M/S DRS LOGISTICS (P) LTD & ANR. V. GOOGLE INDIA PVT LTD & ORS.,

M/S DRS LOGISTICS (P) LTD & ANR. V. GOOGLE INDIA PVT LTD & ORS.,

CS (COMM) 1/2017

Judgment Delivered on 30th October 2021

 

Facts:

The suit was filed by M/s DRS Logistics (P) Ltd, owners of Agarwal Packers and Movers, who sought to restrain Google and any other third parties under an interim injunction from using its registered trademarks that constituted a part of the ad-title, ad-text, URL and meta-tag. These Meta-tags or keywords trigger search results on Google as ads. The Plaintiff claimed that there are several infringers whilst using the services of google for infringing Advertisements whenever a user on the internet looks for the plaintiff by typing Aggarwal Packers & Movers. It was also claimed that advertisement not featuring a trademark and using the trademark as a keyword even if not infringing Google’s policies creates confusion as to the origin of goods and services, the keyword along with the overall effect of the advertisement, (including Ad-title, Ad-text, and URL) needs to be investigated.

 

Issues:

  1. Whether permitting a third party to register a keyword that is a registered trademark amounts to infringement of Trademark?
  2. Whether use of a mark in meta-tags or in advertising without the consent of the proprietor is a violation of the trademark rights of the owner?

Held:

Through this recent judgment, the Hon’ble Delhi High Court ordered Google to investigate a claim alleging that the use of a trademark and its variants as keywords on the search engine led in traffic being diverted from the owner’s website to that of the advertiser. By upholding the case of Havells India Ltd. & Anr. vs. Amritanshu Khaitan & Ors.[1], the court held that the use of a competitor’s trademark is safeguarded within this ad-text if the competing ad complies with Sections 29(6) and 29(8) of the Trademark Act. The court stated that there is no doubt that the advertisement is part of free speech, but that freedom of speech cannot be at the expense of an owner’s trademark, which amounts to a deceptive advertisement.

Furthermore, it was determined that Respondent cannot claim an exemption under Section 79 of the IT Act[2] since doing so would equate to legalizing the infringement, and it was further noted that in the European Union and European Free Trade Association nations, Google investigated the use of a trademark as a keyword, but not in India. By using the plaintiff’s trademark as a keyword, traffic is being diverted to the competitor’s/advertiser’s webpage, implying that a normal consumer who typed the plaintiff’s trademark as a search query was directed to a webpage that caused confusion about the origin of the webpage, whether it belonged to the plaintiff or not. Placing reliance on the judgment of Hindustan Pencils (P) Ltd. vs. India Stationery Products Co. & Ors.[3], the court held that in instances involving intellectual property, courts must keep in mind that it is ultimately the general public that is defrauded and bears the brunt of fake goods and services on the market.

Therefore, the Hon’ble Court found that the keyword, even if assumed to be invisible, was said to divert traffic thus implying the “effect of passing off of the trademark owner’s goods and services” as those of advertiser, by asserting that the advertiser through oblique motives, is cashing in on the trademark owner’s goodwill for his own benefit; and through this mechanism, Google is generating revenue-making itself liable too. Lastly, the court concluded by stating that the plaintiff can seek refuge for its trademarks that have been registered under Section 28 of the Trademark Act, but not for surnames or generic terms.

[1] 2015 SCC OnLine Del 8115.

[2] Information Technology Act, 2000.

[3] AIR 1990 Delhi 19.

https://www.livelaw.in/pdf_upload/vkr30102021sc12017181402-403462.pdf

 

By

Deepthi Chilamkuri,

Intern

Leave a Comment

Scroll to Top