The question at the center of the controversy relates to the Google Ads Program and the sponsored advertisements visible on the Google Search Engine. The question, simply put is, whether use of a trade mark as a keyword by a third party to trigger their own sponsored advertisements amounts to ‘use’ of the trade mark in question? Another question that arises from the same controversy is related to the liability of Google for providing a platform wherein third parties can bid on their competition in the business and use Google Ads Program for numerous illegal activities.
In the past few years, Google Ads Program has become one of the most popular modes of promotion of business activities, especially for businesses wholly based on the internet. Through the Google Ads Program, a user can create its advertisement containing a link to its website. The website link, when a particular term is used as a keyword in the Google Ads Program, is triggered due to an internet search by the internet user.
In recent years, a large number of cases have crept up wherein this feature of Google has been misused by third parties to make illegal gains or to springboard on the reputation and goodwill of third parties. Due to the policy of Google to not investigate the use of keywords, a large number of entities have approached the Hon’ble Delhi High Court seeking injunctive reliefs against third parties using their trade marks as keywords. The Hon’ble Delhi High Court has in multiple matters1 passed injunctive reliefs to restrain third parties from using trademarks as keywords.
It is pertinent to note that the Hon’ble Delhi High Court has also passed directions to Google for suspending the accounts of entities who have been using trade marks of third parties even after granting of injunctive reliefs. In light of the multiple ad interim orders, it was very clear that the Hon’ble Delhi High Court considers the use of trade marks as keyword to be infringing under the Trade Marks Act, 1999 (“TM Act”).
It is important to look at how the TM Act defines use of a “mark” and “trade mark”. As per the TM Act, use of mark is primarily covered in Section 2(2) whereas use of trade mark is covered in Section 29(6). The reading of Sections 29(6) 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.
The Hon’ble Delhi High Court has in multiple cases, including in CS(COMM) 1 of 2017 titled DRS Logistics v. Google India Private Limited and Ors. (“DRS Case”), has held that use of a trade mark as a keyword amounts to ‘use’ as provided under Section 29 of the TM Act and hence the same can be called as infringing use of a trade mark by a third party. While coming to this finding, the Hon’ble Delhi High Court has been majorly influenced by two submissions, namely, a) in the past, use of trade marks as meta tags, which is another invisible form of use of trade marks has been held as infringement of trade mark; and b) the definition of use is broad enough to not only cover visible use of a trade mark but also invisible use such a by spoken words.
Pertinently, one of the main submissions of Google in the present case relied upon judgements from various courts such as Australia, New Zealand and Russia. The Hon’ble Delhi High Court after going through judgements of multiple jurisdictions distinguished them as the scheme of the trade mark laws in other countries was found substantially different from the TM Act. In the DRS Case, the Hon’ble Delhi High Court has directed Google to investigate any complaint made by the Plaintiff therein, alleging use of their trade mark as keyword. The Hon’ble Delhi High Court further directed Google to investigate the overall effect of an advertisement to ascertain whether the same is infringing or not. If Google found the overall effect of the advertisement to be infringing, then Google has been directed to restrain the advertiser from using the same.
It is relevant to note that all these decisions of the Hon’ble Delhi High Court will have a substantial persuasive value on all future litigations against Google and third parties using registered third-party trade marks as a keyword. The orders of the Hon’ble Delhi High Court will play an important role in determining the future policy of Google as they might have to create a grievance mechanism for keyword related complaints in lines with grievance mechanism currently in place for use of trade marks in text of the sponsored advertisements.
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