of Google. This proposition, which has also
been accepted by Courts of the European Union in Google
France SARL vs. Louis Vuitton Malletier SA C-236/08 to C-
238/08 (2010). In L'Oreal SA vs. eBay International AG C-
CS (COMM) 1/2017 Page 41/137
324/09 (2010) it was held that the use of a trademark, if any in
relation to the course of their commercial activities, such as
offers for sale, signs corresponding to trademarks by the online
service provider does not amount to use of those signs /
trademarks by the service providers. Reliance has also been
placed on Victor Andrew Wilson vs. Yahoo! UK Ltd. & Anr.
[2008] EWHC 361 (Ch) and Fischerwerke GmbH & Co. vs.
Beijing Baidu Netcom Science Technology Co. Ltd. & Others.,
[2013] Gao-Min-Zhong-Zi No.1620 They have quoted
McCarthy on Trademarks and Unfair Competition to note that
there is no sale of trademarks by the service provider, only sale
of advertising space.
45. The stand taken by Google is that even if it were to be
assumed that the "use" and "infringing use" of trademark on
Google's part, such use by Google is fair and in line with
industry practice and is therefore exempt under section 30(1). It
is their case that several other notable search engine providers
such as Yahoo and Microsoft (Bing) also provide for a similar
keyword advertising service, whereby they permitted use of
registered trademarks not only as keywords but also within the
CS (COMM) 1/2017 Page 42/137
text of the advertisement itself. Many e-commerce providers,
such as FlipKart and Amazon, use registered trademarks in their
backend systems to trigger offers for alternative brands and
products. They have drawn an analogy to Netflix to state that
even it shows alternatives to a particular title searched by a user,
presumably using that information in its backend systems as
well. The TM Act itself permits descriptive use of a trademark
under Section 30(2)(a) or under Section 35; nominative fair use
of a trademark under section 30(1) of the TM Act.
46. It is their case that the Competition Commission of India
in the case of Matrimony.com Ltd. & Ors. vs. Google LLC &
Ors., 2018 CompLR 101 (CCI), observed that the Google's
keyword bidding policy promotes competition and provided
similar consumer benefits and choice as compared to traditional
advertising. They place reliance on the case of Private Career
Training vs. Vancouver Career College (Burnaby) Inc. 2010
BCSC 765, the Canadian Court held that the keyword
advertising is no different than the accepted marketing practice
of a company locating its advertisement close to that of a
competitor's in a traditional media such as Yellow Book and the
CS (COMM) 1/2017 Page 43/137
said practice was not found to be false, deceptive or misleading.
They have submitted that similar views have been taken by
Courts of other jurisdictions such as Spain, South Africa and
Canada, in the cases of Chocolat Lamontagne Inc. vs. Humeur
Groupe-conseil Inc., [2010] Q.J. No. 7172; Cochrane Steel
Products (supra); Google Ireland Ltd., Google Inc. & Google
Spain S.L. vs. Fotoprix, SA, Appeal 151/2016.
47. Another submission made by the Counsels for Google is
that the present suit is bad in law for non-joinder of necessary
parties. It is their case that the issues in the present suit cannot
be decided in the absence of the parties whose use of the
Google Ads program the Plaintiff wants to restrain. It has been
argued that the plaintiff is praying for an in rem decision that
would affect all potential advertisers without making those
advertisers as party to the proceedings. They state that entities
such as Safe Packers Movers Pvt. Ltd., Gati Ltd., DTC Cargo
Packers and Movers Pvt. Ltd., Leo Packers and Movers India
Pvt. Ltd., etc. which have been impugned in the present
proceedings without taking any steps to implead the owners of
CS (COMM) 1/2017 Page 44/137
such websites as parties to the suit and that in their absence the
interim injunction cannot be effectively adjudicated.
48. Mr. Kshitij Parashar learned Counsel who appears for
defendant No.2, Justdial Ltd. has argued that the main objective
of defendant No. 2 is to provide people with immediate access
to fast, reliable and comprehensive information on businesses,
products and services across India and that the database of
defendant No.2 comprises of approximately 6 million business
listings across various cities and towns in India as of June 30,
2011. It has been submitted that defendant No.2 Company
provide two types of listing i.e. Free/Non-Paid listing and Paid
Listing to the business entities who want to register at the
search engines of the defendant No.2. It was also submitted that
many users or business entities register themselves as the
Free/Non-paid Listers and that these Free/Non-paid Listing of
the user or the business entity can be created by any person by
just logging on the website of the of the defendant No.2
Company and thereafter by entering the details of their business
entity or services which they intend to provide. In this regard he
has placed reliance on the screenshots of the website of
CS (COMM) 1/2017 Page 45/137
defendant No.2 reproduced in their written statement. He stated
that the information so entered needs to be validated through a
mobile verification of the person making such an entry and once
the validation is done the entry goes live. Once this is done, the
users can visit and change the company details as per their
requirement. He has stated that the defendant No.2 also
provides an option of "REPORT ABUSE", through which if
any wrong details have been updated for any company the user
or the affected party can comment on it which gets rectified on
a priority basis.
49. He then went onto to explain the Paid listing option
which is available on the website of defendant No.2 where any
prospective user who wishes to avail the services of the
defendant No.2 has to pay a certain amount to defendant No.2.
The process of paid listing has been explained as under:
i. A telemarketing executive of the defendant No.2
would schedule an appointment with the
prospective Advertiser.
ii. Thereafter the prospective Advertiser would be
visited by the Marketing Executive of the
CS (COMM) 1/2017 Page 46/137
defendant No.2, who would then explain to him the
various categories of listing e.g. platinum,
diamond, gold, etc. along with the different
payment options.
iii. Once the mode of payment and the contract
amount is finalised, the prospective Advertiser
would then sign a contract with defendant No.2
after agreeing to the terms and conditions therein.
iv. Only after the contract is finalised and the
formalities completed the information of the said
Advertiser would go live on the website of
defendant No.2.
v. Any customer who calls the defendant No.2 for an
inquiry regarding the services which are also
provided by the said Advertiser, only once a
confirmation is received from the said customer the
defendant No.2 shares the customer's number with
the advertiser.
50. He explained that the basic difference between the
Free/Non-Paid listing and the Paid Listing is that the Paid
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Listing Advertisers would get leads from the defendant No.2
Company on the instance when any customer calls the helpline
number of the defendant No.2 for certain inquiries regarding
any service/goods. That the information retrieval officer (IRO)
after responding to the said inquiry of the customer also
suggests similar services which are also being provided by other
company(s) and once the customer is satisfied and confirms that
his information can be shared, it is then forwarded with the paid
listing advertisers of defendant No.2.
51. It is the case of the defendant No.2 Company, that it
cannot keep a regular watch on the free listing or the paid
listing. Defendant No. 2 Company believes the information
provided by any prospective advertiser to be correct and
genuine. That in case a person is listed as a free lister/paid lister
he can change his information as and when he wants and it is
practically impossible for the defendant No.2 to keep a regular
watch on it. He reiterated the option of "REPORT ABUSE"
wherein if a wrong detail is updated for any company, the user
or the affected party can comment on it, after which it gets
rectified on a priority basis. Mr. Parashar has referred to the
CS (COMM) 1/2017 Page 48/137
Warranty Disclaimer Policy on its website, which clearly states
that the defendant No.2 would not examine the
authenticity/reputation of the advertisers and the same would be
the sole responsibility of the advertiser. He has referred to the
terms and conditions of the contract which specifically states
that defendant No.2 does not have any liability towards the
information which is being provided by the listers and the same
belongs to the listers alone.
52. It is the case of Defendant No.2 that, it has not put any
advertisement on its website infringing the
trademarks/copyright of the plaintiff. It has been argued that the
listing which has been questioned, does not belong to the
plaintiff as it is DRS LOGISTIC and not DRS LOGISTICS. Mr.
Parashar has referred to the screenshots which have been
reproduced in the written statement of defendant No.2. It is the
case of defendant No.2 that it has not infringed upon the
trademark or copyright of the plaintiffs and that it is also not
gaining any monetary benefits from the free listing as the same
have been provided by defendant No.2 for the sake of
convenience to the general public.
CS (COMM) 1/2017 Page 49/137
53. Mr. Lall in his rejoinder arguments has stated that the
plaintiff's grievance is against the defendants' services which
enable third party infringers and counterfeiters to direct internet
traffic towards themselves and receive inquiries and deliver on
packing and moving services by deceiving consumers into
believing that the services are being provided by the Plaintiffs.
He has argued that many users have lost articles and household
goods on account of such deception and the services of the
defendants enable dubious operators to set up fraudulent
accounts with the defendants temporarily, deceive consumers
and then disappear. Had it not been for the services of the
defendants, such parties would have no means of promoting or
advertising their services and perpetrating such fraud. The
services offered by defendant Nos. 1 and 3 include, Google
Adwords, Google Maps and Just Dial, i.e., defendant No.2
enables third parties to provide users fraudulent websites,
fraudulent telephone numbers and fraudulent addresses, due to
which ultimately people have lost their household items and
valuables. In this regard Mr. Lall has referred to affidavits of
Ramesh Agarwal and Gaurav Bakshi, the latter who got
CS (COMM) 1/2017 Page 50/137
confused and suffered huge damages due to such confusion
created by the Defendants. Additionally, he has also referred to
newspaper articles in order to establish this point.
54. Mr. Lall argued that the algorithm developed by Google
permits the mischief that has been complained of by the
plaintiff. According to him, Google developed algorithms that
look for relevance, i.e., it connects the Keywords to the relevant
service provided which in this case "APM" is linked to moving
services. They have argued that these keywords are sold to third
parties by Google on bidding and Google then charges a fee for
such bids and for successful clicks. It is his argument, that it is
correct that keywords are never sold, by them; they are kept
under ownership of Google and leased to the highest bidder.
This he states is the case of Google trading in Trademarks of
third parties.
55. Mr. Lall has argued that there is an admission on behalf
of Google that its Keyword Suggestion Tool provides the
necessary historic information to induce third parties to select
keywords consisting of well-known trademarks. Google admits
that it collects information on the plaintiff and its use of the
CS (COMM) 1/2017 Page 51/137
keyword such as 'Agarwal Packers and Movers' and this data is
then used to induce third parties to select this trade mark as their
keyword and attaches it to their website. In the case when
someone looks for 'Agarwal Packers and Movers', Google is
able to direct that traffic meant for the plaintiff, to the site of
infringing third parties. Mr. Lall, has argued that this is a classic
case of direct infringement and inducement to infringe.
56. He has referred to the statement by defendant No.3 in its
written submission, "Trademark Policy permits use of the
trademarked term in the Ad-Text by resellers, informational
sites and authorized advertisers, if they meet the necessary
requirements, consistent with the applicable law in India",
which does not form part of the Court order dated January 22,
2020 and cannot be an exception now sought to be carved out
by Google. The same is liable to be disregarded. He argued that,
such permission can only be granted by Google which,
according to their own statement, makes a determination
whether the user of the trademark term is a reseller or
authorised agent or not. This he stated was proof that Google
plays an active role in granting keywords to third parties.
CS (COMM) 1/2017 Page 52/137
57. Mr. Lall has countered the submissions made by the
Counsels for Google with respect to Google's review of an
advertisement by stating that such submissions are beyond
pleading and therefore liable to be disregarded. He stated that
this too would go to show that Google plays an active role in
selection of keywords and that Google possesses the capability
to assess and reject mischievous ads and keywords selected by
advertisers, but chooses to ignore them with an incentive for
profiteering.
58. Mr. Lall argued that in the pleadings Google has admitted
that keywords are meta-tags. In the plaint these terms have been
used synonymously by the plaintiff, which according to him,
are admitted in the pleadings. He stated that, the reliance
placed on Veda Advantage (supra) is misplaced as in paragraph
130 it was stated that keywords are "words embedded in
metatags"; and that meta-tags are used in indexing and ranking
of websites, which is exactly what keywords are used for, i.e.,
they are one and the same thing. He argued that it was the
Defendants who failed to distinguish the two binding precedents
of law in People Interactive (supra) and Mattel Inc. (supra).
