Google Ads program under scrutiny by the Delhi High Court
Google AdWords Program (now known as Google Ads) is a cause for consternation among brand owners. The keywords offered by Google as part of the Google Ads program, on which advertisers can bid, includes trademarks. As a result, the trademark owners and their competitors can bid for the keywords linked to the Google search algorithm so that their goods and services are listed at the top of the Google search results. The current post discusses a recent action brought by a famous Indian travel portal, i.e., MakeMyTrip (hereinafter referred to as ‘MMT’), against Booking.com and Google.
MMT’s grievance is that they are registered proprietors of the marks’ MakeMyTrip’ ‘MakeMy’, ‘MyTrip’, ‘MMT’ and these are being offered as keywords by Google to third parties, including the Defendant, Booking.com. The Google AdWords program provides them a commercial advantage as the user sees that as a top result in the advertisement category. The case brought by MMT also seeks direction against Google to injunct them from offering their registered marks as keywords.
Plaintiff (MMT), in support of its case, stated:
- MMT is the registered proprietor of the marks’ MakeMyTrip,’ ‘MakeMy’, ‘MyTrip’, ‘MMT’ and other trademarks. The trademark ‘MakeMyTrip’ is registered in various classes and use for the last 22 years in multiple variants and logo forms.
- MMT’s case is when a search is carried out for ‘MakeMyTrip’ in the Google search bar. Quite often, the first advertisement displayed in the search results, in the advertisement category, is that of Booking.com, which is one of their major competitors.
- MMT has placed on record the screenshots of the search results, as well as auction insight of its account on the Google Ads Program to show that Booking.com has made bids for the keyword ‘makemytrip’ on the Google Ads Program to ensure that its website is shown as one of top three search results in the advertisement category
- MMT averred that they had sent cease and desist notice to Booking.com in October 2019 and August 2020, to which they complied and stopped bidding on its registered trademarks for a brief period. However, resumed bidding on MMT’s trademarks as keywords.
- MMT argued that Booking.com is liable for trademark infringement as they are using the complete identity of the MMT’s mark as a keyword and therefore ought to be restrained.
Defendant No. 1, Booking.com, in support of its case, stated:
- MMT had suppressed material facts before the Court. MMT had failed to disclose an agreement entered into between the parties in 2016, that permitted MMT to use its registered trademark ‘booking.com’ to conduct, undertake, use, and perform paid searches or Search Engine Marketing (SEM) activities.
- com further relied upon the judgment of the European Commission in Case AT.40428-GUESS dated 17th December 2018 (hereinafter referred to as “Guess Judgement”), wherein it was held that there could be no restriction on the use of a trademark on the Google Ads program as a keyword, including by competitors. This was the internationally upheld position. Further, as per the Guess Judgement, no license was required to be issued to another party to use the first party’s trademarks as keywords for advertising on search engines.
- com submitted that being a global player, an injunction restraining them from using MMT’s trademarks as keywords on Ads programs would contradict the law as applicable in the European Union through the Guess Judgement.
- com stated that the words ‘make’, ‘my’, and ‘trip’ could be used in a generic sense. Therefore, the use of these words could not be injuncted against.
- Lastly, it was stated that the mark ‘MakeMyTrip’ is not reflected either in the Ad title, metatags, or in the Ad text. Therefore, the use of the mark being hidden, such hidden use cannot constitute infringement.
- that the use of the trademark as a keyword is not an infringement of a trademark and this is the accepted internationally including in the UK, US, European Union, Australia, New Zealand, Russia, South Africa, Canada, Spain, Italy, Japan, and China.
- MMT’s statement on knowledge of use of keywords’ MakeMyTrip’ since 2019 is misleading and contrary to what they stated in an earlier case where the knowledge was alleged to be of 2018.
- The Court relied upon a decision passed by it previously in a case titled DRS Logistics (P) Ltd & Ors. v. Google India Pvt. Ltd. [2021 (88) PTC 217 (Del)] to state that the use of a registered trademark as a keyword constitutes trademark infringement. The Court quoted from the judgement “a perusal of Section 29(9) (of the Trademarks Act) makes it clear that an infringement of a trademark can be by way of spoken use which is different from printed or visual representations of the mark. That is invisible use of the mark can also infringe a trademark.” Interestingly, the Court dived into a short discussion about why a user search for a particular keyword that is a mark. The Court noted that the goodwill in a mark is created by the proprietor of the mark. Therefore, a user may search for a particular mark due to the investment made by the trademark owner in the said mark in promotion, advertisement, merchandising and other promotional activities. It has nothing to do either with the search engine or with the competitor but is a result of goodwill and reputation, which is associated with the mark.
- The Court stated that the hidden use of the trademark in metatags and/or a source code also amounts to infringement as such hidden use of the mark does not take away the fact that there is, in fact, ‘ use’ of the mark in relation to the particular goods or services.
- The Court distinguished the Guess Judgement by stating that the case was based on entirely different facts. The European Commission was dealing with ‘intra-brand’ competition and partitioning national markets. In contrast, the present case pertains to the MMT restraining Booking.com, its competitor, from using its trademark on the Google Ads program.
- The Court held Booking.com liable for passing off of the Plaintiff’s mark and, in this regard, also stated that restricting the definition of passing off to an ‘adoption’ by the Defendant for his own goods or business might be obsolete in terms of the technological advances in today’s digital world. Thus, it was held that even the “invisible” use of a mark as a keyword could constitute passing off. The Court noted. The concept of `deceit’ which forms the fulcrum of an action for passing off is clearly present in cases such as this one.
- The court while referring to Section 29 of the Trademarks Act noted that there are various situations where the use of a registered mark would be infringing. Under the Section 29(4)(c) * of the Act if any party takes unfair advantage of distinctive character or repute of a registered trademark, without due cause, then it would also be infringing use.
- The Court opined to allow Booking.com and even Google to encash upon the reputation of the Plaintiff’s mark for their own monetary advantage is impermissible. The Court, therefore, proceeded to injunct ‘makemytrip’ being offered as a keyword by the Google Ads program. The Court clarified that Booking.com would not be restrained from using the words ‘make’, ‘my’, and ‘trip’ (not conjunctively on a standalone basis) in a generic sense on the Google Ads program.
- The Courts observation on Google Ads program and how it is run, the selection of keywords, and its effect are quite interesting: “Google Ads Program seeks to create a platform for two competitors to bid against each other for the marks belonging to each other for better visibility of their goods and services on the search engine. Therefore, in effect, what a trademark proprietor is being forced to do is to bid for its own trademark, in order for the advertisements of its goods and services under the said trademark to be reflected in the advertisement section of the search results”
An appeal has been filed by Google against the order of the court and against the case titled DRS Logistics (P) Ltd & Ors. v. Google India Pvt. Ltd. referred to and relied upon by the judge in her order. The final word in “keyword” saga is yet to be written. At stake is a market with an estimated 800 million internet users by end of 2022 (up from 350 million in 2017). The companies are therefore jostling to retain and grow their market share online. Google Ads, that enjoys 20% of the market share, is obviously an important tool in companys’ digital marketing strategy. Therefore, the policies that Google follow will have an important bearing on advertisers.
*Section 29 (4) of the Act
“(4) A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
- is identical with or similar to the registered trademark; and
- is used in relation to goods or services which are not similar to those for which the trademark is registered; and
- the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.”
This article was first published in The Trademark Lawyer, Issue 3, 2022, to read please click here