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INTRODUCTION
Trade mark infringement is an unauthorised or illegal use of a mark which is identical or deceptively similar to an already registered trademark. A trademark when is likely to confuse the customers, making them believe that brand A is brand B, ultimately increasing sales of brand A instead of brand B. Therefore, such situations take place when there is an infringement of trademark, where in this case, brand A infringed the trademark of brand B, confusing or likely to confuse the customers.
FACTS
This case revolves around the legal controversy between DRS logistics and Google’s Ads program, which works as an online platform where multiple advertisers have the free hand to create and display ads by keyword bidding or search engine advertising by which the advertiser designs it in such a way as to where their ad appears at the top of the result page when the customer searchers using any particular or specific keyword.
This led to a dispute between the plaintiff and the defendant, where the plaintiff contested that their trademark “Aggarwal Packers and Movers” were used as keywords by third parties in such a way that while using the trademark of the plaintiff’s, the competitor’s website appears, diverting the customer from the plaintiff website to the competitor’s.
ARGUMENTS
Plaintiff’s (DRS Logistics) argue that the use of their trade mark “Agarwal Packers and Movers” by the third parties as bidding of keywords leads to infringement of their trademark. They express concern that due to usage of their trademark as search engine advertising, their potential customers who believe in their products/services are being disoriented and are diverted towards their competitor’s websites, due to which they are losing their potential customers.[1]
However, Google contends and argues that using the keywords in their Ad programs does not constitute trademark infringement under the Trade Mark Act, 1999. They further assert that the keywords used are invisible to the customers and that it’s the contents of the ads that pave a way to their source. However, even if there is causing of any infringement under the Trade Mark Act, 1999[2], Google is not responsible or can be held liable for such infringement since google acts only as an intermediary to its customers which includes advertisers as well. It further asserts that Google fulfils the conditions given under Section 79 of the Information Technology Act, 2000 with respect to safe harbor protection i.e. where it is mentioned clearly that as per the IT Act, 2000, no intermediary (in this case google) shall be held liable for any third-party information, data, keyword bidding or actions on their platform which the intermediary platform merely hosts to its potential customers.[3]
SUBMISSIONS & DECISIONS
Single Judge Bench
The learned Single Judge ruled in favour of the plaintiff by stating that though the keywords used are invisible, the use of such invisible trademark as a keyword by the third-party in their ad programs can constitute trademark infringement, infringing the right of the trademark owner.[4]
It was further held that Google is to be held responsible for the plaintiff’s trademark infringement, since Google being a well-known intermediary platform should ensure that the keywords used by the advertisers do not infringe the rights of the true trademark owner. It is obligated to check and ascertain if the keyword used is an already existing trademark and if it is licensed or not, and accordingly it shall permit such ads on their platform. However, if google fails to ascertain the above, it shall be concluded that it cannot any further claim that it sticks to the safe harbour protection provided to the intermediary platforms under section 79 of the IT Act,2000.[5]
However, it was further decided and clarified that at any point plaintiff cannot claim ownership over extremely generic words like “packers or movers”, and usage of such words doesn’t lead to trademark infringement.
Further, the Single Judge granted the injunction applications of the plaintiffs where it was specified that –
1) In case of any infringement complaint raised, google should take the complaint into consideration and investigate on the same. If the infringement on part of the infringer is known to exist, action should be taken by google with immediate effect against the infringers.
2) It should take sufficient precautions in order to avoid such issues, by paying more attention to the content on its platform which can reduce and prevent trademark infringement.
3) If any such infringement is found to be truly existing, google is advised to immediately restrain the advertiser from using the infringing keyword or completely remove such advertisements from their platform.
Division Bench
The division bench framed certain issues in the matter of dispute between DRS and Google, while interpreting the Trade Marks Act, 1999 and Information Technology Act, 2000.
Issues are as following:
(1) Whether utilizing trademarks as keywords amount to their usage under section 29(6) of the Trade Marks Act?
(2) Whether use of trademark as keywords constitute trademark infringement?