CS (COMM) 1/2017 Page 53/137
59. Mr. Lall has countered the argument advanced by the
Counsels for Google that use of trademarks as Keywords does
not amount to "use" under the TM Act by stating that when an
entity participates in the Google AdWords Program it licenses
the use of its registered trademark to Google for use as a
keyword. He referred to paragraph 60 of Veda Advantage
(supra) to state that it had been recorded in the said judgment
that, sponsored links were advertisements, which Google's
AdWords program allows advertisers to create, change, and
monitor. They are triggered by keywords privately supplied by
the advertiser to Google. Courts while discussing the law in the
context of the United Kingdom ('UK' for short) and European
Union ('EU' hereinafter) stated that in the European context it
was stated that the keywords used in course of trade in respect
of goods or services would amount to use as a trademark.
However, it was held that the laws in Australia were different
from the laws in the UK and similarly the laws in India are
different and recognise that the use of keywords / meta-tags
constitute use and infringement of a trademark.
CS (COMM) 1/2017 Page 54/137
60. Mr. Lall has argued that the interpretation of the decision
by Google in Reed Executive (supra) is incorrect as the Court
in that case had categorically expressed itself when it in
paragraph 140 stated that, whether the use as a reserved word
can fairly be regarded as use in course of trade or not, on which
the Court expresses no opinion. In paragraph 142 the Court
again restrained itself from expressing opinion and hence there
is no finding at all on the question that the use of keywords does
not equal to use in trade.
61. He argued that reliance placed on Nebo (supra) is
misplaced as the Article 1484 of the Civil Code of the Russian
Federation is very different from the Indian Law. Similarly, the
laws of New Zealand are completely different from Indian
Laws and therefore the decision in the cases of Intercity Group
(NZ) (supra) and NZ Fintech (supra) would not be applicable
in the present case.
62. He stated that section 29(6) is to be read with section
29(7) and indeed is in addition to the definition of "use" under
section 2(2). Admittedly use of a trademark in the keyword by
Google amounts to use "in advertising" as per sections 29(6),
CS (COMM) 1/2017 Page 55/137
29(7) and 29(8) and it is also admitted that a Google
advertisement cannot be triggered without keywords. This
indicates that it is an integral part of "use" in advertising and in
background of the instant case where the question of "use in
advertising" amounting to "use" is concerned, foreign cases
cannot be relied on as the laws in India are very specific when it
comes to "use in advertising" constituting "use" of a
trademark. If a registered trademark is used in a keyword, it
would constitute use of trademark and can be used to ward off
an action for cancellation.
63. The argument, that even if the use is established,
elements of infringement/passing off under the TM Act have
not been established, has been opposed by Mr. Lall by arguing
that there is no requirement of visibility of a trademark to
constitute infringement. Such limitations to infringement are
only figments of imagination of Google and are not supported
by law. A trademark, need not be visible which is apparent
from section 29(9) wherein it is stated that infringement may
occur even by spoken use. So is the case of a keyword. He
argued that the use in any case is not invisible as Google
CS (COMM) 1/2017 Page 56/137
actually makes the plaintiff's trademark visible to its customers/
prospective advertisers by offering it to be selected by third
party advertisers.
64. He submitted that in the case of Mattel Inc.(supra) and
People Interactive (supra) it was held that use of trademark in
meta-tags constituted use and therefore the visibility of a
trademark is not a prerequisite to constitute infringement. Since
it is his case that meta-tags are keywords, the use of keywords
would constitute infringement and in the direct applicability of
aforementioned judgments on the issue, foreign laws should not
be relied upon. He argued that Google has misread section
29(3) of the TM Act which categorically states that where
marks are identical, confusion on part of the public is presumed;
in this case Google admittedly sells and pawns an identical
trademark of the plaintiff and in fact correlates the use of an
identical mark to identical services, by its specially made
algorithms, which amounts to "taking unfair advantage" and is
detrimental to the distinctive character and repute of a mark.
65. Google relied on McCarthy on Trademarks and Unfair
Competition and asserted that a computer user who seeks a
CS (COMM) 1/2017 Page 57/137
search engine results page and clicks on a non-deceptive
advertising link resulting from a trademark keyword purchased
by a competitor is not confused as to the source or affiliation of
any ultimate purchase that is made from that website. Mr. Lall
stated that even if this is taken to be true, would Google ensure
that the advertising is non-deceptive. He contends that Google
has stated that it does not control the content in the advertising.
He argued that this submission of Google is not relevant to the
case as advertisers use a host of techniques to confuse its
consumers and Google intentionally pawns well-known
trademarks to such parties. According to him, as per section
29(7) there is no requirement of confusion, mere use in
advertising amounts to infringement and similarly for the use in
advertising, confusion is not a pre-requisite under section 29(8).
The use of plaintiff's trademark as a keyword is not authorised
by the plaintiff which is a pre-requisite under section 29(7).
Moreover section 29(8) has been violated since the plaintiff's
trademark is being sold as a keyword. Use by Google cannot be
said to be honest use under any circumstances, especially when
Google does not ensure that the overall effect is neither
CS (COMM) 1/2017 Page 58/137
misleading nor deceptive. He also stated that on the basis of the
material placed on record which shows instances of actual
confusion and passing off, the submissions made by Google that
there is no case of passing off, is unacceptable. In contradiction
Google's argument that no case of use of a trademark or
infringement is made out under any part of section 29 of the TM
Act. Mr. Lall stated that the terminology used in Section 29(7)
of TM Act is "material intended to be used....for advertising
goods or services" and keywords are used by Google to trigger
advertisements. It is therefore admittedly a "material" intended
to be used for advertising. The term "within its advertising"
used in the note by Google does not exist in TM Act. It is the
case of the plaintiff that there is no exception to section 29(7)
for fair use; there is no fair use as evidence has been filed by the
plaintiff showing actual confusion on account of mischievous
advertising and that none of the assertions with regard to
statutory exemption under sections 30 and 35 of the TM Act
have been pleaded and there is no evidence that other e-
commerce providers also use keywords in their back-end
programming.
CS (COMM) 1/2017 Page 59/137
66. Google also asserts that discerning class of users have
basic understanding of how to search for websites on the
internet and have basic knowledge of English language and
understand the difference between organic search results and
Ads. Mr. Lall argued that Google is available in a number of
different languages and English is not the primary language of
Google. Even otherwise, majority of the people in India are not
well versed in English and are likely to be confused between
organic results and Ads which are not clearly demarcated. He
stated that Google has not placed any evidence to prove these
submissions and this argument is covered by the judgment of
Baker Hughes Ltd. & Ors. vs. Hiroo Khushlani & Ors. 2004
(29) PTC 153 wherein it was held that the argument of well
informed consumers is not a ground available in defence for an
action of infringement and passing off.
67. Mr. Lall cited the case of Merck & Co. (supra) wherein
the Court held that there is nothing improper with defendant's
purchase of sponsored links to their websites from searches of
keyword "ZOCOR", because the defendants therein actually
sold "ZOCOR" manufactured by plaintiff on their website.
CS (COMM) 1/2017 Page 60/137
According to him, the Court relied upon the Geico case to hold
that Google's sale to advertisers of right to use specific
trademark as keywords to trigger their ads would constitute use
in commerce.
68. Google relies on foreign decisions of Jive Commerce
LLC (supra), Passport Health (supra), Nebo (supra) and
Cochrane Steel Products (supra) to assert that consumers
cannot be misled by a labelled ad. Mr. Lall rebutted this
submission by stating that Google gives no assurances, those
advertisements which use the plaintiff's trademarks as
keywords would have all these features. He pointed out that the
plaint shows many instances where it is impossible to discern to
whom a website belongs to. He stated that in many instances the
keyword triggers the advertisement, which shows a phone
number and the consumer, under the impression that he is
calling the plaintiff, calls on the phone number and gets duped
by the advertiser, i.e., a fraudulent party.
69. He argued that in the Cochrane Steel Products (supra)
the Court found that Google earns revenue through keywords,
that advertisers purchase keywords and that the highest bidder
CS (COMM) 1/2017 Page 61/137
gets the keyword. The Court in that case questioned, whether
the Google advertisement which appears in response to the
search using the keyword does not enable normally informed
and reasonably observant internet users, or enables them only
with difficulty, to ascertain whether the goods or services
referred to in Google advertisement originates from the
proprietor of the trademark or an undertaking economically
connected to it or, which originate from third parties. He stated
that in that case too, the Court cautioned against use of foreign
law and that the ads should be clearly marked different from
organic results and held that use of trademarks as keywords
could only be permitted if there is no confusion. In the case of
Vancouver Community College (supra) the Court held that
keywords can cause confusion.
70. Mr. Lall argued that the case of Google France SARL
(supra), supports the case of the plaintiff, the conclusion arrived
by the Grand Chamber was use of a trademark as keyword does
constitute use in relation to goods or services. Such "use" has
been further held to have the capability of adversely affecting
the function of indicating the origin of the mark. There was also
CS (COMM) 1/2017 Page 62/137
a finding that that even the Internet Service Provider is liable if
the role played by the Internet Service Provider is not neutral
and the moment it acquires knowledge of the unlawful nature of
those data or of that advertiser's activities, it fails to act
expeditiously to remove or to disable access to the data
concerned.
71. He stated that in the case of L'Oreal SA (supra) there
were several findings in favour of the plaintiff, he stated the
said judgment was based on article 14 of the EU Directive
200/31 which stipulates a requirement wherein the intermediary
does not have actual knowledge of the illegal activities and
upon obtaining such knowledge acts expeditiously to remove or
disable access to the information. The Court ultimately found
that the proprietor of a trademark is entitled to prevent an online
marketplace operator from advertising - on the basis of a
keyword which is identical to his trademark and which has been
selected in an internet referencing service by that operator. The
Court also stated that the use of a keyword is also objectionable.
This is especially so where the intermediary plays an active role
as to give it knowledge of, or control over, the data. The Court
CS (COMM) 1/2017 Page 63/137
had held that when an operator played an active role in
promoting the product, the safe harbour provisions would not
apply to such an operator.
72. In case of Victor Andrew Wilson (supra) it was held that
the plaintiff therein was the owner of the "Mr. Spicy" trademark
and attempted to sue third parties and Yahoo for choice of
descriptive words such as "Spicy", "spicy soup", etc. as
keywords. It was on this basis that the Court concluded that
there was no infringement and there could be no objections to
Yahoo soliciting third party use of "Mr. Spicy" as a keyword in
return for payment, if the keyword is going to attach goods and
services that are different from those protected in that case. This
case too Mr. Lall argued is favourable to the plaintiff but
recognises the weakness of such a descriptive mark to be
restricted to goods/services for which it is registered.
73. Mr. Lall went on to argue that Google's argument that the
Google Ads program is pro user choice and permissible is
completely flawed as the same is contrary to law. The DG
report set out in Matrimony.com Ltd. (supra) tells how Google
CS (COMM) 1/2017 Page 64/137
runs its AdWord policy and how it is actively involved in the
selection process of keywords by advertisers.
74. He stated that the case of Private Career Training
(supra) relates to specific advertising by law. The case
concerned the name of particular university leading to the
students getting confused. In that case it was stated that the
sponsored links were displayed along with organic search
results separated by a vertical line and within either a yellow or
blue shaded box. In both the cases the search results are clearly
designated as such or as "sponsored results". Conversely, in the
present case Google has refused to make such a demarcation. In
that case the Court opined that selection of the university had a
high financial cost and personal commitment, hence the
students are expected to exercise a high degree of care, which is
contrary to the present case and that these findings are contrary
to the decision in Baker Hughes (supra).
75. Mr. Lall has submitted that the decision in Chocolat
Lamontagne (supra) is concerned it has been clearly recorded
therein that Google sells keywords which is contrary to their
claims that keywords are never sold or purchased. In this case
CS (COMM) 1/2017 Page 65/137
too Google used a yellow shaded box to identify the sponsored
links. The plaintiff in that case had not been successful in
showing customer confusion on account of defendant's
activities of a fundraising drive and use the of the term
"Alternative to" the plaintiff's brand.
76. He relied on the decision of the Competition Commission
of India in the case of Google India Pvt. Ltd. vs. Addl.
Commissioner of Income Tax, LNINDORD 2017 ITATND
3508, to state that Google reviews keywords. Google has
certified partners who help manage advertisers' AdWords
accounts and that Google monitors user behaviour and the
keywords planner tool suggests the suitability of keywords that
are useful in particular month of the year. He stated that it was
recorded that Google's AdWords program changes
advertisements daily and that Google does not merely sell
advertising space but is actually rendering services.
