Introduction
In a recent case of Google LLC v. MakeMyTrip, revolving around trademark infringement, wherein the Delhi High Court examined that whether using a trademark as a keyword on the tech giant’s Google’s website would amount to trademark infringement. This pertinent question holds substantial importance, especially in today’s digital age where e-commerce has thrived. In the current scenario of e-commerce, keyword advertising has become quite common and companies often make use of this technique to improve their outreach.
Background of the case
In this following case, MakeMyTrip (India) Pvt. Ltd. (hereinafter referred to ad ‘MIPL’) is a company registered under Companies Act, 1956 and has become one of the largest travel companies in India offering wide range of travel services through its websites. MIPL claims the ownership of trademarks such as MAKE MY TRIP and MMT. Coming to Google, most widely used search engine (google.com), which also operates as an advertising platform integrated with search engine optimization. To use this, users simply enter keywords and Google presents all relevant information related to that keyword. There are different categories of search results, one of them being ‘sponsored’ and in this case companies can pay Google to display their advertised website whenever that specific keyword is searched for. According to MIPL, it has enrolled in the Google Ads Program in order to promote its website. MIPL argues that when a user searches for MakeMytrip as a keyword, Booking.com’s sponsored link appears in the second position in seven out of ten cases. MIPL is aggrieved by the fact that Booking.com is bidding for the MakeMyTrip keyword in Google’s advertising Program, amounting to an infringement of their trademark under section 29 of the Trademarks Act, 1999. MIPL also contends that competitors like Booking.com using their trademarks for advertising purposes constitutes unfair competition and infringes their trademark rights. In addition to this, MIPL also asserts that Google’s allowance of competitors to bid on their trademarks as keywords diminishes their goodwill.
Issue involved
Does the utilization of MIPL’s trademarks, namely ‘MakeMyTrip’ and ‘MMT’, as keywords in the Google Ads Program to display links/ads for Booking.com, amount to trademark infringement under Section 29 of the Trade Marks Act?
Court’s Judgement
The Delhi High Court referred to its ruling in the DRS Logistics case during the trademark dispute, where it established that utilizing marks as keywords doesn’t qualify as trademark use. Therefore, such usage doesn’t constitute an infringement under Section 29(1) of the Trade Marks Act, 1999. The judges emphasized that Google’s utilization of trademarks as keywords for displaying ads isn’t a violation, if it doesn’t cause confusion or mislead internet users into associating the sponsored links or ads with the trademark proprietors. Given Booking.com’s reputation as a prominent platform offering travel services, the court found it improbable that internet users would mistakenly believe that Booking.com’s services are those of MakeMyTrip. The Court determined that Booking.com, being a well-established platform in the travel services sector, was unlikely to cause confusion among internet users regarding the origin of services, thus dismissing the notion that its use of the ‘MakeMyTrip’ trademark as a keyword amounted to infringement under Section 29(4)(c) of the Act. Since the services offered by Booking.com were similar to those covered by MIPL’s trademarks, Section 29(4) of the Act was deemed inapplicable. Referring to the Google-DRS Logistics Case, the Court rejected the argument that the use of MIPL’s trademark ‘MakeMyTrip’ as a keyword violated Section 29(8) of the Act by conferring an unfair advantage, stating that such use didn’t inherently constitute infringing use. The Court emphasized that using trademarks as keywords did not amount to applying them to materials for labeling, packaging, or advertising goods or services. Neither Google nor the advertiser applied the trademark to any material intended for such purposes, leading the Court to overturn the Single Judge’s order.
Conclusion
The evolving landscape of intellectual property has prompted heightened concern over competitors purchasing similar or identical keywords or ad words as trademarks owned by businesses. However, courts are adopting an intellectual stance, contending that consumers are sufficiently familiar with well-established brands to prevent confusion from such practices. There exists considerable ambiguity surrounding the implications of intellectual property rights (IPR) in keyword advertising, exacerbated by conflicting rulings from various High Courts. Yet, delving into the rationale behind these judgments may offer clarity. For instance, the Madras High Court’s decision deeming keyword usage as trademark infringement stemmed from a case involving the ‘Bharatmatrimony’ mark, where competitors utilized terms like ‘bharatmatrimony’ or ‘bharat matrimony’ in their ad titles, suggesting potential consumer confusion. Similarly, a previous ruling by the Delhi High Court reached a similar conclusion, drawing on a prior single judge order in the MakeMyTrip case. While initially perplexing, these rulings may find reconciliation, potentially bringing stability to adherence to precedent, particularly post the DRS decision.
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