Delhi High Court: Appellant, Google LLC filed the present appeal impugning an ad-interim order dated 27-04-2022 passed by the Single Judge, whereby Google was restrained from using the mark ‘MakeMyTrip’ together/in conjunction, with or without spaces as a keyword on the Google Ads Program. The Division Bench of Vibhu Bakhru*, and Amit Mahajan, JJ., set aside the impugned order passed by the Single Judge and held that the Single Judge’s view that use of trade mark ‘MakeMyTrip’ as a keyword by Booking.com, which was one of its major competitors, would amount to infringing use under Section 29(4)(c) of the Trade Marks Act, 1999 (‘the Act’), was erroneous.
Background
Google managed the Google Search Engine along with managing and operating an advertisement program, namely, Google Ads Program, in conjunction with the search engine for displaying sponsored links and advertisements (‘Google Ads’) on the search engine result page (‘SERP’). Respondent 1, MakeMyTrip (India) (P) Ltd. (‘MIPL’) was a company registered under the Companies Act, 1956 and it commenced its business initially with airline ticket bookings but had now grown to be one of the largest travel companies in India. MIPL claimed that it was a registered proprietor of several trade marks including word marks, ‘MakeMyTrip’ and ‘MMT’.
MIPL filed a suit alleging that use of its trade marks ‘MakeMyTrip’ and ‘MMT’ as keywords in the Google Ads Program for displaying the links/ads of Booking.com (‘Booking Netherlands and Booking India’) constituted infringement of its trade marks under Section 29 of the Act. MIPL claimed that it used Google’s Ads Program to advertise its website ‘www.makemytrip.com’ and it was aggrieved by Booking.com bidding for its trade marks as keywords to display their advertisements and thus the same constituted infringement of its trade marks.
The Single Judge prima facie concluded that the use of a registered trade mark as a keyword constituted trade mark infringement. The Single Judge prima facie accepted MIPL’s contention that the use of the mark ‘MakeMyTrip’ as a keyword by its competitor Booking.com constituted infringing use under Sections 2(2)(b), 29(4)(c), 29(6)(d), 29(7) and 29(8)(a) of the Act. The Single Judge reasoned that the use of MIPL’s mark by Booking.com constituted use of MIPL’s trade marks for the purposes of advertising and observed that Google was encashing upon MIPL’s goodwill by allowing its competitor to book MIPL’s trade marks as keywords. The Single Judge observed that this practice of using trade marks as keywords amounted to taking unfair advantage of MIPL’s trade marks and fell foul of Section 29(8) of the Act. Also, the Single Judge observed that, in principle, the use of the keyword could constitute passing off.
Analysis, Law, and Decision
The Court relied on Google LLC v. DRS Logistics (P) Ltd., 2023 SCC OnLine Del 4809 (‘Google-DRS Logistics Case’), wherein this Court held that “the use of trade marks as keywords would amount to ‘use’ by Google as well as the advertiser. This Court had held that the use of marks as keywords would not amount to ‘use as trade marks’, therefore, use of such marks as keywords did not constitute infringement under Section 29(1) of the Act. In addition, this Court had held that the use of the trade marks as keywords was ‘use’ in connection with goods and services of the advertiser. Thus, if the goods and services advertised covered under the sponsored link and those covered under the trade mark were similar, Section 29(4) of the Act would have no application. This Court had rejected the contention that the use of trade marks as keywords per se constituted infringement of the trade mark and there was nothing illegal in Google using the trade marks as keywords for display of advertisements if it did not result in any confusion or mislead internet users to believe that sponsored links or Ads displayed were associated with the proprietors of the trade marks. Thus, the use of trade marks as keywords absent any confusion or unfair advantage, would not infringe the trade mark.”.
This Court noted MIPL’s contention that when a user searched for ‘MakeMyTrip’, in seven out of ten cases, Booking.com’s sponsored link appeared in the second position to MIPL’s link, thus, it was apparent that Booking.com also bids for MIPL’s trade marks as keywords. The Court further noted that a search for MIPL’s name or its trade marks using Google’s search engine, would show MIPL’s web address in organic search results on the SERP. The Court did not accept MIPL’s contention that Booking.com’s advertisements or links should not be visible as sponsored link on the SERP.
The Court opined that Booking.com was a well-known and popular platform offering travel services and thus, prima facie, it could not be accepted that an internet user was likely to be misled into believing that the services offered by Booking.com were those of MIPL. The Court held that the Single Judge’s view that use of trade mark ‘MakeMyTrip’ as a keyword by Booking.com, which was one of its major competitors, would amount to infringing use under Section 29(4)(c) of the Act, was erroneous. This was because the services offered by Booking.com were similar to the services covered by MIPL’s trade marks and in these circumstances Section 29(4) of the Act would not be applicable.
The Court again relied on Google-DRS Logistics Case (supra) and opined that it could not accept the view that ex facie, the use of MIPL’s trade mark ‘MakeMyTrip’ as a keyword falls foul of Section 29(8) of the Act as it amounted to unfair advantage and was contrary to the honest practices in industrial or commercial matters and thus, constituted infringement under Section 29(8) of the Act. The Court opined that “use of trade marks as keywords by competitors absent any confusion or deceit, did not per se amount to infringing use”.
The Court opined that in the present case, the use of trade marks as keywords could not, by any stretch, be construed as applying the registered trade mark to any material intended to be used for labelling or packing goods, as a business paper, or for advertising goods or services. The Court noted that neither Google nor the advertiser applied the trade mark on any material and neither of them did so to any material intended to be used for labelling or packaging of goods or as a business paper. The Court opined that there was no application to any material for advertising goods or services and thus set aside the impugned order passed by the Single Judge.
[Google LLC v. MakeMyTrip (India) (P) Ltd., 2023 SCC OnLine Del 7965, decided on 14-12-2023]
*Judgment authored by: Justice Vibhu Bakhru
Also Read: Google’s use of trade marks as keywords for display of advertisements, amounts to ‘use’ under Section 29(6) of Trade Marks Act, 1999
Advocates who appeared in this case :
For the Appellant: Sandeep Sethi, Arun Kathpalia, Senior Advocates; Neel Mason, Ankit Rastogi, Vihan Dang, Aditi Umapathy, Varsha Jhavar, Aditya Gupta, Raunaq Kamath, Rahul Bajaj, Sauhard Alung, Diksha Gupta, Advocates
For the Respondents: Amit Sibal, Arun Kathpalia, Sandeep Sethi, Senior Advocates; Mohit Goel, Sidhant Goel, Deepankar Mishra, Abhishek Kotnala, Karmanya Dev Sharma, Risabh Sharma, Saksham Dhingra, Mouli Rajput, Ankur Sangal, Pragya Mishra, Shashwat Rakshit, Aditya Gupta, Raunaq Kamath, Rahul Bajaj, Sauhard Alung, Diksha Gupta, Neel Mason, Ankit Rastogi, Vihan Dang, Aditi Umapathy, Varsha Jhavar, Advocates
Buy Trade Marks Act, 1999 HERE
