The Delhi High Court has reiterated that use of trademark even as an adword or metatag amounts to infringement.
The single-judge bench of Justice Prathiba M. Singh granted permanent injuction in favour of `MakeMyTrip', restraining its key competitor 'Booking.com' from using its trademark and related variants as keywords on the Google Ads Program for promoting their services as advertisements when search results are displayed on the Google search engine.
The Plaintiff - MakeMyTrip (India) Pvt. Ltd. had registered their domain name www.makemytrip.com back in 2000. The Plaintiff is the registered owner of the trademark ‘MakeMyTrip’, ‘MakeMy’, ‘MyTrip’, ‘MMT’ etc. and the logos thereof in various variants. Being one of the leading online travel portals in India, has won several awards and recognitions in the travel industry. It also has memberships of international bodies. It has arrangements and agreements with various travel companies, hotels, airlines, whose services are also listed on the Plaintiff’s platform.
In the present case, the Plaintiff is aggrieved by the use of the mark ‘MakeMyTrip’ as a keyword by the Defendant No.1 on the Google Ads Program. The case of the Plaintiff is that when a search is carried out for ‘MakeMyTrip’ in the Google search bar, quite often the first advertisement which is displayed in the search results in the advertisement category is that of Defendant No.1- Booking.com, who is one of the major competitors of the Plaintiff.
Senior Counsel for the Plaintiff submitted that there has been exchange of notices between the Plaintiff and Defendant No.1. to cease bidding on the keyword ‘makemytrip’ through the Google Ads Program. This was complied with and subsequently another cease-and-desist letter was issued to Defendant No.1 to cease its unauthorized and illegal bidding for the trademark ‘MakeMyTrip’ as a keyword. It was also complied with as a matter of fact.
Later on, Defendant No.1. changed its position in view of Guess judgment of the European Commission and stated that there cannot be any restriction on the use of a trademark on the Google Ads Program as a keyword, including by competitors.The Senior Counsel submitted that this use of complete identity of the Plaintiff’s mark would constitute infringement under Sections 29(6)(d), 29(7), 29(8) and 29(9) of the Trade Marks Act, 1999.
Senior Counsel for Defendant No.1 submitted that there has been concealment and suppression of material facts by the Plaintiff relies upon a Strategic Partnership Agreement between them. He contended that under clause 4.4.1.2, Defendant No.1 - Booking.com permitted the Plaintiff to conduct, undertake, use, and perform paid searches or Search Engine Marketing (SEM) activities using the mark ‘booking.com’. However, after the Guess judgment, the license was not required.
He argued that any restriction which may be put on the use of the Plaintiff’s mark ‘MakeMyTrip’ as a keyword through the Google Ads Program would be contrary to competition law and submitted that the words ‘make’, ‘my’, ‘trip’ can be used in a generic and descriptive fashion, which in any case ought not to be injuncted in view of Sections 34 and 35 of the Act.
Senior Counsel for Google submits that paragraph 76 of the plaint is mysteriously worded and is completely misleading. He submits that in another suit filed by the Plaintiff against M/s. Easy Trip Planners Pvt. Ltd., data had disclosed that Defendant No.1 was using the Plaintiff’s mark ‘MakeMyTrip’ as a keyword on the Google Ads Program in the year 2018. Thus, the claim of the Plaintiff, as captured in the plaint, that the cause of action arose in the month of October, 2019, amounts to suppression and concealment of material facts. Further it was argued that the use of the trademark as a keyword is not infringement of trademark.
High Court's Analysis
The Court at the outset noted that the legal position under the Trade Marks Act, 1999 is that the use of a registered trade mark as a keyword would constitute trade mark infringement.
"A perusal of Section 29(4)(c) of the Act shows that if any party takes unfair advantage of distinctive character or repute of a registered trademark, without due cause, then it would also be infringing use in addition to infringement in terms of Sections 29(6) and 29(7) of the Act. Section 29(4)."
Stating that the nature of use of a trademark as a keyword on the Google Ads Program deserves a mention and noted that distinctive character of the said mark is because of the use by the Plaintiff and the promotion which the Plaintiff does of its own trademark.
