Keyword Advertising- Trademark Infringement And Its Liability

Author – By Chitwandeep Kaur & Mansi Mishra

 

INTRODUCTION

Keywords in the realm of Search advertising are words or phrases entered into search engines such as Google or Yahoo, that are used as backend triggers to match the ads with terms people are searching for.

Keyword advertising is the ‘pay per click technique’ by which search engines utilize search algorithms to connect a searched-for term with relevant advertisements ‘sponsored links’ that appear alongside the organic search results. Search engines hold auctions for keywords that Internet advertisers may bid on and ‘buy,’ allowing their products and services to be linked with certain keywords. When the bought keyword is entered into a search engine, the advertiser’s ad or website will receive priority placement in the search results, resulting in increased Internet traffic to the advertiser’s website.

Ideally, keywords must be words that describe one’s product. However, there have been instances wherein companies bid on a trademark correlating to their well-known competitors as a keyword, to manipulate the search engine results by making use of a competitor’s trademark in order to enhance visibility to customers online and thereby stealing business from their competitors. By allowing the usage of third-party trademarks as keywords, search engines have in effect created a system wherein two competitors bid for marks belonging to their competitor. Therefore, a trademark owner is forced to bid and pay for its own trademark on such search engines lest the competitor does it and feeds on its goodwill. The unauthorized use of trademarks has paved the way for a multiplicity of lawsuits being filed worldwide, with divided judgments as to the liability of potential infringement.

 

Trademark Infringement under Law

In India, the Trade Mark Act, 1999, governs trademark infringement (‘Act’). The Indian Trade Mark Law does not address the issue of trademark infringement by the usage of a trademark as a keyword owing to the fact that the Act came into being at a time when the practice of keyword-linked advertising was in its early stages. Therefore, aggrieved trademark owners have resorted to existing Trademark laws for remedy.

To constitute trademark infringement under Section 29 of the Act, the trademark is required to constitute ‘use’ in accordance with Section 2(2)(b) which states that use for purpose of the Act shall be use of printed or other visual representation of the mark in relation to the goods or services. However, Sections 29(6), 29(7), and 29(8) of the Act include other instances of use of a trademark not covered under Sections 2(2)(b) and 2(2)(c). Further, Section 29(9) includes infringement of trademark by way of ‘spoken use’ i.e. the use is not required to express visual representation.

 

Liability of Trademark Infringement: Judicial Interpretation

The issue of trademark infringement by keyword advertising was first discussed in detail in India in Consim Info Pvt. Ltd. v. Google India. The appellant, being involved in online matrimonial service, was registered trademark owners for terms like Bharatmatrimony, Tamilmatrimony, Telugumatrimony, etc. and prayed for a permanent injunction against defendants from using these trademarks or the likes in Adwords or as keywords for internet search. It was argued by the respondents (a common contention by the advertisers) that the usage of the trademark as a keyword did not constitute ‘use in course of trade’– an important element for trademark infringement under the Act as the usage did not involve using the trademark over goods or services as provided in the Act. Further, the use conformed with honest business practice. The Madras High Court held that the use of registered trademarks as keywords in the advertisement did fall under Section 2(2)(c)(ii) and Section 29(6)(d) of the Act.

Another issue that arises through keyword-linked advertising is the liability of the search engine. Google’s advertising program Google Adwords has been the subject of a plethora of suits worldwide for its liability of contributory infringement. Google Adwords allows users to choose by providing aid of its Keyword Suggestion Tool.  It actively suggests ‘keywords’ which relate closely with the product that the advertiser seeks to advertise. Google makes these suggestions on the basis of analyzed data such as the number of clicks on a specific keyword and its popularity. In the Consim case, the appellant had further alleged abetment of infringement by the search engine claiming that it promptly suggested trademarks as Adwords thereby liable for contributory infringement. The Court skipped discussing the criteria for intermediary contributory infringement. It was ruled that no liability for infringement arose because the Adwords used therein were descriptive of the respondent’s service and generic in nature. Hence, the advertiser, as well as the search both, escaped the liability in the present case.