FINDINGS
77. Having heard the learned counsel for the parties, and
perused the record, the grievance of the plaintiff is when a user
on internet searches for the plaintiff by typing "Agarwal
CS (COMM) 1/2017 Page 66/137
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. This is because
of the AdWord program of the defendant Nos.1 & 3 under
which an advertiser having AdWord account can create, select,
keywords based on which their advertisement shows up as a
sponsored link thereby diverting the traffic from the plaintiff's
website to the advertiser.
78. It is clear from the above that google being a search
engine does give information about the number of searches
made, using any popular keyword, that too in the same filed 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
CS (COMM) 1/2017 Page 67/137
is not disputed by Mr.Sethi and Mr.Kathpalia. So, I proceed on
the basis that the keyword being "Agarwal Packers and
Movers" is also the registered trademark of the plaintiff. The
question which needs to be determined is whether this use of
the mark as a keyword shall amount to infringement of trade
mark and or passing off.
79. The submission of Mr.Sethi was that the use of the
keyword does not amount to "use" under the TM Act,
inasmuch as section 2(2)(b) requires a trademark to be used in a
printed or other visual representation; before "use" under
Section 2(2)(c) can be examined. In other words, a trade mark
used as a keyword which is invisible to the consumer, is not a
use of the trademark. He also stated that Section 2(2)(c) of the
TM Act requires the plaintiff's trademark to be used as a part of
any statement availability, provision or performance of its
services for it to qualify as a trademark "use".
80. To understand the submission, it is necessary to
reproduce the relevant provisions of Sections 2(2)(b) and
2(2)(c) along with Sections 29(6), 29(7), 29(8) and 29(9) of the
TM Act on which reliance was placed by Mr. Lall:
CS (COMM) 1/2017 Page 68/137
"(2) In this Act, unless the context otherwise
requires, any reference-
xxx xxx xxx
(b) to the use of a mark shall be construed as
a reference to the use of printed or other
visual representation of the mark;
(c) to the use of a mark,-
(i) in relation to goods, shall be
construed as a reference to the use of
the mark upon, or in any physical or in
any other relation whatsoever, to such
goods;
(ii) in relation to services, shall be
construed as a reference to the use of
the mark as or as part of any statement
about the availability, provision or
performance of such services;
xxx xxx xxx
29. Infringement of registered trade marks.
xxx xxx xxx
(6) For the purposes of this section, a person
uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging
thereof;
(b) offers or exposes goods for sale,
puts them on the market, or stocks them
for those purposes under the registered
CS (COMM) 1/2017 Page 69/137
trade mark, or offers or supplies
services under the registered trade
mark;
(c) imports or exports goods under the
mark; or
(d) uses the registered trade mark on
business papers or in advertising.
(7) A registered trade mark is infringed by a
person who applies such registered trade
mark to a material intended to be used for
labeling or packaging goods, as a business
paper, or for advertising goods or services,
provided such person, when he applied the
mark, knew or had reason to believe that the
application of the mark was not duly
authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by
any advertising of that trade mark if such
advertising--
(a) takes unfair advantage of and is
contrary to honest practices in
industrial or commercial matters; or
(b) is detrimental to its distinctive
character; or
(c) is against the reputation of the trade
mark.
CS (COMM) 1/2017 Page 70/137
(9) Where the distinctive elements of a
registered trade mark consist of or include
words, the trade mark may be infringed by the
spoken use of those words as well as by their
visual representation and reference in this
section to the use of a mark shall be construed
accordingly."
81. On a reading of the aforesaid provisions it is clear, that
Section 2(2) of TM Act states, that unless the context otherwise
provides the use of the mark shall be construed as a reference to
the use of printed or other visual representation of the mark in
relation to the goods or services, but the reading of Sections
29(6), 29(7) and 29(8) of the TM Act, it is seen that the
legislature has expressly departed from the ordinary
construction of the expression "use" under this Act to include
instances to construe "use" under Section 29 of the Act.
82. Mr.Lall is right in saying that Sections 2(2)(b) and
2(2)(c) have to be read in addition to Section 29(6), 29(7), 29(8)
and 29(9). Having said that a perusal of Section 29(9) makes it
clear that an infringement of a trademark can be by way of
spoken use which is different from printed or visual
CS (COMM) 1/2017 Page 71/137
representations of the mark. That is invisible use of the mark
can also infringe a trademark.
83. This I say in view of the Judgment of this Court in the
case of Hamdard National Foundation & Ors. vs. Hussain
Dalal & Ors., 202 (2013) DLT 291, wherein the Court while
considering the suit for infringement, passing off and
disparagement held that on a reading of Section 29 (9) it is clear
that the said section provides that it is an infringement of the
trademark by way of spoken use of the words which are
contained in the trademark and the visual representation thereof.
So, it follows, what is infringement, is not merely visual
representation of the product in bad light under the provision of
Section 29(9) 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. Furthermore, a Division Bench
of this Court in the case of Kapil Wadhwa & Ors. vs. Samsung
Electronics Co. Ltd. & Ors., 194 (2012) DLT 23 has found
usage of a trademark in the source code i.e., through meta-
tagging even though invisible to the end-user / consumer to be
illegal. Albeit the appellant therein sold imported goods
CS (COMM) 1/2017 Page 72/137
manufactured by the respondent therein although without the
consent of the latter.
84. Having said that, the question is whether the "invisible
use" of a mark, as contended by Mr. Sethi shall not amount to
"use" within meaning of Sections 2(2)(b) and 2(2)(c) of the TM
Act as it is not a case which falls within the meaning of Section
29. This issue is no more res integra, at least in view of the
Judgment in the case of Amway India Enterprises Pvt. Ltd. and
Ors. vs. 1MG Technologies Pvt. Ltd. and Ors., 260 (2019)
DLT 690, wherein a Coordinate Bench of this court while
considering the use of the Mark "Amway" by third party e-
commerce platforms, for promoting their own sales, has held
the use of a mark in meta-tags or in advertising without the
consent of the proprietor as a violation of trademark rights of
the owner. In fact, the Court also held that Section 29 (8) also
makes it clear that if any advertising of a mark takes unfair
advantage of the mark or is detrimental to its distinctive
character even without sale taking place there is an
infringement.
CS (COMM) 1/2017 Page 73/137
85. On similar lines, is the Judgment of the Bombay High
Court in People Interactive (I) Pvt. Ltd. (supra) wherein the
Court observed that the defendant No.1 was using the plaintiff's
proprietary mark shaadi.com and its domain name
www.shaadi.com as part of meta-tags in the first defendant's
website, which was held by the Court to be an attempt to
misappropriate the plaintiff's mark and hijack the internet
traffic from the plaintiff's site by a thoroughly dishonest and
malafide use of plaintiff's mark and name in the meta-tags of
his own rival website. Paragraph 14 of the Judgment is
reproduced as under:
"14. I believe the Plaintiffs have made out not just a
strong, but an overwhelming prima facie case.
Dishonesty is writ large on the actions of the 1st
Defendant. He has used the Plaintiffs' mark
shaadi.com as a suffix to another expression. He has
attempted to misappropriate the Plaintiffs' mark. He
has made false claims regarding the extent and size
of his service. He has, plainly, hijacked Internet
traffic from the Plaintiffs' site by a thoroughly
dishonest and mala fide use of the Plaintiffs' mark
and name in the meta tags of his own rival website.
The distinctive character of the Plaintiffs' mark is
thus diluted and compromised by the actions of the
Defendant. The 1st Defendant's action is nothing but
online piracy. It cannot be permitted to continue."
CS (COMM) 1/2017 Page 74/137
86. Having noted the above Judgments, 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 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), related
to advertising.
87. It is the submission of Mr. Sethi that there is a difference
between the meta-tags and keywords, inasmuch as meta-tags,
which are words inserted in the HTML code of the website;
unlike keywords which are only a component of the AdWord
Program of Google. This submission of Mr.Sethi is denied by
Mr.Lall by contending keywords are commercial meta-tags
used in the AdWord Program of Google on payment of charges
on a pay-per-click basis. The concept of meta-tags and
keywords can be understood in the following manner which I
have culled out from the judgments given by various High
Courts of this country and also pleadings of the defendant Nos.1
and 3 which I reproduce below:
CS (COMM) 1/2017 Page 75/137
Meta-tags Keywords
i. Meta-tags are words i. Keywords are used in the
inserted in the HTML Google AdWords Program.
codes of the website.
[HTML coding is used
to construct a website]
ii. The words used as ii. Only advertisers who have
meta-tags provide data enlisted themselves for the
about the website which AdWords Program can access
is known as meta-data. the keyword selection tool
which is optional. Google
provides a menu of the most
searched queries in the form
of keywords.
iii. These meta-tags are iii. Keywords are invisible and
neither visible to the are provided by the
general public nor does advertisers themselves.
it affect the display
page of the website.
iv. Used as indices in iv. Keywords are used as a back-
organic searches. end trigger not in a TM sense.
v. Meta-tags form a part v. Keywords are neither owned
of the website. by any of the users of the
AdWords Program, nor sold
by Google.
vi. Effect: According to vi. Effect: According to various
relevancy, websites are parameters such as bid
ranked and most amount, choice of keyword,
relevant is displayed on relevancy the Ad which is
top of the organic most relevant is displayed on
results. the top of the sponsored
results.
It must be stated here that the working of the meta-tags
and also the keywords, as contended by Mr. Sethi is governed
CS (COMM) 1/2017 Page 76/137
through the use of algorithms. The use of meta-tags within
codes and keywords with respect to the sponsored search
produces a desired result which is on the basis of Google's
algorithm. According to the Oxford Reference website,
algorithm has been defined as, a "documented series of steps
which leads to the transformation of some data. For example, in
order to calculate the sum of a series of numbers a possible
algorithm would involve repeatedly adding the numbers to be
summed to a running total. Computer programs are a
manifestation of algorithms which allow them to be executed
very quickly". Whereas the Collins online dictionary defines
algorithm as, "a series of mathematical steps, especially in a
computer program, which will give you the answer to a
particular kind of problem or question".
88. It is contended by Mr.Sethi, Google's use of its
advertising / sponsored result algorithm is different from that of
the algorithm involved in producing organic search result
through use of meta-tags. It is the case of Mr. Sethi that it is the
use of Google's algorithm in the AdWord program which
triggers a sponsored result i.e., the advertisements, which is
CS (COMM) 1/2017 Page 77/137
different from the use of meta-tags, which produces Google's
organic result. He stated that the sponsored result is triggered,
based on many parameters, wherein each ad is given a quality
score which is an aggregate of many factors such as relevancy
of ad to search query, landing page quality, number of ad
extensions, past history of the advertiser, geographical
relevance of Ads to the webpage user; which goes to show that
the AdWords Program is not driven by monetary consideration
alone. No doubt, that meta-tags and keywords may be
conceptually different however, both are used to show
relevancy and appear on the top of the search engine result
page, whether in organic or sponsored result. The question now
is whether the use of mark as a keyword, results in diversion of
traffic from the website of the original proprietor to that of the
advertiser, this aspect has not been disputed / contested by
Google, nor it has been argued that the end result from use of
meta-tags and keywords is different; inasmuch as both are
instrumental for a search result (whether organic or sponsored)
to appear on the top of the search engine result page, except that
sponsored links to the advertiser's web page is marked with the
CS (COMM) 1/2017 Page 78/137
symbol denoting which is followed by the URL, displayed
in the following manner: .
89. I must also state that it is Google's policy that it will only
investigate the Ad content and not the keywords, the former
includes the ad text and ad title but not the keywords. In order
to assess the quality score, Google also sees the quality of the
landing page which is primarily the website of the advertiser
which may or may not have / display the infringed trademark.
In other words, 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.
90. It is important to note, 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
CS (COMM) 1/2017 Page 79/137
already been held to be "use" of trademark and as such
infringement. This aspect also highlights the fact that the same
result is sought to be achieved through different means.
91. It may also be necessary for me to refer to the AdWords
Policy of Google. Before I refer to the same, it is also necessary
to mention that Google in their affidavits dated March 16, 2015,
August 13, 2015 and August 03, 2017 has referred to two
documents, viz. privacy policy and agreement of Google with
the advertiser i.e., the AdWords Program Agreement. This
Court may not require to go into the privacy policy and the
agreement Google has with the advertiser as the same may not
have any bearing on the issue which has arisen for
consideration.
