Invisible Trademark Counterfeiting – Lexology
In today’s incredibly globalized world, a business’s website is integral to its growth and sustenance. The global web, however, presents its own set of problems in an area where regulations have failed to catch up with advances in technology. One of the questions concerning registered owners of trademarks is to what extent these marks are protectable in the digital space. Over the years, many owners have approached the legal authorities seeking a much-needed injunction against competitors who engage in keyword advertising trademark infringement against their trademarks in order to drive traffic to their websites.
What is Invisible Trademark Infringement?
Misuse of a trademark by using the same as “meta-tags” (words that are part of a website’s HTML programming source code) is commonly referred to as invisible trademark infringement or counterfeiting. advertising brand by keyword. The move is characterized by an attempt to take advantage of a competitor’s well-known brand reputation and use it to their advantage in order to drive traffic intended for the Registered Owner to their own website/business. Meta tags as such manipulate search engines such as Google to list websites in searches to achieve higher rankings and in the process divert internet traffic based on this use of meta tags.
Indian Court Rulings on Keyword Advertising Trademark Infringement
One of the first cases involving the issue of keyword advertising trademark infringement was brought in 2009 when online marriage service provider Bharat Matrimony filed an infringement suit against search engine Google for allowing its competitors to use its brand name as a keyword for its online searches. According to Bharat Matrimony, Google’s advertising program allows third parties to buy keywords that generate sponsored links when a user types the phrase into an online search. This feature in itself, according to Bharat Matrimony, was being misused by their competitors to use Bharat Matrimony’s trademark in an unfair manner and therefore constituted an infringement of their rights. In its finality, however, the case did not impact the case law regarding infringement in the digital space and in the judgment, the court chose to favor the defendants by holding that an order prohibiting the defendants to use Bharat Matrimony would reduce the choice of keywords available, which would inevitably lead to an unfair monopolization of the word ‘marriage’.
In addition, another landmark judgment rendered on the issue of Google ad-words trademark infringement is Ms. DRS Logistics (P) Ltd. & Anr. against Google India Pvt. ltd. & Ors., [CS (COMM) 1/2017]. This case involved a claim filed by the plaintiffs against Google India, Google and Just Dial to restrain them from using or permitting others to use the plaintiffs’ trademarks, Agarwal Packers & Movers or Drs Logistics, as keywords or as a meta tag. or mark.
In this case, Judge V Kameswar Rao of the Delhi High Court held that ‘a careful reading of Article 29(9) makes it clear that an infringement of a mark can take place by means of an oral use different from the printed or visual representation of the mark. That is to say, an invisible use of the mark can also infringe a mark‘. Further, the court observed that “it is clear that the use of the trademark as meta tags has been considered trademark infringement. It follows that invisible use of the mark to divert traffic from the owner’s website to the advertisers’/infringers’ website amounts to use of the mark for the purposes of Section 29. ‘.
In this case, the Delhi High Court relied on the precedents set in the cases of Hamdard & Ors Foundation c. Hussain Dalal & Ors CS(OS) No. 1225/2013 and Amway India Enterprises & Ors. v. 1MG Technologies & Golds, CS(OS)410/2018 in which the court observed that keyword trademark infringement by the invisible use of a mark made for the purpose of redirecting traffic from the owner’s website to the advertiser’s or infringers’ website amounts to the use of a mark for the purposes of section 29 which comprises sections 29(6) and 29(8) of the Trade Marks Act 1999.
More recently, Judge Pratibha M. Singh of the Delhi High Court, by Order dated April 27, 2022, granted an interim injunction in favor of Makemytrip in the matter of MakeMyTrip India Private Limited v Booking.com BV & Ors.CS (COMM) 268/2022. While final judgment has yet to be entered in this case, defendants have been barred from using plaintiff’s trademarks on the Google Ads program as keywords because it would amount to trademark infringement and deception. . The brief facts of the case are that the plaintiff brought the current lawsuit in order to protect its various trademarks which were used by the defendant as keywords for the promotion of its services. The plaintiff further submitted that when a search for “Makemytrip” is performed on Google, the first result displayed is that of the defendant’s website. This unauthorized use of the plaintiff’s trademark rights led the court to decide in favor of the plaintiff at least until the outcome of the lawsuit.
The case law relating to trademark counterfeiting invisibly, especially through the use of the internet, has come a long way since one of the first cases of its kind in the High Court of Madras where the restriction on keywords was considered to hinder competition loyal until the last summary injunction granted by the Delhi High Court. The deliberate change of opinion of the courts is linked to the popularity of the use of the Internet as a tool for conducting business. As the global web has become intrinsically linked to the daily lives of the majority of people around the world, it has therefore become more necessary to protect one’s rights offline as well as online.