Search engines have not been held liable for direct infringement under several jurisdictions. The UK court in the case of Victor Andrew Wilson v. Yahoo! UK Ltd. had avoided holding the search engine liable by opining that the trademark of the claimant was being used by the users searching for ‘Mr. Spicy’ and not by the search engine. Similarly, in the French case of Google France SARL v. Louis Vuitton Malletier SA (LV), LV filed a lawsuit against Google, citing trademark infringement. LV claimed that its competitors were able to reserve not only LV’s trademarks as keywords but also those keywords in combination with terms like “imitation” or “copy”. The Cour de Cassation in Paris referred the case for interpretation and liability to ECJ which ruled that “an internet referencing service provider which stores, as a keyword, a sign identical with a trademark and organizes the display of advertisements on the basis of that keyword does not use that sign” and therefore Google may continue to make available trademarked terms as keywords without facing any liability of infringement.

However, mere ‘use’ of a trademark as a keyword is not sufficient to constitute trademark infringement. The test for trademark infringement to occur is whether or not such ‘use’ causes ‘likelihood of confusion’. In 2021, the Delhi High Court in the case of DRS Logistics v. Google held that the use of third-party trademarks as keywords despite it being invisible to the user, shall constitute infringement. Further, the same does cause confusion in the minds of the consumer. In this case, the plaintiff sought an ad-interim injunction against Google India Private Limited, Google LLC, and Just Dial to prevent third-party infringers from using their registered trademark as keywords, claiming that it caused confusion as to the source of the results displayed. The defendants classified consumers who make use of the internet as ‘literate’ or ‘semi-literate’ thereby capable of making an informed choice and not likely to get confused. However, the Court refused to put the consumers of the UK and India at the same pedestal and reiterated the ruling of Amritdhara Pharmacy vs Satyadeo Gupta that an Indian consumer is a man of  ‘average intelligence and imperfect recollection’. The Court cited Forasol vs. Oil and Natural Gas Commission to state that the foreign judgments may have high persuasive value but their application must be in the Indian context and realities existing here. In this case, the consumers of the UK are known to exercise a higher duty of care while searching on the internet. In India, a customer unaware of the marks/ color combination of the product searched and in absence of any ‘pictorial representation’ of the same is bound to be deceived into believing that the product or service in the ad content at the top of the page has a direct connection with the one he searched for.

In the case of Policybazaar Insurance Web Aggregator & Anr. v. Acko General Insurance Ltd. & Ors., the Delhi High Court held that the Defendant’s use of the plaintiff’s marks ‘POLICY BAZAAR’ as keywords amounted to infringement under Section 29 of the Act, hence an ex-parte ad-interim injunction prohibiting the defendant from using the plaintiff’s marks as keywords was granted. However, later the interim injunction was lifted by the Court upon knowing that the plaintiff themselves were indulged in bidding for the trademark of the Defendants for a year and concealed the material fact whilst seeking the aforementioned relief.

In the most recent case of MakeMyTrip vs Booking.com, the Delhi High Court granted an interim injunction in the plaintiff’s favor barring the Defendants from using the registered trademark of the plaintiff as a keyword on the Adwords Program of Google within the territory of  India. The Court relied on People Interactive (I) Pvt.  Ltd. v. Gaurav Jerry to equate the invisible use of a registered trademark by a rival to online piracy and further deliberated on the issue of whether encashment of the goodwill and reputation of a registered trademark by third parties by bidding on it as a keyword through the Google Ads Program would amount to infringement and passing off or not. The Court, in view of the technological advancements in today’s era, invalidated the traditional approach that only visible use and ‘adoption’ of either mark or name by a third party which is deceptively similar to that of owner may allow an action for passing off.  The Court held ‘misrepresentation’ and ‘deceit’ to be an essential criterion for a passing off to occur. By relying on Kerly’s Law of Trade Marks and Trade Names, the Court held that third-party bidding on trademarks as sponsored keywords for use by internet search engines is ‘misrepresentation’ and thus constituted passing off.

 

Conclusion

Many nations do not regard keyword-linked advertising on Adwords as trademark infringement. However, in the interest of fair competitive practice, the rival companies cannot be allowed to piggyback on the goodwill established by well-known brands by merely bidding on keywords. Furthermore, an average consumer belonging to India cannot be treated the same as a developed nation. It is pertinent that a higher degree of precaution is undertaken to circumvent any likelihood of confusion that may arise. While the onus of protection of trademarks cannot be put on the search engines, it will not be entirely unreasonable to expect defined guidelines as to the visibility of the origin of sponsored links. Recent times have seen a surge in the number of trademark infringement suits being filed by registered owners of keywords seeking an injunction barring such use. With the Delhi High Court under Justice Pratibha set to hear upon issues and liabilities arising from keyword advertising, it is expected that there shall soon be a precedent for such cases which shall enable less costly and faster resolution of disputes arising in this domain.

Chitwandeep Kaur

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