92. Mr.Sethi and Mr.Kathpalia have now relied upon
AdWords Trademark Policy which reads as under:
"AdWords Trademark Policy
xxxx xxxx xxxx
If a trademark owner files a complaint with Google about
the use of their trademark in AdWords ads, Google will
investigate and may enforce certain restrictions on the
use of that trademark in AdWords text ads. More help for
trademark owners
There are multiple factors that determine when
trademarks can be used in AdWords text ads. Along with
CS (COMM) 1/2017 Page 80/137
the factors described below, these policies apply only to
trademarked terms where the owner submitted a valid
complaint to Google and requested that the terms be
restricted in Google ad campaigns.
Trademark terms used in ad text
Google will investigate and may restrict the use of a
trademark within ad text. Ads using restricted trademarks
in their ad text may not be allowed to run. This policy
applies worldwide.
Exceptions: Here are some cases when the policy for ad
text doesn't apply in the way described above;
• Ad campaigns targeting Australia, New Zealand, the
United States, Canada, the United Kingdom, or Ireland
may use a trademark in ad text if the ad is in compliance
with our policy on resellers and informational sites.
xxx xxx xxx
• Advertisers can use a trademarked term within ad text if
they are authorized, meaning that the trademark owner
sent Google the necessary form allowing an advertiser's
particular account to use a certain term.
- Authorization policy
A trademark owner (or contact person listed on the
trademark complaint) can provide Google with
authorization to let specific AdWords accounts use the
trademark in ad campaigns. Here are some important
things to know about authorizations:
xxx xxx xxx
o We can either prohibit all use or allow all use of a
particular term by an advertiser. Therefore, we cannot
accept conditional authorization requests that include a
time expiration or limitations on use of the term in
specific contexts.
o The trademark owner may change or rescind
authorization at any time by sending an email to ads-
[email protected]
CS (COMM) 1/2017 Page 81/137
• An ad can use a trademarked term in its text if either of
these conditions is true:
o the ad text uses the term descriptively in its ordinary
meaning rather than in reference to the trademark
o the ad is not in reference to the goods or services
corresponding to the trademarked term
EU and EFTA policy
For ad campaigns targeting the European Union and
EFTA regions, the ad text policy above applies.
Therefore, we do not prevent the selection of trademarks
as keywords in the EU and EFTA. However, in response
to a complaint, we will do a limited investigation as to
whether a keyword (in combination with particular ad
text) is confusing as to the origin of the advertised goods
and services.
- Details of EU and EFTA policy
In response to a complaint, we will do a limited
investigation to see whether the use of a trademarked
term as a keyword in combination with particular ad text
is confusing as to the origin of the advertised goods and
services (such as a keyword and ad that falsely imply
affiliation with the trademark owner). If the combination
of a keyword and ad text is confusing, we will disapprove
the specific ad mentioned in the complaint so that it can't
run.
Under our EU and EFTA policy, the following types of
ads may use a trademark as a keyword, provided that the
combination of the keyword and ad is not confusing (as
described above). The following are examples, and not
an exhaustive list;
• Ads using a trademarked term when that term is being
used in its ordinary meaning rather than in reference to
the trademark
• Ads for competing products or services
• Ads for resale of the trademarked goods or service
CS (COMM) 1/2017 Page 82/137
• Ads for the sale of components, replacement parts, or
compatible products corresponding to a trademark
• Ads for informational sites about a product or service
corresponding to the trademark
- List of affected regions
• Åland • Greece • New Caledonia
• Austria • Guadeloupe • Norway
• Bassas da India • Guernsey • Poland
• Belgium • Hungary • Portugal
• Bouvet Island • Iceland • Reunion
• Bulgaria • Ireland • Romania
• Clipperton Island • Isle of Man • Saint Barthelemy
• Croatia • Italy • Saint Martin
• Cyprus • Jan Mayen • Saint Pierre and
• Czech Republic • Jersey Miquelon
• Denmark • Juan de Nova • Slovakia
• Estonia Island • Slovenia
• Europa Island • Latvia • Spain
• Finland • Liechtenstein • Svalbard
• France • Lithuania • Sweden
• French Guiana • Luxembourg • Switzerland
• French Polynesia • Malta • Tromelin Island
• French Southern • Martinique • United Kingdom
and Antarctic Lands • Mayotte • Wallis and Futuna
• Germany • Monaco
• Gibraltar • Netherlands
• Glorioso Islands
Trademark terms used in keywords
Google will not investigate or restrict the use of
trademark terms in keywords, even if a trademark
complaint is received.
Other uses of trademark terms
The trademark policies described here apply only to the
use of trademarks in Google AdWords text ads.
CS (COMM) 1/2017 Page 83/137
See information about our policy on the use of
trademarks in these areas:
- Ad display URLs
As described in the section above, Google can investigate
and may restrict the use of trademarks in ad text. This
process does not apply to trademarks used in an ad's
display URL (the website address shown in green within
an ad).
Google will not investigate and restrict use of the
trademark in display URLs because the presence of
trademarked term within a URL may not necessarily
constitute trademark use, such as in the case of post-
domain paths or subdomains. Trademark owners can
contact the advertiser directly regarding any concerns
about display URLs. Please understand that Google is
not in a position to be the arbiter of third-party disputes.
Additionally, if the domain name contains or is similar to
a trademark, but is actually owned by the advertiser, the
trademark owner is the appropriate party to handle the
matter, such as through the Uniform Domain Resolution
Process (UDRP).
- Google search results
The trademark policies described here apply only to the
use of trademarks in Google AdWords text ads. These ads
are clearly marked as "Ads" on Google search results
pages and as "Ads by Google" on our Display Network.
Other types of trademark complaints, like trademarks
used in sites that appear in Google search results, are not
covered under our investigation process. For any such
concerns, please see how to contact the site owner
directly.
- Promoted YouTube videos
About the use of trademarks in promoted YouTube videos
xxx xxx xxx"
CS (COMM) 1/2017 Page 84/137
93. I find it necessary to reproduce the list of countries /
territories where the use of the trademark as a keyword would
be investigated by Google along with the countries / territories
where such practice is not followed as per the copy of the
AdWords Policy filed before the Madras High Court in Consim
I and Consim II:
"What Is Google's AdWords and AdSense trademark
policy?
Google recognizes the importance of trademarks. Our
AdWords Terms and Conditions with advertisers
prohibits intellectual property infringement by
advertisers. Advertisers are responsible for the
keywords they choose to generate advertisements and
the text that they choose to use in those advertisements.
Google takes allegations of trademark infringement
very seriously and as a courtesy we investigate matters
raised by trademark owners. Trademarks are
territorial and apply only to certain goods or services.
Therefore, different parties can own the same mark in
different countries or different industries. Accordingly,
in processing complaints, Google will ask the
trademark owner for information regarding where the
mark is valid and for what goods or services. Please
note the following about our complaint process:
• The trademark owner doesn't need to be a
Google AdWords advertiser in order to send a
complaint.
• Any such investigation will only affect ads
served on or by Google.
• Google's trademark policy does not apply to
search results. Our investigations only apply to
sponsored links. For trademark concerns about
websites that appear in Google search results,
CS (COMM) 1/2017 Page 85/137
the trademark owner should contact the site
owner directly.
xxx xxx xxx
• Because Google is not a third-party arbiter, we
encourage trademark owners to resolve their
disputes directly with the advertisers,
particularly because the advertisers may have
similar ads running via other advertising
programs.
AdWords Trademark Policies in Sponsored Links
Below, you can find information on our trademark
complaint procedure across different regions as well
as on our advertiser authorization procedure.
"I see an unauthorized ad using my trademark. What is
Google's trademark policy?
Depending on the regions in which you have trademark
rights, we may investigate the use of trademarks in ad
text only or in ad text and keywords.
• Please note the regions we will investigate ad text only.
We will not disable keywords in response to a
trademark complaint. Furthermore, our investigation
will only affect ads served on or by Google.
Regions in which we investigate use in ad text only
Afghanistan Ghana Palmyra Atoll
Albania Greenland Panama
Algeria Grenada Papua New
American Samoa Guam Guinea
Andorra Guatemala Paraguay
Anguilla Guinea Peru
Antarctica Guinea-Bissau Philippines
Antigua and Barbuda Guyana Pitcairn
Argentina Haiti Islands
Armenia Holy See Puerto Rico
Aruba (Vatican City) Qatar
Azerbaijan Honduras Russia
The Bahamas Howland Island Rwanda
Bahrain India Saint Helena
Baker Island Indonesia Saint Kitts
Bangladesh Iran and Nevis
Barbados Iraq Saint Lucia
Belarus Ireland Saint Vincent
Belize Israel and the
CS (COMM) 1/2017 Page 86/137
Benin Jamaica Grenadines
Bermuda Japan Samoa
Bhutan Jarvis Island San Marino
Bolivia Johnston Atoll São Tomé
Bosnia and Jordan and Príncipe
Herzegovina Kazakhstan Saudi Arabia
Botswana Kenya Senegal
British Indian Kingman Reef Serbia
Ocean Territory Kiribati Seychelles
British Virgin Islands Kuwait Sierra Leone
Brunei Kyrgyzstan Singapore
Burkina Faso Laos Solomon Islands
Burundi Lebanon Somalia
Cambodia Lesotho South Africa
Cameroon Liberia South Georgia and
Canada Libya the South Sandwich
Cape Verde Macedonia (FYROM) Islands
Cayman Islands Madagascar Sri Lanka
Central African Malawi Sudan
Republic Malaysia Suriname
Chad Maldives Swaziland
Chile Mali Syria
Colombia Marshall Islands Tajikistan
Comoros Mauritania Tanzania
Congo Mauritius Thailand
Cook Islands Mexico Timor-Leste
Costa Rica Micronesia Togo
Côte d'Ivoire Midway Islands Tokelau
Croatia Moldova Tonga
Cuba Mongolia Trinidad and
Democratic Republic Montenegro Tobago
of the Congo Montserrat Tunisia
Djibouti Morocco Turkey
Dominica Mozambique Turkmenistan
Dominican Republic Myanmar (Burma) Turks and
Ecuador Namibia Caicos Islands
Egypt Nauru Tuvalu
El Salvador Nepal Uganda
Equatorial Guinea Netherlands Antilles Ukraine
Eritrea Nicaragua United Arab
Ethiopia Niger Emirates
Falkland Islands Nigeria United Kingdom
(Islas Malvinas) Niue United States
Faroe Islands Northern Mariana Uruguay
Fiji Islands Uzbekistan
Gabon Oman Vanuatu
The Gambia Pakistan Venezuela
CS (COMM) 1/2017 Page 87/137
Gaza Strip Palau Vietnam
Georgia Virgin Islands
Wake Islands
West Bank
Western Sahara
Yemen
Zambia
Zimbabwe
o In the U.S., we allow some ads to show with a trademark in
ad text if the ad is from a reseller or from an international site.
However, if our investigation finds that the advertiser is using
the trademark in the ad text in a manner which is competitive,
critical or negative, we will require the advertiser to remove the
trademark and prevent them from using it in similar ad test in
the future. Learn more about our U.S. trademark policy.
o Outside the US. If our investigation finds that the advertiser is
using the trademark in ad text, we will require the advertiser to
remove the trademark and prevent the, from using it in ad text
in the future.
o Google is dedicated to providing relevant advertising to our
users, advertisers and publishers alike. Accordingly, our
trademark policy not to investigate the use of trademarks as
keywords in the regions listed above aims to provide users with
choices relevant to their keywords. At the same time, we
investigate trademark violations in ad text, both as a courtesy to
the trademark owner and to ensure that the ads are clear to
users.
• In certain regions, we may investigate use of trademarks in ad
text, in keywords, or in both ad text and keywords.
Regions in which we investigate use in both ad text and
keywords
Åland Guadeloupe Saint Martin
Ashmore and Guernsey Saint Pierre
Cartier Islands Heard Island and and Miquelon
Australia McDonald Islands Slovakia
Austria Hong Kong Slovenia
Bassas da-India Hungary South Korea
Belgium Iceland Spain
Bouvet Island Isle of Man Svalbard
Brazil Italy Sweden
Bulgaria Jan Mayen Switzerland
China Liechtenstein Wallis
CS (COMM) 1/2017 Page 88/137
Clipperton Island Lithuania and Futuna
Cocos (Keeling) Luxembourg
Islands Macau
Coral Sea Islands Malta
Cyprus Martinique
Czech Republic Mayotte
Denmark Monaco
Estonia Netherlands
Europa Island New Caledonia
Finland New Zealand
France Norfolk Island
French Guiana North Korea
French Polynesia Portugal
Germany Reunion
Gibraltar Romania
Greece
o When we receive a complaint from a trademark owner, our
review is limited to ensuring that the advertisements at issue are
not using a term corresponding to the trademarked term in the
ad text or as a keyword. If they are, we will require the
advertiser to remove the trademarked term from the ad text or
keyword list and will prevent the advertiser from using the
trademarked term in the future. Any such investigation will
only affect ads served on or by Google.
o We do not take any action in situations where an
advertisement is being triggered by non-trademark terms even
though the search query contains a trademarked terms. This
occurrence stems from the fact that google allows advertisers to
use a broad matching system to target their ads. For example,
if an advertiser has selected the keyword "shoes" that
advertiser's ad will appear when a user enters the word
"shoes" as a search query, regardless of other search terms
that may be used. So, the ad would show if the user entered any
of the following search queries: "tennis shoes", "red shoes" or
"Nike shoes." This system eliminates the need for the
advertiser to specify each of the myriad different search query
combinations that are relevant to the ad.
