Liability of ensuring that keyword is not an infringement of trademark lies on Google

DRS Logistics (P) Ltd. Vs Drs Logistics (P) Ltd. (Delhi High Court)

Facts- An application seeking ad interim ex parte injunction was filed by the plaintiffs against Google India, Google LLC and Just Dial restraining them from using or permitting third parties to use plaintiffs’ registered trademark AGARWAL PACKERS & MOVERS or DRS LOGISTICS either as a keyword or as a meta tag or as a trademark. It also sought a direction against the defendants to allow inspection of their accounts in order to assist in ascertaining damages.

A subsequent application was also moved by the plaintiffs seeking similar ad interim relief specifically against Google LLC.

The main question before the Court was whether providing a trademark of an owner as a keyword to a third party would amount to infringement of a trademark?

Conclusion- It is not the case of Google that as keywords are not visible to a consumer the use of same shall not amount to an infringement of trademark. However, under the AdWords Program they also see the landing page i.e., website of the advertiser, which in a given case shall have the infringing trademark, which is also used as a keyword, in such a scenario, Google cannot absolve themselves from the liability of ensuring that the keyword is not an infringement of trademark.

In such a case allowing individuals who are not owners of a trademark to choose a keyword which is a trademarked term or use parts of the trademark interspersed with generic words in the Ad-title and / or Ad-text may constitute an infringement of a trademark and / or passing off.

FULL TEXT OF THE JUDGMENT/ORDER OF DELHI HIGH COURT

1. The present suit has been filed by the plaintiff seeking permanent injunction against the defendants. The plaintiff has also filed the I.A. 21153/2011 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (‘CPC’ hereinafter) with the following prayers:

“A. The Defendants, it directors, officer, servants, agents, representatives and assigns be restrained by an order of interim and ad-interim ex-parte injunction from:

(i) using or permitting third parties to use AGARWAL and / or AGGARWAL PACKERS & MOVERS and / or DRS LOGISTICS or any other trade mark or name similar to the Plaintiffs’ registered trademark AGARWAL PACKERS & MOVES and / or DRS LOGISTICS either as a key word or as a meta tag or as a trade mark or part of a key word or meta tag or trade mark or in any other manner so as to infringe the registered trade marks of the Plaintiffs;

(ii) permitting third parties from advertising AGARWAL and / or AGGARWAL, PACKERS & MOVERS and / or DRS LOGISTICS in various combinations on its website or any trade mark or name similar to the Plaintiffs’ registered trade mark AGARWAL PACKERS & MOVERS and / or DRS LOGISTICS or any other trade mark either as a trade mark or part of a trade mark, a trade name or corporate name or as part of a trade or corporate name, or in any other manner whatsoever so as to allow third parties from passing off their services or business as and for the services or business of the Plaintiffs; except Agarwal Packers & Movers Ltd. or any other company / entity enjoying registered users licence or permission to use the name

(iii) permitting any third parties from using any other indicia whatsoever to show any association or affiliation or connection of with the Plaintiffs or their services on its website;

B. The Defendants, it directors, officer, servants, agents, representatives and assigns be restrained by an order of interim and ad-interim ex-parte injunction from:

(i) remove all references on its sponsored links to third party websites, when the words AGARWAL and / or AGGARWAL, PACKERS & MOVERS and / or DRS LOGISTICS are used in various combinations in the search engine of the Defendant website. except Agarwal Packers & Movers Ltd or any other company / entity enjoying registered user license or permission to use the name:

C. The Defendants be called upon to immediately and forthwith allow inspection of their accounts to assist in ascertaining damages;

D. Costs of the present application be awarded to the Plaintiffs; and

E. Any other relief which the Hon’ble Court thinks fit and proper in the circumstances of the case be allowed in favour of the Plaintiffs and against the Defendant.”

