Rights over ‘MATRIMONY’ in the digital world
This post discusses on-going battle over ‘MATRIMONY’ marks. The word Matrimony is being offered by Google and used by various third parties along with various prefixes as key words to attract internet traffic as part of Google ‘Adwords’ program (now known as Google Ads). Matrimony.com has objection to such use by parties. The primary issues are whether a) a descriptive word though registered as a trade mark can be offered as a key word to third parties. b) can courts question the strength of a mark at the interim stage. The Google policy on Trademarks states Google abides by local trademark laws and requires that Google Ads ads don’t infringe third party trademarks. We recognize that third parties may properly use trademarks in certain situations, such as by resellers to describe products.
The Appellant, Matrimony.com Limited is the registered proprietor of various Matrimony trademarks formed by combining languages/ places/ religions along with the word “Matrimony” e.g. BHARATMATRIMONY, ASSAMESEMATRIMONY, TAMILMATRIMONY etc. Matrimony.com has alleged that the Defendants’ bidding for the ‘AdWords’ which are same as the trademarks of the Appellant with the only difference being the space between the two words e.g. TAMIL MATRIMONY, BHARAT MATRIMONY etc amounts to trademark infringement. In the present suit, Google is not joined as a Defendant though the Appellant had an earlier round of litigation with Google, and the suit is pending trial. The current case is directed towards actual user/bidder of MARIMONY marks as key words on Google search engine as part of Google Ads.
The present Appeal is filed by Matrimony.com Limited against a common interlocutory injunction order passed by the single judge in various civil cases against multiple Defendants (all of which are using Matrimony marks). The judge refused to grant any inunction in favour of the Plaintiff and held that the Plaintiff’s trademarks are descriptive in nature noting that when the registration of a trademark ex facie is illegal or shocks the conscious of the court, the courts are not powerless to refuse the injunction. The court further held that without making Google as a party, injunction in favour of the Plaintiff would only lead to restraining the trade of the Defendants.
Earlier litigation with Google on the same issue
The Appellant (Matrimony.com) in the present case had earlier filed suit for infringement and passing off wherein few of the Defendants were same (as in the current lawsuits) and Google being the primary Defendant. The case went upto the Supreme court in an Appeal but the order of single judge was maintained. The following are the key findings:
- The court expressed that there is no synonym for the words Tamil, Telugu etc., and the synonyms available for the word Matrimony are a few.
- In view of the above there would be difficulty in giving a title to these advertisements, if the use of both the words together, is prohibited.
- The court further held that Google’s policy, according to which registered trademarks are protected, by ensuring that others do not use such registered trademarks in their “Adwords”, is sufficient to safeguard the rights conferred upon the plaintiff by the registration of the trademarks.
- The use of the words “KERALA MATRIMONY”, “TAMIL MATRIMONY”, “BHARAT MATRIMONY”, by the Defendants did not constitute infringement within the meaning of Section 29(8) of Trade Marks Act, 1999.
- The Division Bench (two judges bench) in an Appeal took the view that in spite of leaving a space in between the two words i.e. ‘TAMIL MATRIMONY’ etc, it certainly provides a likelihood of confusion between the rival marks and that the Appellant was entitled for injunction.
- The Division Bench, however, chose not to deviate from the decision of the single bench. The court observed that “though, we are of the view that the appellant is entitled for injunction, the present arrangement based on the undertaking given by the respondents, which is in force for nearly 3 years, should not be disturbed or deviated at this stage”.
- The Hon’ble Supreme Court confirmed the interim orders, restraining the respondents from displaying their names in the adverts based on key words incorporating Appellant’s trademark as part of Google’s “Adwords” programme at the first instance. The Hon’ble court further directed the Trial Court to conclude the trial within six months and decide the matters on their own merits, without being influenced by any observation made by the Division Bench.
Contentions by Matrimony.com Limited:
- Learned single Judge has not considered the scope of Section 31 of the Trade Marks Act, 1999 according to which registration of a mark is to be taken as prima facie evidence of its validity.
- Registered marks of the appellant contains a combination of generic and descriptive words and if these two individual words are combined together with or without a space in between are distinctive.
- The appellant is not aggrieved by the use of these words by the respondents independently and individually and the Appellant is aggrieved only by the combination of these two words.
- The appellant is the prior user having substantial reputation. Therefore, even assuming the words are generic and descriptive, the appellant has acquired the secondary meaning.
- The findings rendered by the below courts in first round of litigation have not been understood in the correct perspective. The findings of the court that com was entitled to injunction against the Defendants would operate on the principle of res judicata and issue of estoppel in the present suit.
Contentions by Respondents:
- The trademarks registered are both generic and descriptive.
- A mere registration per se may not give legal right to the Appellant.
- The injunction applications in the earlier round of litigation were dismissed.
- The suit is not maintainable by leaving out the main tortfeasor (Google).
- The registered proprietor cannot have exclusive right over a trademark which contains any matter which is common to the trade or is otherwise of a non-distinctive character.
- Neither any issue of estoppel involved nor res judicata would arise in the present case.
- The court held that the present appeal is nothing but an extension of the earlier suit with few new Defendants.
- The court observed that the keywords used by Defendants like ‘Tamil Matrimony’ and similar words are done to facilitate the consumer about the nature of the service offered and there is no initial interest confusion or dilution that would arise in this case.
- The court further held that the appellant has not demonstrated that it has attained the secondary meaning especially when the nature of trade and business is in tune with the natural meaning of the word.
- In respect of Appellant’s argument of Section 31, the court discussed that the presumption under Section 31 is a rebuttable presumption. It can be rebutted even at the interlocutory stage. One cannot confuse a statutory presumption of prima facie validation with an adjudicatory process.
- The court held that the plea of res judicata and estoppel cannot be raised by leaving out the joint tortfeasor (Google), who was the principal defendant in the earlier suit and new parties are added in the present suit. Moreover, an issue not decided on a conscious consideration of relevant materials cannot be termed as a binding one.
Noting the above, the Division Bench did not consider it appropriate to interfere with the order passed by the learned single Judge.
Key words or “Adwords” (as per Google’s terminology) are an important tool for search engine optimization. In the digital world these are words that visitors use to search for a service, and help a service provider to rank his products/services higher or noticeable on a search engine. Google undoubtedly dominates the global search engine market share with over 90% of all search queries worldwide being handled by them. A report estimates 92% of all search queries conducted across all search engine providers were through Google. Thus from that point of view court’s conclusion that a descriptive mark which has a few synonyms can be offered as “key word” by a search engine has deep ramification for digital advertising.