"The goodwill in a mark is created by the proprietor of the mark. The reason why the user may be searching for a particular mark is due to the investment made by the trademark owner in the said mark in promotion, advertisement, merchandising and other promotional activities. The user acquires knowledge of the mark due to the investment made by the proprietor and the popularity that the mark achieves. When a user, therefore, searches for a well-known mark or a mark, which he or she has heard about in the past, on a search engine, it is due to the goodwill and reputation which is associated with the mark. It has nothing to do either with the search engine or with the competitor."
The Court observed that by using a registered trade mark as a keyword, Google Ads Program seeks to create a platform for two competitors to bid against each other for the marks belonging to each other for better visibility of their goods and services on the search engine.
"Therefore, in effect, what a trademark proprietor is being forced to do is to bid for its own trademark, in order for the advertisements of its goods and services under the said trademark to be reflected in the advertisement section of the search results and not be hijacked by a competitor. This entails the trademark owner to make investments in the Google Ads Program on a daily basis, failing which its competitors could use the trademark for advertising their own goods and services and have listings higher on the Google search results."
Noting that though there may be some delay in terms of cause of action having arisen in the year 2018, the Court stressed that it has to consider the fact that the Plaintiff is being forced to bid for his own registered mark on the Google Ads Program on a daily and monthly basis.
Taking further note of the fact that the plaintiff is investing as good ₹6 crore on monthly basis, the Court observed that the precise reason is the fact that Defendant Nos.3 and 4 allow even non-proprietors, such as Defendant No.1 in the present case, to bid for a registered trademark as a keyword.
Remarking that without proper justification, this is taking advantage of the distinctive character and reputation of the Plaintiff’s trademark, the Court opined that the use of the mark ‘MakeMyTrip’ as a keyword through Google Ads Program by one of its major competitors, Booking.com is infringing use under Sections 2(2)(b), 29(4)(c), 29(6)(d), 29(7) and 29(8)(a) of the Act.
It is now well settled in India that use of a registered mark by competitors even as metatags would be infringement, though the same may be invisible to a user as held in DRS Logistics (Supra), the Court said.
"There is not much of a difference in the use of a mark in a metatag or a source code of a website which is not visible and in use of a mark as a keyword by Google Ads Program, inasmuch as the mark being used in a hidden manner does not take away the fact that it is, in fact, ‘use’ of the mark as defined under Section 2(2)(b) of the Act in relation to those very services."
Mentioning that the use of trademark as a keyword on the Google Ads Program is for the purpose of ‘advertising', the Court stated that Google is encashing the goodwill of the trade mark owner by allowing the competitor to book the said mark as a keyword.
It opined that restricting an action of passing off to such an ‘adoption’ might be obsolete in view of the technological advances in today’s digital world. The concept of `deceit’ which forms the fulcrum of an action for passing off is clearly present in cases such as this one.
Examplfying the case, the court illustrated:
"If a person is looking to buy an air ticket and types `MakeMyTrip’ in the search bar, and the first result in the Ad section is of Booking.com, the user may simply visit the latter’s website by clicking on the link and book the ticket. In effect therefore, the user has been directed to a competing website and a direct business loss has been caused to the trade mark owner’s business."
It thus concluded that the “invisible” use of a mark as a keyword can constitute passing off as a matter of principle, however, it would not mean that the Plaintiff cannot be permitted to book its own trade mark as a keyword and it can surely use its trademark as a keyword on the Google Ads Program if it wishes to promote itself on the search engine.
"The use of the Plaintiff’s registered mark ‘MakeMyTrip’ on the Google Ads Program as a keyword would amount to trademark infringement. The same would be detrimental to the Plaintiff’s monetary interest as also to the brand equity of the Plaintiff’s mark. To allow competitors such as www.booking.com and even Google to encash upon the reputation of the Plaintiff’s mark for their own monetary advantage is not permissible in the opinion of the Court. The balance of convenience lies in the favour of the Plaintiff and if the injunction is not granted, irreparable injury would be caused to the Plaintiff as Defendant no.1 and its other competitors would continue to bid for the Plaintiff’s mark `MakeMyTrip’, on a daily basis, resulting in severe prejudice to the Plaintiff, its mark, its brand equity and its business."
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