2. The plaintiff has subsequently filed another application numbered as I.A. 4474/2014 under Order XXXIX Rules 1 and 2, CPC, seeking ad interim relief against defendant No. 3, i.e., Google LLC with the following prayers:

“A. The Defendant No.3, it directors, officer, servants, agents, representatives and assigns be restrained by an order of interim and ad-interim ex-parte injunction from:

(i) using or permitting third parties to use AGARWAL and / or AGGARWAL PACKERS & MOVERS and / or DRS LOGISTICS or any other trade mark or name similar to the Plaintiffs’ registered trademark AGARWAL PACKERS & MOVES and / or DRS LOGISTICS either as a key word or as a meta tag or as a trade mark or part of a key word or meta tag or trade mark or in any other manner so as to infringe the registered trade­marks of the Plaintiffs;

(ii) permitting third parties from advertising AGARWAL and / or AGGARWAL, PACKERS & MOVERS and / or DRS LOGISTICS in various combinations on its website or any other trade mark or name similar to the Plaintiffs’ registered trade mark AGARWAL PACKERS & MOVERS and / or DRS LOGISTICS or any other trade mark either as a trade mark or part of a trade mark, a trade name or corporate name or as part of a trade or corporate name, or in any other manner whatsoever so as to allow third parties from passing off their services or business as and for the services or business of the Plaintiffs; except Agarwal Packers & Movers Ltd. or any other company / entity enjoying registered users licence or permission to use the name.

(iii) permitting any third parties from using any other indicia whatsoever to show any association or affiliation or connection of with the Plaintiffs or their services on its website;

B. The Defendant No.3, it directors, officer, servants, agents, representatives and assigns be restrained by an order of interim and ad-interim ex-parte injunction from:

(i) remove all references on its sponsored links to third party websites, when the words AGARWAL and / or AGGARWAL, PACKERS & MOVERS and / or DRS LOGISTICS are used in various combinations in the search engine of the Defendant website except Agarwal Packers & Movers Ltd. or any other company / entity enjoying registered user license or permission to use the name

C. The Defendant No.3 be called upon to immediately and forthwith allow inspection of their accounts to assist in ascertaining damages;

D. Costs of the present application be awarded to the Plaintiffs; and

E. Any other relief which the Hon’ble Court thinks fit and proper in the circumstances of the case be allowed in favour of the Plaintiffs and against the Defendant No.3.”

3. I shall proceed to decide both these applications simultaneously. This Court vide order dated January 22, 2020 had recorded the submission of the plaintiff wherein it had stated that the only issue which need to be decided for the purpose of injunction is, whether providing a trademark of an owner as a keyword to a third party would amount to infringement of a trademark. The same has been reproduced as under:

“2. In other words, he clarifies that Google does not allow any third party to put / publish / refer to a trademark of an owner in the Adtext / Adtitle as per its policy. Mr. Sethi also states that the said policy is still in vogue and shall be implemented in favour of the plaintiff.

3. On this, Mr. Chander M. Lall, learned Senior Counsel appearing for the plaintiffs, states that in view of the statement of Mr. Sethi, the only issue which needs to be decided for the purpose of injunction is whether providing a trademark of an owner as a keyword to a third party shall amount to infringement of a trademark.”

I further note from the plaint that plaintiff No.1 is the owner of the trademarks and copyrights and plaintiff No.2 has been granted license for use of trademarks and copyrights vide agreement dated July 22, 2009. It is also clear from the plaint that plaintiff No.2 has filed an application before the Registrar of Trademarks to take on record the fact that it is a registered user of the trademarks of plaintiff No.1. Plaintiff No.1 and plaintiff No.2 have been in this order collectively referred to as ‘plaintiff’ for the sake of brevity.

4. Mr. Lall, learned Senior Counsel who appears along with Ms. Nancy Roy on behalf of the plaintiff has stated that through the present suit the plaintiff seeks to restrain defendants Nos. 1 and 3 i.e. Google India Pvt. Ltd. and Google LLC (hereinafter ‘Google’) from the use of the plaintiff’s registered trademarks which constitute a part of ad-title, ad-text, URL and meta-tag or keyword. Mr. Lall states that meta-tags or keywords trigger search results on Google i.e. by way of Google Ads.