How do I file a trademark complaint?
Trademark owners may submit either a specific or general
trademark complaint. A specific complaint means that we will
investigate a trademark term(s) in specific advertisements only.
The trademark owner is required to provide the exact URLs in
CS (COMM) 1/2017 Page 89/137
question and we will not investigate the trademark in any other
advertisements. A general complaint means that we will
investigate in all relevant advertisements. The trademark
owner does not need to provide the specific URLs in question.
However, if there are specific advertisers that are authorized to
use the trademark(s), the trademark owner is required to
provide the corresponding customer ID(s) or login email(s).
If you have concerns about the use of your trademark in
AdWords ads or keywords showing in a region listed above, file
a trademark complaint. If your complaint concerns use of your
trademark in multiple regions, please send us one complaint
with ownership information for your trademark in these
regions. We'll follow the appropriate procedure for each
regions submitted in your complaint.
I have previously filed a trademark complaint, but now I want
to allow an advertiser use my trademark. What is Google's
trademark authorization policy?
If we have processed a complaint for a trademark advertisers
using the mark in the regions and industry of the trademark
owner will have their keywords and / or ad text disapproved
according to the process outline above.
xxx xxx xxx
........... We are only able to prohibit or allow all use of a
particular term by an advertiser. Trademark owners may
revoke the authorization at any time.
xxx xxx xxx
AdWords Counterfeit Goods Complaint in Sponsored Links'
A Google advertiser is selling counterfeit goods. What is
Google's Counterfeit Goods policy?
Google AdWords prohibits the sale or promotion of counterfeit
goods. Counterfeit goods contain a trademark or logo that is
identical with or substantially indistinguishable from the
trademark or another. Counterfeiters attempt to deceive
consumers into believing the counterfeit is a genuine product of
the brand owner or sell the goods as faux, replicas, imitations
or clones of the original product. Counterfeit goods differ from
CS (COMM) 1/2017 Page 90/137
standard trademark infringement in that counterfeiters attempt
to pass off their goods as the originals instead of merely using a
similar mark in a confusing manner. Counterfeit goods differ
from pirated products or copyright infringement because it is
the trademark that is copied, rather than software, books,
artwork, etc.
We will investigate all reasonable complaints: our actions may
include disapproving or disabling ads and / or terminating
advertisers. Any such investigation and action will only affect
ads served on or by Google.
Please note, that upon request and approval, a complainant's
contact details may be forwarded to the affected advertiser(s).
If you have concerns about the sale of counterfeit goods in
AdWords ads, please file a complaint. Note: this information is
only available in English.
Learn more about the Google AdWords Copyright policy.
xxx xxx xxx"
94. From the aforesaid, it is noted that in Consim I and
Consim II, Google relied upon their policy that they would
investigate any infringement of trademark in the Ad-titles, Ad-
text and also keywords. The investigation with regard to
keywords was only confined to countries listed in paragraph 93
above. As per the Annexure-3 of the affidavit dated March 16,
2015 the change in the AdWords trademark policy was brought
about in the year 2015, wherein Google has changed the policy
to mean that they shall "not investigate or restrict the use
trademark terms in keyword". It appears, the same is for the
reason already stated above under the submissions of Mr.Sethi
CS (COMM) 1/2017 Page 91/137
i.e., the use of trademark as keywords does not imply "use". I
may also state here that as per Google's policy they investigate
use of the trademark as a keyword but i.e., only confined for the
EU. This is in addition to the investigation undertaken for an
infringement of trademark in Ad-title and Ad-text. From the
above, it is clear that the fact that Google is investigating an Ad
where use of trademark as a keyword is being used, there
cannot be any reason why such a procedure is not followed in
India. It appears this stipulation has been incorporated in their
policy with regard to EU countries for the reason that there
might be a chance of deception / confusion in a given Ad which
pops-up on the basis of search query which has also been
chosen as a keyword, which may trigger the advertisement
consisting of the infringed trademark / references to it.
95. It can also be a case where the search query itself is a
trademark which triggers the advertisement consisting of
infringed trademark and / or material which may cause
confusion. For example, a hypothetical advertiser may use the
following hypothetical advertisement:
www.aggarwal.com
Best Packers | Top transporters in India
CS (COMM) 1/2017 Page 92/137
Fastest movers for your transportation,
courier, moving and packing needs. Over 300
branches all over India. Providing services of
domestic shifting, international moving, car
transportation and corporate moving.
A case where use of trademark as a keyword triggering a
sponsored result does not depict a product or services of that Ad
in a pictorial form and the consumer does not have the aid of
reference to the device marks/logo and colour combinations
associated with the mark. The average consumer has to rely
upon the words alone which form the Ad-content i.e., Ad-text,
Ad-title and URL which may not directly represent a trademark,
rather the words comprising of a trademark which may be
strewn with generic words but, on a totality, reading the Ad-
content the average consumer is deceived to form an opinion
that the product or the services reflected in the Ad-content is the
same which he is looking for. If a consumer were to search for
a hypothetical company by the name of "Beetroute Transport"
the search engine result page may return the following
hypothetical sponsored links in seriatim:
A.1. www.beetroute.com
Transport services | Best in India
Awarded best transporters award for the
year 2019. Providing quick and cheap
CS (COMM) 1/2017 Page 93/137
transport services through-out India.
Hire vehicles for transport purposes.
Special deals available. 011-852XXX
A.2. www.beetroot.com
Transport services | Best in India
Awarded best transporters award for the
year 2019. Providing quick and cheap
transport services through-out India.
Hire vehicles for transport purposes.
Special deals available. 011-852XXX
B. www.transportindia.com
Discounted Transport Services | Pan India
Moving made easy by transport India.
Domestic transport, corporate transport,
goods transport and much more.
Contact us through our tollfree number
now. 1800- XXXXX
C. www.quick.bt-transport.com
Transporters | India Goods Carrier
Providing services freight and luggage
transport services. Best transport
services. Beetroute Transport services.
Visit our website for hiring transport
services. Call us and get discount. +91-
9418XXXXXX
It may be seen from the above, that according to
Google's AdWords Policy only ad appearing at 'C' would be
treated as infringing their AdWords Policy. No doubt, it would
also cause confusion in the minds of the average consumer who
is looking for Beetroute Transport. Whereas the average
consumer may differentiate Ad appearing at 'B' to be not what
CS (COMM) 1/2017 Page 94/137
was searched for. However, the Ads appearing at 'A.1' and
'A.2' with its combined use of parts of a mark and its variants
in URL along with Ad-title may cause confusion in the minds
of the average consumer, ride on the original owner's goodwill
and still not be investigated by Google as it would be deemed to
be policy compliant according to them. This advertisement
though not in violation of Google's AdWords Policy may still
cause confusion in the minds of the average consumer.
Needless to say, that it is ultimately the owner of the trademark
whose goodwill is getting tarnished.
96. It has to be noted that in such a scenario the
advertisement in the sponsored result may not feature the
trademark of the plaintiff as a whole which is why the overall
effect of the Ad-content (Ad-title, Ad-text and URL) has to be
taken into consideration, inasmuch as the idea that is sought to
be conveyed, i.e., the advertiser is the plaintiff or somehow
associated with the plaintiff. It is Google's case that it does not
investigate use of a trademarked term in the URL, i.e., Google
restricts its investigation to Ad-text and Ad-title. Whereas it is
trite law that use of trademarks in URLs or deceptively similar
CS (COMM) 1/2017 Page 95/137
terms would amount to passing off [Ref: Satyam Infoway Ltd.
vs. Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145]. This I say
so, because any Ad-content consisting of Ad-title, Ad-text and
URL which is likely to deceive or cause confusion to an
average person with imperfect recollection [Ref: Amritdhara
Pharmacy vs. Satyadeo Gupta, AIR 1963 SC 449], in the
context of India shall constitute infringement of trademark or
passing off. A defence may be taken that the trademark of the
plaintiff does not feature in the said advertisement. This defence
may sound appealing at a first blush however, it can be seen
from such advertisement that using the written part / words of a
trademark an attempt is sought to be made to take advantage of
the trademark owner's goodwill. The judgment of the Supreme
Court in the case of Cadila Health Care Ltd. vs. Cadila
Pharmaceuticals Ltd., (2001) 5 SCC 73, held as under:
"19. With respect, we are unable to agree that the
principle of phonetic similarity has to be jettisoned
when the manner in which the competing words are
written is different and the conclusion so arrived at
is clearly contrary to the binding precedent of this
Court in Amritdhara case [AIR 1963 SC 449] where
the phonetic similarity was applied by judging the
CS (COMM) 1/2017 Page 96/137
two competing marks. Similarly, in Durga Dutt
Sharma case [AIR 1965 SC 980] it was observed
that:
"In an action for infringement, the plaintiff
must, no doubt, make out that the use of the
defendant's mark is likely to deceive, but
where the similarity between the plaintiffs and
the defendant's mark is so close either
visually, phonetically or otherwise and the
court reaches the conclusion that there is an
imitation, no further evidence is required to
establish that the plaintiff's rights are
violated."
20. Lastly, in Dyechem case [(2000) 5 SCC 573] it
was observed in para 54 as under
"54. As to scope of a buyer being deceived, in
a passing-off action, the following principles
have to be borne in mind. Lord Romer, L.J.
has said in Payton & Co. v. Snelling,
Lampard & Co. [(1900) 17 RPC 48] that it is
a misconception to refer to the confusion that
can be created upon an ignorant customer.
The kind of customer that the courts ought to
think of in these cases is the customer who
knows the distinguishing characteristics of the
plaintiff's goods, those characteristics which
distinguish his goods from other goods in the
CS (COMM) 1/2017 Page 97/137
market so far as relates to general
characteristics. If he does not know that, he is
not a customer whose views can properly be
regarded by the Court. (See the cases quoted
in National Sewing Thread & Co. Ltd. v.
James Chadwick & Bros. Ltd. [AIR 1948 Mad
481] which was a passing-off action.) In
Schweppes case [Schweppes Ltd. v. Gibbens,
(1905) 22 RPC 601 (HL)] Lord Halsbury
said, if a person is so careless that he does
not look and does not treat the label fairly but
takes the bottle without sufficient
consideration and without reading what is
written very plainly indeed up the face of the
label, you cannot say he is deceived."
These observations appear to us to be contrary to
the decision of this Court in Amritdhara case [AIR
1963 SC 449] where it was observed that the
products will be purchased by both villagers and
townsfolk, literate as well as illiterate and the
question has to be approached from the point of
view of a man of average intelligence and imperfect
recollection. A trade may relate to goods largely
sold to illiterate or badly educated persons. The
purchaser in India cannot be equated with a
purchaser of goods in England. While we agree that
in trade mark matters, it is necessary to go into the
CS (COMM) 1/2017 Page 98/137
question of comparable strength, the decision on
merits in Dyechem case [(2000) 5 SCC 573] does
not, in our opinion, lay down correct law and we
hold accordingly."
(emphasis supplied)
Then in such a case 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.
It is for this reason, reliance on foreign jurisprudence may be
misplaced as the European Courts have held the average
consumer to be normally informed and reasonably attentive
[Ref: Google France SARL (supra)]. It is unclear that on what
basis has a distinction been drawn by Google between certain
countries with regard to the trademark policies so formulated
and followed. Be that as it may, it is clear from Google's EU
and EFTA policy that Google provides a higher duty of care in
a jurisdiction where large portions of the population are internet
literate. This aspect further fortifies my finding as to why such
a policy should be followed in India. Mr. Lall is right in relying
on the judgment of Baker Hughes Ltd. & Ors. (supra) to state
CS (COMM) 1/2017 Page 99/137
that even sophisticated consumers can be confused and the
affidavit filed by Mr. Gaurav Bakshi dated October 27, 2015
supports the proposition advanced by Mr. Lall.
