The online travel booking industry recently saw the homegrown giant MakeMyTrip sue an international giant Booking.com for infringement of trademarks and passing off and unfair competition. The action was brought by MakeMyTrip due to the continuous use by Booking.com of the registered trademark “MakeMyTrip”, “MMT” and other deceptive variants as keywords on the Google Ads Program. MakeMyTrip also arrayed Google as a party defendant in the Suit.

MakeMyTrip claimed that the search trends and results on Google. com were mostly topped by Booking. com advertisements. This was precisely achieved by way of using ‘makemytrip’ like keywords. Booking.com argued that restriction on usage of ‘makemytrip’ like keywords would be contrary to the competition laws that prevail. It further contended that the use of generic words like ‘make’, ‘my’, ‘trip’ is permitted as per Sections 34 and 35 of the Act. Similarly, the other defendant Google.com argued that the use of the trademark as a keyword does should not be considered an infringement and is a globally accepted concept.

The Hon’ble Delhi High Court, prima facie agreed with the legal submissions of MakeMyTrip and restrained Booking. com from using the registered trademarks of MakeMyTrip as keywords on its Google Ads Program. The Court also passed restraining orders against Google.

The Hon’ble Delhi High Court clarified that even an ‘invisible’ use of a mark as a keyword can constitute violation of trademark rights.

“In the current scenarios of cutthroat competition, it is very important to balance the dynamics like consumer choice, ownership of IP assets and prevention thereof. The Hon’ble Delhi High Court’s order is yet again a welcome step towards not only protection of IP assets, marks, etc., but also a vert stern message to the industry to encourage healthy and not over smart competition gimmicks.”, said PBA Srinivasan, Editor in Chief, Lex Witness – India’s 1st Magazine on Legal & Corporate Affairs

Misleading or misrepresentation by way of use of a mark as keywords certainly amounts to passing off, especially when it leads to deception. All the search trends and results with the data points available would be sufficient to establish the misrepresentation and deception in place. The Hon’ble Delhi High Court further clarified that in general, the ‘invisible’ use of a mark as a keyword can constitute passing off, but the owner of a mark reserves all the right to book its own trademark for specific purposes like advertising. This becomes important and more relevant in the ongoing digital media scenarios where cases are rising w.r.t. use of keywords and meta-tags.

This is not the first time that MakeMyTrip has questioned the illegal use of the Google Ads Program by its competitors and the role of Google in offering its trademarks as keywords. MakeMyTrip has secured a handful of orders in the past. The grievance of MakeMyTrip has been that due to use of its trademarks as keywords, competitors were able to divert traffic to their website and Google benefitted because of this by way of a higher cost per click. Industry leaders such as Cars24, upGrad and Policybazaar have also filed identical actions and have secured restraining orders from the Hon’ble Delhi High Court.

MakeMyTrip was represented by Mr. Amit Sibal, Senior Counsel assisted by attorneys from Sim And San. Booking.com was represented by Mr. Chander Lall Senior Counsel assisted by lawyers from Khaitan & Co.

Google was represented by Mr. Sandeep Sethi and Mr. Arun Kathpalia, Senior Counsels assisted by a team of lawyers from Ira Law Chambers and Mason and Associates.