Introduction:

With the Indian economy going towards digitalization and with the advancement of technology more and more companies in India are going digital and here internet plays a significantly important role because companies are establishing their online presence and are shifting from the old school advertising methods to the modern-day internet and social media-based advertising methods. One such modern-day advertising method is the google Adword program which allows advertisers to display their ads on googles’ search engine result page simply by choosing a keyword that relates to their business and bidding for the same. It is a pay-per-click advertising service where the advertiser pays only when a visitor clicks on his ad.

Illustration: If a company is involved in making mobile phones, then the company can select the keywords ” mobile phones” and bid for the same on the Google AdWord platform. Once the keyword is listed with google, then whenever a visitor searches the words ” mobile phones ” the ad of the advertiser comes on top.

The Issue:

The use of the Google Adword service imposes an imminent threat on the registered trademarks of businesses as a registered trademark can be used as a keyword by any third party to link its website and advertise its goods and services. The above issue not only confuses the minds of the customers but also negates the main purpose of the trademark which is to reduce confusion and doubts about a particular brand among prospective customers. Further, it also causes a risk of trademark infringement under sections 29 (7), (8), and (9) of the Trademark Act 1999.

With the increase in competition in trade and business, the above issue has become very common in the modern-day scenario. Often Companies use the Trademark of their competitors as Keywords in google Ads to boost their revenue and encash the competitor’s goodwill. Unfortunately, such practices are not regulated and there are no specific cyber laws to prevent the doing of such practices.

Judgments & Court Orders:

• In the recent case of M/S Drs Logistics (P) Ltd & Another vs Google India Pvt Ltd & Anr on 30 October 2021, the plaintiff prayed to restrain google and other third parties from using its registered trademark as a keyword in the google Adword program. The Hon’ble Delhi High Court, in this case, held that “the keyword even if assumed to be invisible, directed internet traffic to the website of the competitor thereby confusing the minds of the prospective customers about the origin of the webpage. “The court further implied that the practice of using a registered trademark by any third party as a keyword in google Ads would amount to infringement and passing off.
• In the recent case of MakeMyTrip India Private Limited vs Booking.Com B. V & Ors. on 27 April 2022, the Hon’ble Delhi High Court stated that the hidden use of the trademark in metatags and a source code also amounts to infringement. Defendant Booking.com was held liable for passing off Plaintiff’s mark and it was also held that even the invisible use of a mark as a keyword could constitute passing off. Further, the Hon’ble Delhi High Court restrained the defendant Booking.com from using the mark “Makemytrip” as a keyword on Google Adwords.

Justice Prathiba M. Singh observed that “Google Ads creates a situation where a trademark proprietor is being forced to bid for its trademark for the advertisement of its goods and services.”

• The Alliance of Digital India Foundation (ADIF) on 10th May 2022 hailed the Delhi High Court‘s view that the use of a registered trademark as a keyword on Google Ads by a competitor would amount to trademark infringement.

“It is unethical of Google to encash upon the goodwill and reputation of brands by allowing their competitors to use their registered trademarks as keywords in Google Ads,” said Sijo Kuruvilla George, the Executive Director of the ADIF.

Conclusion & Recommendations:

The google Adword program may be an effective and economical advertising option but the risk of trademark infringement through this program still subsists and is a very major problem in the modern-day scenario. Currently in the Indian Scenario improvement in the protection of Intellectual Property Rights and the introduction of cyber laws is the need of the hour. Further, an AI-based system shall be implemented by google where the use of a registered trademark by a third party is automatically detected and prevented.

BY

Yogesh Somani

1^st LLB Student

ILS Law College, Pune