97. Google has stated that it also factors in the quality of the
landing page which is what the consumer would be directed to
in case if he were to click on the sponsored results.
98. One of the pleas of Mr. Sethi was that the keyword
planner tool is an optional software and keywords provided by
the advertisers may have been provided by the keyword planner
tool or may not be part of the keyword planner tool at all. This
submission of Mr. Sethi has no bearing on the issue that is
being decided by this Court in these applications, though on a
prima facie view, in the eventuality a trademark is used as a
keyword and what is the effect thereof in the context of TM
Act. Suffice to state, if the keyword is not a trademark then
there cannot be a question of infringement or passing off of the
trademark. However, it is a conceded position that an advertiser
can provide a keyword which is not part of the keyword planner
tool only goes to show that in such a case registered trademarks
including well known trademarks should be accorded a higher
CS (COMM) 1/2017 Page 100/137
degree of protection by Google through its policies so as to
ensure that the goodwill of the marks is safeguarded. In a
situation where these safeguards are not in place the trademark
owner must enter the Google AdWords program in order to
protect its own goodwill, which is the case of the plaintiff as
well.
99. Although Mr. Sethi has stated that the keyword planner
tool is an optional software, however, the same is contrary to
the stand taken by Google wherein it has been stated that the
quality score of the advertisement is based on an aggregate of
factors such as relevancy of Ads, keywords, quality of landing
page, etc., it is clear that the advertiser has much to gain from
bidding on trademark as keywords. The advertiser would want
his own Ad to appear on top of the sponsored results list in
order to gain maximum publicity. Even though, the keyword
planner tool may not be mandatory but if not used by an
advertiser, may result in poorer quality score of the Ad thereby
reducing the chances for the Ad to appear in the sponsored
result list. Resultantly, it may be stated that the same though not
mandatory has become essential for an advertiser. It was also
CS (COMM) 1/2017 Page 101/137
the plea of Mr. Sethi that trademarks are even permitted in ad-
text by resellers, informational sites and authorized advertisers
and as such may not constitute an infringement. This plea of
Mr. Sethi is not vehemently opposed by Mr. Lall in his
rejoinder submission while countering the reliance placed by
Mr. Sethi on the Judgment of Merck & Co. (supra) by stating
that the defendant (advertisers) therein being the resellers of the
plaintiff's (Trademark owner's) product can be permitted to use
the trademark being a fair use. In other words, where the use of
trademark as a keyword as fair / bonafide use, is an exception to
infringement and / or passing off.
100. Though Mr. Sethi did argue that Google algorithmically
reviews the advertisements submitted in violation of Google ad
policies such as ads supporting advertisements under the
PCPNDT Act and the same are blocked, but the review does not
remove the trademark infringing ads and the same are only
investigated after complaint under the trademark /
misrepresentation policy, but the same does not answer the
issue raised by Mr. Lall that use of trademark as a keyword
need to be reviewed and acted upon by Google. The
CS (COMM) 1/2017 Page 102/137
advertisement not featuring a trademark and using trademark as
a keyword even if not infringing Google's policies creates
confusion as to the origin of goods and services, the keyword
along with the overall effect of the advertisement, (including
Ad-title, Ad-text and URL) needs to be investigated in terms of
paragraph 96 above.
101. The plea of Mr. Sethi that if the use of trademarks as
keywords were to be considered as use under the TM Act, then
Section 47 of the TM Act would be defeated as it states, non-
use of trademark for five years would open the possibility of
cancellation proceedings; this plea is unmerited. In the case in
hand, the issue pertains to the use of a trademark as keyword by
a third party and not non-use of the trademark by the original
owner. This Court need not go into this issue as the instant suit
pertains to use of trademarks by third parties and not non-use of
the trademark.
102. I must at this stage state that it is a conceded position that
up to 2009, Google in terms of its AdWords Policy as
applicable to India did not allow the trademark as a keyword. It
was only during the hearing of the Consim I before the Madras
CS (COMM) 1/2017 Page 103/137
High Court, did Google come up with a policy that they shall
not investigate the use of trademark as a keyword. But this
aspect demonstrates that it was the thought process of Google
that a trademark cannot be used as a keyword. In fact, it is a
policy which is being followed by Google to the extent that they
shall investigate the use of trademark as a keyword in EU &
EFTA countries and not in India.
103. One of the pleas of Mr. Sethi was that the suit is bad for
non-joinder of necessary parties such as Safe Packers and
Movers, Gati Ltd., DTC Packers and Movers which according
to him are the competitors of the plaintiff in the business. The
plea is unmerited for the simple reason inasmuch as it is not the
case of the plaintiff that the names as suggested by the plaintiff
have in fact used the trademark of the plaintiff as a keyword to
score over the plaintiff and pop-up above the plaintiff in the
Google search result page. In the absence of parties which have
bid for the trademark of the plaintiff and any statement on
record to that effect that the entities so named by Mr. Sethi have
bid upon the trademark of the plaintiff as a keyword, they are
not a necessary party. Hence to that extent, there is no cause of
CS (COMM) 1/2017 Page 104/137
action for the plaintiff against those entities to be made parties
in this suit. Be that as it may, the submission of Mr. Sethi does
suggest that the said entities being competitors of the plaintiff
may bid for a trademark of the plaintiff as a keyword under the
AdWords Program of Google. So, it is not disputed that a
competitor may bid for a trademark of an entity to ensure its ads
pop-up above the entity owning the trademark in the search
results.
104. Regarding the reliance placed by the parties on the case
of Consim I and Consim II, the observations on the issue of
functioning of meta-tags and keywords have been relied upon
by this Court in the paragraphs above; however, it may be stated
that the issue before the Madras High Court was that the
Trademark of the plaintiff / appellant therein was appearing in
the Adtext and Adtitle of the defendants / respondents therein.
The Madras High Court also looked into the generic /
descriptive nature of the words appearing in the Ad-text and
Ad-title, which is not the case here. It is the stand taken by
Google and so submitted by Mr. Sethi that the current Google
policy states that "Google does not allow any third party to put
CS (COMM) 1/2017 Page 105/137
/ publish / refer to a Trademark of an owner in the Adtext /
Adtitle as per its policy". Since this statement has already been
taken on record that the Trademarks of the plaintiff shall not
appear in the Adtext and Adtitle, the factual situation has
departed from what was the issue before the Madras High
Court. I may also state that the appearance of the sponsored
links was different from what it is today, i.e., earlier (at the time
of Consim I and Consim II) the sponsored links appeared on
the search engine results page with a yellow / blue background.
The issue that whether these ads appeared on the top of the
organic search results or on the right-hand side of the organic
search results; Mr. Lall states that the former was the scenario,
whereas the counsels for Google have pointed to the policy as
existing then to state that the sponsored results could have also
appeared on top of the search engine results page. Be that as it
may, the position which exists today is that the sponsored links
appear on top of the organic search results.
105. The Division Bench of Madras High Court in Consim II
while stating that the appellant / plaintiff is entitled for
injunction observed that Google has been adopting double
CS (COMM) 1/2017 Page 106/137
standards as the benefits given to the respondent Nos. 2 - 4
(advertisers) therein were not given to the appellant (Trademark
owner). Even in the instant case, it is unclear as to how exactly
a sponsored link is given the first rank and placed on top of the
sponsored search results, over above the organic search results
i.e., it is unclear whether some components as listed out by Mr.
Sethi being; bid amount, quality of landing page, relevancy of
ads etc. are given more weightage than others. It has also not
been explained by the defendants the functioning of their
current policy (as available online) which also incorporates a
broad search and negative search option [Ref. Paragraph 50
expert witness testimony in judgment of Intercity Group (NZ)
(supra)]. Since, it is Google's proprietary algorithm, which
controls not only the ranking, place of appearance and review of
ads, this issue would have to be looked into at the time of trial.
It is clear from the current Trademark policy of Google that it
can "either prohibit all use or allow all use of a particular term
by an advertiser" and despite such prohibition on use of a
Trademark term in Adtext and Adtitle, there are possibilities of
passing off. In Consim II it had been clearly stated by the
CS (COMM) 1/2017 Page 107/137
Madras High Court that it is clear that the search engine has
control over selection of keywords by an advertiser but the
search engine may not be aware of all the registered trademarks
in various jurisdictions and in respect of various goods and
services. I am in agreement with this observation and state 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.
Especially in light of the Judgment of a Coordinate Bench of
this Court in the case of DRS Logistics (P) Ltd. vs. Rajesh
Agarwal & Ors., 2013 SCC Online Del 1299 wherein the mark
of the plaintiff in paragraph 15 has been declared as a well-
known trademark.
106. While considering the judgments relied upon by the
counsels for Google, I may refer to the judgment of the
Supreme Court in the case of Forasol vs. Oil and Natural Gas
Commission, AIR 1984 SC 241, wherein the Court while
recognizing the high persuasive value of decision of the foreign
Courts cautioned by stating that the rule laid down in those
CS (COMM) 1/2017 Page 108/137
particular cases must be judged in the Indian contextual
background including the prevalent statutes and the legal
procedure and the realities which exist in this country. This
observation becomes relevant in the context of evaluating the
aspect of confusion since in the cases of Google France SARL
(Supra), L'Oreal SA (supra), Google Ireland Ltd. (supra),
Cosmetic Warriors (supra), Intercity Group (NZ) (supra), NZ
Fintech (supra), Private Career Training (supra), Chocolat
Lamontagne (supra), Vancouver Community College (supra)
and Cochrane Steel Products (supra), wherein the average
consumer has been taken to be normally informed and
reasonably attentive or liable to exercise a higher duty of care
while searching on the internet, which as held by this Court
above is not the definition of an average consumer in this
country. Hence reliance on these judgments is misplaced.
107. In so far as the reliance placed by Mr. Sethi on the
judgment of the Australian Court in the case of Veda
Advantage (supra) is concerned, he contended that keyword
meta-tags are trademarked words embedded in the source code
of a website by the creator, unlike the keywords used by Google
CS (COMM) 1/2017 Page 109/137
in the AdWords Program, meta-tags are not entirely invisible.
They can be located by someone who knows what to look for,
whereas trademarked as keywords are invisible to the
consumer; and they are not used as a trademark and their
invisible use shall not amount to infringement, nor does a
keyword denote connection in trade between the advertiser and
the trademark owner. Keywords are also not being used to
distinguish the service of one trader from another. Suffice to
state, I have already in paragraph 88 above held that the effect
of meta-tags and keywords is the same. I have also held above
that even invisible use of a trademark would constitute "use"
within the meaning of the provisions of the TM Act. That part,
I have also held that the result of use of meta-tags and keywords
is not different as both are instrumental for a search result to
appear on the top of the search engine result page except that
the sponsored links to the advertisers' web page is marked with
the symbol denoting "Ad", which is followed by the URL. So,
the keyword even assuming is invisible, the effect it has for
advertising is that the traffic of the website of the trademark
owner is diverted to that of the advertiser which shall have the
CS (COMM) 1/2017 Page 110/137
effect of passing off of the goods and services of the trademark
owner as that of the advertiser.
108. Mr. Lall is right in stating that the keywords embedded
in meta-tags are used in indexing of website, which is what
keywords of Google AdWords Program are used for and in any
case, Mr. Sethi has not been able to distinguish the precedents
in the case of People Interactive (supra) and Mattel (supra).
Even on the facts, this case can be differentiated since in that
case the advertiser was providing services which were ancillary
to the trademark owner. In other words, the trademark owner
was providing financial services related to credit rating whereas
the advertiser conducted a business assisting the consumers
with poor credit rating and rectifying errors in the credit reports
given by the proprietor of the trademark. Furthermore, it was
stated that an ordinary and reasonable consumer in the context
of Australia would not get confused between the organic search
result and the sponsored search result, which appears within a
yellow ad box. Even in that case the Court has stated in
paragraphs 253 and 263 that certain words in the Adtext
including the single word trademark of the owner which was
CS (COMM) 1/2017 Page 111/137
visible, suffixed with generic words was likely to cause
confusion. The definition of an average consumer in India has
been well settled. For the reasons above, this judgment has no
applicability in the facts of this case.
