Author- Kimaya Dalvi
In the matter of MakeMyTrip India Pvt Ltd v. Booking.com BV and Ors., CS (COMM) 268/2022, the Delhi High Court held on April 27, 2012, that a competitor would be violating their trademark if they used a registered mark as a phrase or term on Google AdWords.
Facts
The “Plaintiff,” also known as MakeMyTrip (India) Pvt. Ltd., requested a permanent injunction to protect its registered trademarks, MakeMyTrip, and its variations.
In May 2000, Plaintiff paid for the domain name www.makemytrip.com. Plaintiff has been using the phrase for a number of years in addition to being the registered owner of the term “MakeMyTrip” in a number of trademark classes, including 9, 35, 39, and 43.
In this instance, Booking.com BV utilized the “MakeMyTrip” trademark on the Google Adwords Program (hereinafter referred to as the “Defendant”).
Between October 2019 and August 2020, Plaintiff asked Defendant to discontinue placing bids on the phrase “MakeMyTrip.” In both cases, Defendant first held off placing a bid before starting to use Plaintiff’s trademarks as keywords.
Plaintiff then filed an appeal of the judgment with the High Court and sought damages for Defendant’s behavior.
Issues before the Delhi High Court
1. When third parties benefit from a registered trademark’s goodwill and reputation by bidding on it as a keyword through the Google AdWords Program, does this constitute trademark infringement and passing off?
2. If competing for a registered trademark as a keyword would require utilizing the distinctive attributes and goodwill associated with the registered proprietor’s brand, should non-owners be permitted to do so?
3. Under the Google AdWords Program, is it dishonest to utilize a registered brand as a keyword?
CONTENTIONS OF THE PARTIES
The Plaintiff:
It has used that term to refer to itself numerous times throughout the past 22 years. It holds trademark registrations in many classes, including classes 9, 35, 39, and 43.
A number of trademarks, including “MakeMy,” “MyTrip,” and “MMT,” as well as registrations for them in a number of other countries, including Australia, Bhutan, Canada, Indonesia, and others, were alleged to belong to the plaintiff.
Plaintiff’s main concern was that when someone searched for “MakeMyTrip” in the Google search box, Defendant’s advertisement, one of Plaintiff’s main competitors, regularly appeared as the first result in the advertisement category.
In order to prove that Defendant – Booking.com had placed bids for the keyword “MakeMyTrip” on the Google Ads Program in order 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, Plaintiff had submitted screenshots of the search results as well as auction insight from its own Google Ads Program account. Anyone who exploits the plaintiff’s registered trademark is against the law, according to the complainant, especially a rival like Booking.com.
The plaintiff claims that the defendant advertised its services using the plaintiff’s trademarks as keywords on the Google AdWords Program when search results were shown on the Google search engine.
By using the plaintiff’s registered trademark as a rival, the defendant, according to the plaintiff, breached its intellectual property rights. The Trade Marks Act of 1999 (hereafter referred to as “the Act”), Sections 29(6)(d), 29(7), 29(8), and Section 29.9, are allegedly breached by the defendant (often referred to as “the Act” going forward).
Defendant:
The decision by the European Commission to support the claim that competing businesses cannot be prohibited from using a trademark as a term in the Google AdWords Program.
Limiting the use of the keyword “MakeMyTrip” would, according to the defendant, violate the law of competition. Defendant further claimed that Sections 34 and 35 of the Act authorize the use of general pronouns such as “create,” “my,” and “travel.”
Decision:
According to the Delhi High Court, the Google AdWords Program permits any business to place a bid for terms that may contain any person’s trademark (hereafter referred to as “the High Court”). Competing firms compete for each other’s trademarks in order to boost the visibility of their goods and services on search engines.
In light of this, the High Court stated that in order to stop rivals from using the registered name to sell their goods and services, the trademark owner should bid for its property, according to the High Court. As a result, the owner is compelled to invest in the Google AdWords Program.
Based on the aforementioned justification, the Supreme Court ruled that Google is encasing the goodwill of the trademark owner by enabling the competitor to reserve the specified mark as a keyword. The High Court ruled that invisible marks can be used and be construed as infringement under the broad interpretation of Section 2(2)(b) of the Act, which establishes that “use” requires visual representation, and Section 29(9) of the Act, which states that “spoken use of word marks can also be infringement.”
The High Court further found that Sections 29(6)(d) and 29(7) of the Act are being violated since Defendant is using Plaintiff’s mark for commercial advantage. The High Court brought up the People Interactive Pvt. case. Ltd. v. Gaurav Jerry, MIPR 2014(3)101, which contends that both online trademark infringement and unauthorized third-party usage of registered trademarks reduce the value of the mark.
The Supreme Court ruled that the use of the Plaintiff’s trademark in Google AdWords infringed Sections 2(2)(b), 29(4)(c), 29(6)(d), 29(7), and 29(8)(a) of the Act.
Notwithstanding the fact that there was no overt use of a mark as a keyword in this particular case, the Supreme Court concluded that Defendant was not mimicking Plaintiff. The High Court maintains that a passing-off cannot happen unless the misrepresentation led to dishonesty.
The High Court continued by stating that although generally speaking, using a trademark as a keyword could be viewed as passing off, the mark’s owner has complete authority over using its trademark for commercial purposes.
Interpretation:
The Plaintiff, who has previously brought similar lawsuits, is asking the defendants to stop bidding for any “keywords” on the Google Ads Program that are exact duplicates of or deceptive variations of the Plaintiff’s mark “MakeMyTrip,” alleging that their actions amount to passing off and trademark infringement.
The Supreme Court’s ruling is crucial for trademark protection in the Internet and digitalization era even though it rejected the passing off argument. In these circumstances, search engine providers will still need to act quickly to get rid of any ads that violate the trademarks of third parties. Marketers who employ trademarks as keywords run the danger of facing trademark infringement charges.
Conclusion:
It is fair to include “invisible use” under the constraints of passing off given technical advancements, the contemporary digital environment, and instances involving keywords and meta-tags. Given the rise in complaints of trademark infringement against Google Ad Programs, this decision is appropriate.