FINDINGS OF THE DIVISION BENCH
The Hon'ble court, subsequent to the examination of various provisions of the Trademark Act, held that the usage of trademark is a keyword for display of advertisements that has been interpreted from Section 29(6) of the Trademark Act. The Court had also stated the difference between "in advertising" as per Section 29(6)(d) and "in an advertisement", and had held that in order to use the word "in advertising", physical appearance of trademark shall not be necessary.[6]
In the case of Google France SARL v. Louis Vuitton Malletier SA[7], the international jurisprudence relating to this aspect was examined. In this case, it was held that the sign that is used by the advertiser, and that sign being identical to the trademark, shall be considered to be used as same sign with respect to the goods and services.
The arguments made by Google as stated above were not withheld by the Division Bench and said that the provisions of Trademark Act shall be perceptible to be read in an elaborated manner in order to take into consideration the important aspects that arise out of the advancements of the technology.
Simultaneously, the Bench distinguished the use of mark as a "trademark" and it's use other than as a trademark. It had been held that the usage of trademark as a keyword by the advertiser to display it's advertisements on Search Engines, shall be considered to be use of mark with respect to the goods and services that the advertiser offers.
But the use of mark as mentioned above shall not be considered as trademark. Such difference between the both is a key aspect in context of Section 29(1) of the Act where the use of infringing mark as a trademark is essentially important in order to institute an infringement on trademark.
Therefore, it has been held by the Court that Section 29(1) of the Act shall be considered irrelevant as the keywords are not carrying out a source of identification of functions, therefore stating that the use of keywords by advertisers cannot be perceived as "use of a trademark".
However, question as to who is the liability bearer, the court rejected Google’s contentions that it cannot be held liable for the infringement caused (if caused) since it is merely an intermediary platform and it is the advertisers who are to be held liable for the infringement caused by them to the plaintiff. The court emphasized that Google as an online intermediary platform promoted and paved a way for the usage of trademarks as keywords at the search engine, therefore, playing a crucial role in deciding the ads to be displayed on the search page.
Contrary to the decision given in Google France SARL case[8], in the current case the court refused to agree on the point that google merely allows its clients use keywords and signs without utilising it themselves. Further it dismissed arguments of Google that the decision with respect to the display of ads is an AI automated program and that Google is not involved in designing or operating such a program.
As to whether use of trademark as keywords constitute trademark infringement, the court held that where there is absence of confusion, no unfair advantage or compromise of trademark, it shall not be an infringement of trademark since offering competitor’s products or advertising near to their products or services is a common practice all over the world. It emphasizes that mere grabbing the attention of the potential customers without creating any confusion in their minds does not amount to trademark infringement. It held that Google cannot be held liable unless and until it is proved that there has been any kind of unfair advantage from the defendant’s end.
CONCLUSION
The crux of the dispute between DRS Logistics and Google mainly revolved around the question as to who is liable for the infringement caused to DRS, google or the advertisers? However, the decision turned out to be in favor of Google due to no proof of any unfair advantage taken by it with respect to the trademark infringement dispute. However, google has been ordered to be more careful and take appropriate precautions and actions as and when necessary. On the whole, the decision of the court was a positive sign to both DRS Logistics and Google. This recent decision of the court promoted healthy competition among people and restricted restricting generic words by the trademark owners.
REFERENCES
[1] SCC Online, https://www.scconline.com/blog/post/2023/12/04/google-v-drs-the-subtle-victory-for-google-a-case-comment/#:~:text=Google%20was%20liable%20for%20trade,these%20advertisers%20through%20its%20%E2%80%9CKeyword
[2] Trade Mark Act, 1999
[3] S. 79, Information Technology Act, 2000
[4] Id.
[5] Id.
[6] S.29 of Trade Marks Act, 1999
[7] Google France SARL v. Louis Vuitton Malletier SA (C-236/08)
[8] SARL v. Louis Vuitton Malletier SA (C-236/08)
~Author Naishadha Mekala
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