109. In so far as the reliance placed by Mr. Sethi in the case of
Reed Executive (supra) making similar submissions that
invisible use may not be use at all as no meaning is being
conveyed to anyone and it is only when the user clicks through
the advertisement, he finds misleading material on web page of
the advertiser and not on advertisement appearing on search
engine results page and the same may not be attributable to
Google, is concerned, I have already held, that even invisible
use of trademark more specifically would constitute a use and in
fact the precedents being available in the country in the form of
People Interactive (supra), Mattel (supra), Amway India
(supra) and Christian Louboutin SAS vs. Nakul Bajaj & Ors.,
(2018) 253 DLT 728 the reliance place on the judgment of Reed
Executive (supra) is misplaced. The issue is well settled. The
question is not when the user clicks through the advertisement,
he finds misleading material on web page of advertiser, but
CS (COMM) 1/2017 Page 112/137
whether by the use of invisible use of a trademark, the
advertisement of the advertiser scores a march over the organic
search result, where the website of the trademark owner
appears. I may state here, Mr. Lall by drawing my attention to
paragraph 140 of the judgement has stated that the Court has
clearly stated that use as a reserved word can be regarded as use
in course of trade, the Court has not expressed its opinion. In
any case, the law in this regard even in that jurisdiction has
changed since the judgments of the European Court of Justice in
the cases of Google France SARL (supra), L'Oreal SA (supra)
and the judgment in the case of Interflora Inc. vs. Marks &
Spencer, [2015] F.S.R. 10. Needless to state that this case can
be differentiated on the ground of the average consumer being
normally informed and reasonably attentive. Be that as it may,
the laws prevailing in the UK are different and the issue in the
present case has to be judged in the context of Indian Laws and
precedents [Ref: Forasol (supra)]
110. While relying on the judgment of Merck & Co. (supra),
Mr. Sethi stated that the internal use of trademark does not
constitute as trademark use. The United States District Court
CS (COMM) 1/2017 Page 113/137
held that the advertiser bidding on the trademark as a keyword,
was selling the trademarked drug "ZOCOR" for cholesterol
medication which was manufactured by the Canadian affiliate
of the trademark owner and the same does not amount to
infringement in context of the laws prevalent in the United
States. Based on the judgments delivered by the Courts in India,
this reliance is totally misplaced. I must state here that Mr. Lall
has fairly conceded, the fair use of trademark may not constitute
infringement inasmuch as there is nothing wrong in the
purchase of trademark as keyword where the advertisers sold
medicines manufactured by the trademark owner.
111. In Victor Andrew Wilson (supra), on which reliance has
been placed by Mr. Sethi to contend that the use of trademark as
a back-end trigger does not amount to infringement and passing
off which requires some commercial activity such as offers for
sale, signs, corresponding to trademarks by the online service
provider. This judgment may not be applicable to the facts of
this case as in that case, the trademark was "Mr. Spicy" and the
owner attempted to sue third-party and Yahoo for use of
descriptive words such as "spicy", "spicy soup", etc., as
CS (COMM) 1/2017 Page 114/137
keywords. Firstly, respondent therein was Yahoo and not
Google. Even the policy that is being followed by Yahoo has
not been placed on record. That apart, it was held that there is
no infringement if the keyword is going to be attached to goods
and services which are different from those protected in that
case. In any case, the weakness of such a descriptive mark was
held to be restricted to goods and services for which it is
registered.
112. Insofar as the reliance placed on the judgments by Mr.
Sethi of the Canadian Courts do not aid the case of Google.
Private Career Training (supra) has been relied on by Mr.
Sethi to contend that keyword advertising is not different from
accepted market practice of a company locating its
advertisement close to a competitor's in a traditional advertising
space such as yellow book and such practice is not misleading.
Suffice to state the judgment is distinguishable on facts
inasmuch as the Court held that the students who are concerned
with the Ads had to exercise higher duty of care while
distinguishing ads from the organic search result and secondly
the sponsored result which was appearing in a yellow shaded
CS (COMM) 1/2017 Page 115/137
box was sufficient to distinguish the website of the parties and
the parties before the Court were the advertiser / owner and not
Google or YAHOO or any search engine. In Chocolat
Lamontagne (supra), the submission of Mr. Sethi was,
keyword advertising is not different from accepted market
practice. In this case too the search results appearing which
were in French in the sponsored results were clearly
distinguishable as the hyperlinks listed under the heading
sponsored links were preceded by the phrase 'Alternative to
Lamontagne chocolate and other products' Similar is the
position in so far as the judgment relied upon by Mr. Sethi in
the case of Vancouver Community College (supra). The
Courts of Canada have also proceeded in terms of Canadian
laws on the subject and also on a premise that the average
consumer is internet literate and can differentiate sponsored
results from organic results. The Court in this case however,
made certain findings which may be noted such as in paragraph
55, the aspect of confusion is to be determined on the search
engine result page and the Court came to a conclusion in that
case, the components of the tort of passing off were met.
CS (COMM) 1/2017 Page 116/137
Therefore, one cannot overlook the fact that there is a
possibility of confusion even in cases where the consumers are
aware of the functioning of search engines. These judgments do
not act as a bulwark for the case as presented by the counsels
for Google.
113. Reliance placed by Mr. Sethi on the Judgement of
Google France SARL (supra) to contend that the use of
trademark as back-end trigger does not amount to infringement
and passing off. According to him, Google has not used their
mark in course of its trade or in relation to goods or services in
respect of which the trademark is registered or within its
advertising or in a manner to have taken unfair advantage or in
a manner detrimental to distinctive character or repute of
plaintiff's trademarks or in a manner likely to be taken as being
used as a trademark. In other words, Mr. Sethi agrees that the
use of trademark as a keyword held to be use, but only where
the advertisement does not enable an average internet user or
enables the user with great difficulty to ascertain the origin of
goods or services referred therein.
CS (COMM) 1/2017 Page 117/137
114. I am unable to agree with the submission of Mr. Sethi as
the judgment on which reliance has been placed by Mr. Sethi is
from a European Court. The observation of the Court has to be
read in the context of a purchaser in Europe unlike a purchaser
in India. It is a settled law that an average consumer in India is
of average intelligence and imperfect recollection [Ref.
Amritdhara Pharmacy (supra)]
115. In so far as the judgment in the case of L'Oreal SA
(supra) and Google Ireland Ltd. (supra) is concerned, similar
would be my conclusion as concluded by me in the case of
Google France SARL (supra), inasmuch as the issue before the
European Court of Justice was to an extent similar to that in the
present case, wherein the trademark owner had agitated that
third parties had been using the trademark of the owner as the
keyword in order to feature prominently on the search engine
results page. However, the Court had examined this issue in the
context of the average consumer in Europe and the European
Laws / Directives wherein in the Court primarily examined the
adverse impact of use of such mark on functions of a trademark.
However, there was a caveat that even in such a scenario the
CS (COMM) 1/2017 Page 118/137
Court had remarked in paragraph 83 that whether the function
of a trademark is adversely affected would depend on a
particular manner in which the Ad is presented and such
presentation does not enable the average consumer therein to
ascertain the origin of goods and services. The Court further
went on to note that in cases where the Ad does not suggest an
economic link but remains vague to the origin of goods and
services and the internet consumer is unable to determine on the
basis of the advertising link and commercial message attached
thereto whether the advertiser is a third party with regard to the
proprietor of the trademark or not, or economically related to it,
or is a third-party, the Court held that the conclusion must be
that there is an adverse effect on the function of the trademark.
This question, the European Court of Justice left open for the
National Courts to assess on a case-by-case basis and even the
role played by the service provider whether neutral or not is to
be assessed by the National Courts. To this extent I am in
agreement with the findings in Google France SARL (supra).
The question of neutrality of the service provider in this case
being Google would be subject matter of trial. A Coordinate
CS (COMM) 1/2017 Page 119/137
Bench of this Court in Christian Louboutin (supra), while
answering the questions related to meta-tagging vis-à-vis
intermediaries held as under:
"82. In the world of e-commerce, IP owners face
challenging times. This is because sellers of
counterfeit or infringing products seek shelter
behind the platform's legitimacy, like in the case of
Darveys com. Darveys com is involved in the
promotion and sale of luxury products. The seller is
located on a foreign shore. It is not even clear as to
whether the seller is in fact selling a genuine
product. As stated above, Darveys com promotes the
products to its members who sign up on Darveys
com. Without becoming a member, one cannot effect
a purchase on Darveys com. In such cases giving
exemptions of Section 79 would in fact amount to
legalizing the infringing activity. The seller is not
known, the person from whom the seller purchases
the goods is not known. It is also not known if the
product is genuine, though Darveys com represents
to be same to be genuine. In view of these factors,
Darveys com cannot be termed as an intermediary
that is entitled to protection under Section 79 of the
IT Act. The use of the mark, Christian Louboutin,
the name, the photograph of the founder, without the
permission of the Plaintiff, and without ensuring
CS (COMM) 1/2017 Page 120/137
that the products which are sold are in fact genuine,
would constitute violation of Plaintiff's rights. The
Defendant has relied on a judgement of a Ld. Single
Judge in Christian Louboutin v. Abubacker, 250
(2018) DLT 475 the court was considering
protection for the red sole trademark. In the said
judgement the court held that the red sole mark is
not distinctive as there can be no monopoly on the
colour red. The present suit does not relate to the
red sole mark in isolation but the use of the plaintiffs
marks, name of its name of its founder, use of the
words constituting the mark in various ways
including on the website, images, packaging
material, invoice etc. by the Defendant which is an
e-commerce platform. Thus the said judgement does
not help the Defendant in the present case.
83. Meta-tagging: The plaintiff has relied upon a
judgement in respect of meta-tags. A single judge of
the Delhi High Court has held that use of meta-tags
is illegal as it enables the Defendant to ride on the
reputation of the Plaintiff. Meta tags are links which
are provided using keywords. If a trade name is
used as a keyword and a link is provided, the
website comes up whenever a customer searches for
the said trade mark. The trade mark used in the
code as a keyword is invisible to the end-user or
customer. Such use, though invisible to the
CS (COMM) 1/2017 Page 121/137
customer, has been held to be illegal in the case of
Kapil Wadhwa v. Samsung Electronics Co. Ltd., 194
(2012) DLT 23. The Plaintiff claims that when a web
user enters the Plaintiffs mark in a search engine
such as Google, Darveys com website is amongst
the search results and an analysis of the code shows
that the marks of the Plaintiff are used as meta-
keyword-tags, with a view to increasing the hits
which the Defendant's website obtains from search
engines like Google.
84. The trademark owner loses its huge customer
base especially in the case of luxury products. If the
products turn out to be counterfeit or not up to the
mark, then it is the trademark owner's brand equity
which is diluted. The seller himself does not suffer.
Such immunity is beyond what is contemplated to
intermediaries under Section 79 of the IT Act. While
Section 79 of the IT Act is to protect genuine
intermediaries, it cannot be abused by extending
such protection to those persons who are not
intermediaries and are active participants in the
unlawful act. Moreover, if the sellers themselves are
located on foreign shores and the trade mark owner
cannot exercise any remedy against the said seller
who is selling counterfeits on the e-commerce
platform, then the trade mark owner cannot be left
remediless."
CS (COMM) 1/2017 Page 122/137
(emphasis supplied)
116. Having noted the aforesaid position of law and it is the
case of Google as contended by Mr. Sethi that Google is an
intermediary is unmerited, 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 under
Section 79 of the IT Act as it has been held in the above
judgment as amounting to legalising the infringing activity.
That apart, the conclusion of the Coordinate Bench in
paragraphs of 83 and 84 shall apply on all fours to the facts of
this case. In view of this conclusion, the plea of Mr. Sethi that
Google is not an arbiter of third party disputes and shall not
investigate complaints of violation of trademark infringement is
unmerited, hence rejected.
117. The reliance placed by Mr. Sethi in Cosmetic Warriors
(supra) to contend that use of third-party trademarks as
keyword does not constitute trademark violation is also not
appealing. This judgment seems to be an after effect of the
CS (COMM) 1/2017 Page 123/137
decisions in Google France SARL (supra) and L'Oreal SA
(supra) since I have dealt with the issue in the above paragraphs
the reliance on European Law would not help the case of
Google. In any case, the matter therein pertained to Amazon
and its advertising policies which is not the case here. The
Court had considered three scenarios for a possibility of
confusion, out of which only the first and second scenarios are
of interest. The first and second scenario pertained to
sponsored links on intermediary websites wherein a consumer
would be able to see the trademark in the advertisement and in
the other where the consumer cannot see the trademark term in
the advertisement. In the case of the former it was held to be
detrimental to the function of a trademark and in the latter, it
was stated that the consumers would be aware of appearances of
sponsored links. Whether this awareness exists in this country is
unclear and would be subject to Trial especially so when there
are chances of the advertisements of the trademark owner often
appearing in the sponsored results with blurred lines of
distinction between sponsored results and organic results in a
case where an average Indian consumer has specifically typed a
CS (COMM) 1/2017 Page 124/137
trademarked term. The third scenario concerned the layout of
Amazon website and the appearances of the trademark therein
that too when there was no overt statement that Amazon did not
sell the products of the trademark owner, which is not a
question for consideration before this Court.
