In the matter of MakeMyTrip India Pvt Ltd v. Booking.com BV and Ors., CS (COMM) 268/2022, decided on 27.04.2022, the Delhi High Court held that a competitor’s use of a registered mark as a term or keyword on Google Ads would tantamount to trademark infringement.
MakeMyTrip (India) Pvt. Ltd. (hereinafter referred to as the “Plaintiff”) sought a permanent injunction to safeguard its registered trademarks’ MakeMyTrip’ and its variants.
The Plaintiff registered the domain name www.makemytrip.com back in May of 2000. For several years, the Plaintiff has been using the trademark and is also the registered owner of the trademark ‘MakeMyTrip’ in various trademark classes 9, 35, 39, and 43.
In this case, the Plaintiff was aggrieved by use of the trademark ‘MakeMyTrip’ as a term on the Google Ads Program by Booking.com BV’s (hereinafter referred to as the “Defendant”).
The Plaintiff had sent notices to the Defendant in October 2019 and August 2020, asking them to stop bidding on the keyword “MakeMyTrip.” Even though the Defendant stopped bidding in both cases for a short time, however, soon after, the Defendant resumed using the Plaintiff’s trademarks as keywords.
Being aggrieved by the same, the Plaintiff appealed before the High Court seeking relief from the conduct of the Defendant.
ISSUES BEFORE THE DELHI HIGH COURT
1. Whether third parties cashing in on a registered trademark’s goodwill and reputation by bidding on it as a keyword through the Google Ads Program constitute infringement and passing off?
2. Whether enabling non-owners to bid for a registered trademark as a keyword is justified when it equates to taking advantage of the registered proprietor’s brand’s distinctive character and reputation?
3. Whether, using a registered brand as a keyword in the Google Ads Program would amount to misrepresentation?
CONTENTIONS OF THE PARTIES
The Plaintiff contended that it has registered its trademark in various classes such as class 9, 35, 39, and 43 and has used the brand in various versions for the past 22 years.
The Plaintiff, submitted that it holds the trademarks for ‘MakeMy’, ‘MyTrip’, and ‘MMT,’ among others and has trademark registrations in several additional countries, including Australia, Bhutan, Canada, Indonesia, and others
The Plaintiff’s primary issue was that when a user searches for “MakeMyTrip” in the Google search box, the first advertisement that appears in the advertisement category frequently, is that of the Defendant’s, one of the Plaintiff’s primary competitors.
The Plaintiff had submitted screenshots of the search results, as well as auction insight from its own Google Ads Program account, to demonstrate that Defendant – Booking.com has placed bids for the keyword ‘MakeMyTrip’ on the Google Ads Program to ensure that its website appears as one of the top three search results in the advertisement category when someone searches for ‘MakeMyTrip’ on Google. According to Plaintiff, such use of its registered mark, particularly by a competitor like Booking.com, would be infringement.
The Plaintiff claimed that the Defendant was using the Plaintiff’s marks as keywords on the Google Ads Program to promote their services as advertisements when search results were presented on the Google search engine.
The Plaintiff argued that such use of its registered brand was infringement, mainly when done by a competitor like the Defendant. In the light of the foregoing, the Plaintiff contended that the conduct of the Defendant was in contravention of Sections 29(6)(d), 29(7), 29(8), and 29(9) of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”).
On the contrary, the Defendant relied on the European Commission case, Case AT.40428-GUESS, to argue that there can be no restrictions on rivals’ use of a trademark as a term in the Google Ads Program.
The Defendant contended that limiting the use of ‘MakeMyTrip’ as a keyword would be illegal under competition law. It was also argued by the Defendant that generic phrases like ‘make’, ‘my,’ and ‘journey’ are acceptable under Sections 34 and 35 of the Act.
DECISION AND FINDINGS
The Delhi High Court (hereinafter referred to as “the High Court”), observed that the Google Ads Program permits any business to bid for terms that may include anyone’s trademark. Competitors compete for each other’s trademarks to improve the visibility of their goods and services on the search engine.
As a result, the High Court stated that it believes that a trademark owner must bid for its property, or else its competitors will be able to use the registered name for advertising their goods and services. Hence, the owner is compelled to invest in the Google Ads Program.
Based on the aforementioned reasoning, the High Court stated that by enabling the rival to reserve the said mark as a keyword, Google is encasing the goodwill of the trademark owner. The High Court observed that invisible marks can constitute use and infringement on the expansive interpretation of Section 2(2)(b) of the Act which establishes that ‘use’ requires visual representation and Section 29(9) of the Act states that ‘spoken use of word marks can also be infringement’.
The High Court also held that Defendant is using the Plaintiff’s mark for the purpose of advertising, therefore Section 29(6) (d) and 29(7) of the Act are also violated. The High Court relied on the case of People Interactive Pvt. Ltd. v. Gaurav Jerry, MIPR 2014(3)101 to state that the invisible use of registered trademarks by non-proprietors dilutes the mark and it is on the same pedestal as online piracy.
The High Court held that by using the trademark of the Plaintiff vide Google Ads, the Defendant is infringing on Sections 2(2)(b), 29(4)(c), 29(6)(d), 29(7), and 29(8)(a) of the Act.
However, because there is no evident use of a mark as a keyword, the High Court held that in the present case, the Defendant was not passing off its own services as that of the Plaintiff. The High Court observed that passing-off requires that the misrepresentation results in deception.
The High Court further observed that while the “invisible” use of a mark as a keyword can be considered passing off in general, the mark’s owner has complete control over booking its trademark for advertising purposes.
The Plaintiff have previously filed similar cases in which the Defendants were barred from bidding on any ‘keywords’ on the Google Ads Program that are identical or deceptive variants of the Plaintiff’s mark ‘MakeMyTrip,’ claiming that the Defendants’ actions constituted trademark infringement and passing off.
Though the High Court did not grant any relief with regards to the contention of passing off, the judgment is pivotal for protection of trademarks amid the era of Internet and digitization. Advertisers that buy trademarks as keywords may be held liable for trademark infringement in certain circumstances; and in such circumstances, search engine providers will still have to act swiftly to remove advertisements that infringe third party trademarks.
Because of technological advancements, in the contemporary digital world and cases involving keywords and meta-tags, it appears that including ‘invisible use’ within the scope of passing off is necessary. This order comes at a reasonable time, as trademark infringement lawsuits on Google Ad Programs are rising.
– Team AMLEGALS assisted by Ms. Priyanshi Jain (Intern)
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