118. In Intercity Group (NZ) (supra) and NZ Fintech
(supra), the same were relied upon by Mr. Sethi to contend that
trademark as keyword are not seen or known or understood by a
consumer and the same is not be taken as anything let alone
amounting to use of trademark. The said judgment is in the
context of laws of New Zealand which are different from those
in India and Mr. Lall is right in contending that Section 89 of
the New Zealand Act does not include advertisement as
infringement, which position is otherwise in this country as I
have referred to the provisions of Section 29 (6) and Section 29
(8) of the TM Act. Even in Intercity Group (NZ) (supra), the
average consumer has been taken to be well-informed and
reasonably observant but even so the Court has observed that
there may exist a possibility of confusion as the case before the
New Zealand Court was that the advertiser had bid on the
CS (COMM) 1/2017 Page 125/137
trademark as keyword being InterCity, which appeared on the
search engine results page along with the website of the
advertiser. In NZ Fintech (supra), the plaintiff therein had
alleged that the defendant therein was using its mark
"MOOLA" as a keyword. Whether such use resulted in
sufficient number of consumers perceiving such use by the
defendant therein to be a use of the trademark, was to be a
matter of trial. These judgments therefore are distinguishable
on facts. However, the New Zealand Court too in both the
aforementioned judgments had interpretated their own law to
mean that the use of trademark as a keyword, amounts to use in
the course of trade. The question which further needs to be
tried through the trial is whether there is a difference in the
search engine results page when searching with capital letters,
spaces, symbols such as hyphens, etc. and the difference
thereof.
119. In so far as the reliance placed in Cochrane Steel
Products (supra) is concerned, Mr. Sethi contended that it is
unnatural for a consumer to get mislead by a clearly labelled Ad
which identifies the source. If neither the advertisement nor the
CS (COMM) 1/2017 Page 126/137
advertisers' website contains any reference to the trademark
owners products or services, then no confusion exists nor there
is any evidence that any actual confusion existed and as per
common market practice, advertisements are placed close to the
competitors' advertisements in a yellow book. The trademark
of the appellant therein was "CLEARVU" which was itself an
unregistered mark. Wherein it was also held by the Court that
the organic search result were clearly distinguishable from that
of the sponsored search result. The said judgment has no
applicability as the judgment has held that the average
consumer in South Africa to be a person who is normally
informed and reasonably observant internet user, which may not
be the position in the Indian context. The case of Esquire
Electronics Ltd. (supra) is distinguishable from the case at
hand as the issue to be decided by the South African Court
pertained to trading in prerecorded video tapes upon which a
registered trademark was recorded through magnetic signals.
Needless to state, that the facts at hand are very different to the
one sought to be relied upon by the counsels for Google even so
CS (COMM) 1/2017 Page 127/137
the judgment has to be read in the context of the South African
Laws.
120. Reliance has been placed in Nebo (supra) by Mr. Sethi to
contend that the keywords do not form part of advertisement
cannot be used for identifying a particular ad as the same
keyword may be used for multiple advertisements. Users do
not know the basis of which keyword, a particular
advertisement is shown or which keyword co-relates with the
said advertisement. In other words, keywords do not create a
possibility of confusion of any products of owner with that of
the advertisement. I am not in agreement with the submission
made by Mr. Sethi more so with regard to my conclusions
above and in the context of law laid down by the Indian Courts
of which a reference has been given above. Even on facts this
case is distinguishable as the search engine involved in the said
case was Yandex and the policies governing the advertisements
through keywords is different from that of Google in the present
case. Be that as it may, the statutory law governing trademark
law is very different in Russia as compared to that of the Indian
Laws. As I have already concluded above, that use of
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trademarks as keywords amounts to use in the course of trade in
terms of the TM Act and the judgments of the Indian Courts in
this regard, this case provides no succour to the case of the
counsels for Google.
121. By relying upon the judgment in the case of Alzheimer's
Disease and Related Disorders Association (supra) the
contention of Mr. Sethi primarily is that trademark as keywords
alone without additional behavior that confuses consumers is
not actionable. In Jive Commerce LLC (supra), consumers are
unlikely to be confused as the sponsored links clearly marked as
Ad and the owner's Ad being directly below the sponsored
search result in the organic search result there cannot be any
confusion. These judgements of the Courts of the United States
of America do not avail the case of Google, since in the case of
Alzheimer's Disease and Related Disorders Association
(supra) the Court therein had opined that the mark in question
was weak and since the consumers were searching for a generic
term, therefore the likelihood of confusion was less. Similar
position exits in the case of Jive Commerce LLC (supra)
wherein the mark of the plaintiff / owner was not registered, it
CS (COMM) 1/2017 Page 129/137
remained unclear under which class the said mark therein was
to be categorised even in which case the Court came to a
conclusion that the mark was either descriptive or suggestive
which is not the case here. Similar is the position in Passport
Health (supra) where the mark of the trademark owner being
"PASSPORT HEALTH" was considered to be weak and the
Court had observed that the sponsored results could easily be
differentiated from the organic results as they were appearing
on the right-hand side titled with the words "related searches",
this position no longer exits as of now.
122. Mr. Sethi has also placed reliance on the judgment in the
case of Matrimony.com Ltd. (supra) of Competition
Commission of India to contend that Google keyword bidding
process promotes competition and provides some benefits and
choice as compared to traditional advertising. To this
submission, Mr. Sethi has accepted the fact that the trademark
can be used as a keyword to divert the traffic from the website
of the owner to that of the advertiser to encourage competition
this according to this Court may in a given case amount to
infringement and / or passing off.
CS (COMM) 1/2017 Page 130/137
123. Mr. Sethi has relied upon Havells India Ltd. (supra) to
contend that advertisement is a part of free speech and right to
carry any business. Competitors use of trademark is protected
within the ad-text of a competitor provided the competitive
advertisement under Section 29 (6) and 29 (8) of TM Act are
complied with. There cannot be any dispute, that the
advertisement is part of free speech, but surely that free speech
cannot be at the cost of the trademark of an owner which
amounts to a misleading advertisement.
124. Fischerwerke GmbH & Co. (supra) is on similar
proposition that use of third-party trademarks does not
constitute trademark infringement. Reliance on this case is
misplaced due to the reason that firstly, that the search engine
involved in that case was Baidu and not Google and; secondly
the advertising policy of the said search engine has not been
produced before this Court and even the law related to
trademarks in that case is different to the case at hand. As per
the stand of Google that up to 2013, even they did not allow the
trademarks to be used as keywords in China, whether this
CS (COMM) 1/2017 Page 131/137
position changed after the judgment in the relied upon case is
unclear.
125. In so far as the submission of Mr. Sethi that Google
investigates the Ads which under its counterfeit /
misrepresentation policy is concerned, the same does not
answer the use of trademark as keyword by an advertiser as
infringement of trademark. Even if Google under the
misrepresentation policy investigates an infringing Ad but only
after a complaint, there is no doubt that the usage of trademark
as keyword results in diversion of the traffic from the website of
the trademark owner to the webpage of the advertiser which
causes prejudice to the owner of the trademark in terms of
goodwill and credibility with respect to the services and should
be investigated by Google. In a way the advertiser through
oblique motives is cashing upon the goodwill of the trademark
owner for his own benefit and through which process Google is
earning revenue and as such is equally liable for the omissions
and commissions of the advertiser. It also follows that when the
use of trademark as a keyword constitutes infringement /
passing off which amounts to violation of rights accrued in
CS (COMM) 1/2017 Page 132/137
favour of the proprietor under the provisions of the TM Act
then on the same analogy that Google investigates
advertisements which are prohibited under law, Google should
also investigate the advertisements in this case as well.
126. This Court also at this stage cannot overlook the affidavit
dated October 27, 2015 filed by Gaurav Bakshi wherein he has
stated as under:
"2. That I wished to avail the services of old
and reputed Agarwal Packers and Movers and
searched for the same in google search engine
which displayed 03/04 Agarwal Packers and
Movers companies and I picked up one and
contacted them over the given number.
3. That one Mr. Amit and Mr. Vinod was
contacted who represented themselves as
Agarwal Packers and Movers company that
has an India-wide presence by the name
Aggarwal Goods Movers and Packers which is
one and the same i.e. Agarwal Packers and
Movers Ltd. to which I was searching.
4. That I am persuaded by them to believe
that they are the same old and reputed Agarwal
Packers and Movers Ltd. Believing their
statement and their website display in google
Search engine, entrusted the task of shifting my
CS (COMM) 1/2017 Page 133/137
personal household belongings and a car from
Noida to Panjim Goa against payment of
freight charges of Rs. 74, 294/- vide Goods
Consignment Note No. 1306 dated 03/08/2015.
5. That I received my household belongings
at the destination on 16/08/2015 in deplorable
condition as most of the furniture items were
broken and a large number of other items were
heavily damaged. The car was received on
18/08/2015 with dents and scratches all over
the body.
6. That soon after conveying the receipt of
goods and car in above conditionI encountered
with a horrible experience of harassment,
abusive behavior, criminal threats with dire
consequences to me and to my family if insisted
upon for repairs of damaged goods and if
pursued the case further.
7. That I realised that I had not picked up
genuine Agarwal Packers and Movers and was
cheated by above fake mover company who
falsely projected themselves as reputed
Agarwal Packers and Movers Ltd and
deliberately used similar and confusingly
identical name by inserting a very small almost
indecipherable word "goods" in between
Agarwal Packers and Movers to cheat me and
CS (COMM) 1/2017 Page 134/137
the public at large and such fake companies
are displayed in google plate form[sic] along
with genuine Agarwal Packers and Movers Ltd
by which innocent people are misguided and
have to face tough time in finding real Agarwal
Movers on google as many Agarwals appears
on google map."
The aforesaid does prima facie reveal that with usage of
trademark of plaintiff as a keyword the traffic from the webpage
of the plaintiff is being diverted to the webpage of the
competitor / advertiser which means that a normal consumer
who on typing the trademark of plaintiff as a search query was
led to a webpage which had caused confusion regarding the
origin of the webpage, whether belonging to the plaintiff or not.
In cases of intellectual property, the Courts must also be
mindful of the fact that it is ultimately the public at large which
gets cheated and feels the brunt of spurious goods and services
in the market [Ref: Hindustan Pencils (P) Ltd. vs. India
Stationery Products Co. & Ors., AIR 1990 Delhi 19].
127. I must state 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
CS (COMM) 1/2017 Page 135/137
like Packers or Movers individually. Having said that in view
of my above discussion, the applications are liable to be
allowed, subject to final determination of the suit in the
following manner:
(I) The defendant Nos.1 and 3 shall 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.
(II) The defendant Nos.1 and 3 shall also investigate
and review the overall effect of an Ad to ascertain
that the same is not infringing / passing off the
trademark of the plaintiff.
(III) If it is found that the usage of trademark(s) and its
variations as keywords and / or overall effect of the
Ad has the effect of infringing / passing off the
trademark of the plaintiff then the defendant Nos.1
and 3 shall restrain the advertiser from using the
same and remove / block such advertisements.
CS (COMM) 1/2017 Page 136/137
128. I must also state here that the case of defendant No.2,
who has been made as a party, is as noted in paragraphs 48 to
52 above, it is clear that defendant No.2 is not using the
mechanism of providing trademarks as keyword for triggering
the ads. This stand has been taken on record and the defendant
No.2 shall remain bound by their statement.
129. The above directions are subject to the final
determination of the suit. The aforesaid conclusion of mine is
only a prima facie conclusion and nothing stated above shall be
construed as a final determination of the suit. The applications
being I.As. 21153/2011 and 4474/2014 are disposed of. List
this suit and pending applications subject to the orders of
Hon'ble the Chief Justice before the Roster Bench on the date
fixed. No costs.
V. KAMESWAR RAO, J
OCTOBER 30, 2021/aky/jg
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