5. It is the case of the plaintiff that several third party infringers use the services of Google for inserting their infringing advertisements when a user on the internet looks for the plaintiff by typing “Agarwal Packers & Movers”. Plaintiff has moved against third parties and despite having decrees in its favour it states that Google did not stop the use of infringing advertisements on their platforms. He stated that one party namely Agarwal Packers India (Agarwal Express Links Pvt. Ltd.) against whom a decree has been passed, continues to appear in the keyword, Ad-title and URL.

6. It is the case of the plaintiff that obtaining orders against individual advertisers on the Google platform was ineffective and it is due to this reason that the plaintiff was compelled to initiate the present suit against defendant Nos. 1 & 3 and defendant No.2 i.e. Just Dial. Mr. Lall has pointed to the averments made in the plaint wherein it has been stated that the plaintiff has been asked to pay more money or else the defendants would advertise the infringers of the plaintiff’s brand on their website.

7. Mr. Lall argued that these actions of the defendants amount to blackmailing through the AdWords Program. He has argued that there are numerous tutorials available online which suggest that by bidding for one’s own brand, which is used as a keyword by the Google AdWord Services the owner can protect the advertisement panels on the search engine result page from being used by the competitors and from stopping the competitors from stealing the traffic.

8. It is the case of Mr. Lall that the suit has been initiated against Google alone and not against their customers who use Google services, which are constantly changing. The suit targets the mechanism of Google and the cause of action relates to all activities where the registered trademark of the plaintiff is used to direct internet traffic to the website of the infringer and seeks injunction from using the same as a keyword / meta tag, etc.

9. He has pointed out, that at the time of filing of the suit brand infringement was permissible on Google by use of registered trademarks in the ad-title and ad-text as also in the URL and of course keywords. However, Google has agreed to block the trade mark “Agarwal Packers & Movers” and other similar marks of the plaintiff from appearing in the Ad-title and Ad-text. According to him, on URL, the defendants in their written statement in paragraph 14 have also stated that, in terms of the policies of Google Inc., which are implemented by Google Inc, itself no registered trademarks will be displayed in the Ad-text and Ad-title of an advertisement or sponsored link. The trademarked term would also not appear in the URL of the advertisement and that the said policies would be applicable to the plaintiff as well.

10. According to him, on the issue of keywords, Google had asserted that it only implements the policy to restrict keywords in certain countries which include China but does not include India. Mr. Lall has pointed to the policy of Google as existing before the Madras High Court in Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd. & Ors. 2011 (45) PTC 575 (Mad) (SJ) (‘Consim I’ hereinafter) and Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd. & Ors. 2013 (54) PTC 578 (Mad) (DB) (‘Consim II’ hereinafter) to list the countries where it restricts the use of keywords. However, when it comes to India the defendant Nos. 1 and 3 have stated that Google would not investigate or restrict the use of a trademark term in keywords, even if a trademark complaint is received. According to him, Google does not consider use of trademarks as keywords as use, or infringement of a registered trademark.

11. As per Mr. Lall in the earlier cases before the Madras High Court viz. Consim I and Consim II both Google India and Google Inc. were parties and the stand taken by Google has changed from 2009 to 2014 which is when the current suit was filed.

12. According to Mr. Lall, the Division Bench of the Madras High Court held the Plaintiff/ Appellant therein to be entitled to an injunction. He stated that the Court had given a finding stating that Google had discriminated against the appellants therein and also arbitrarily used the trademark words as keywords; and that Google could have used some other words as keywords on sponsored link and also held that Google’s action would only create confusion in the minds of the public. Further that Google was bound by the policy that has been reproduced in the order of the Division Bench.

13. He further pointed to the written statement of the defendant No. 1 to state that they have in paragraph 20 admitted to the applicability of judgment in the case of Consim I to the instant case and therefore the change in policy now is completely mischievous and contumacious. Further, he stated that in an affidavit filed by Google there was an admission that right up to 2009 the AdWords Policy applicable to India did not allow trademarks as part of keywords. According to him, Google asserts that they revised their Ad Policy on June 4, 2009 to allow use of trademarks as keywords in more than 100 countries including India. The decision in Consim I is dated September 30, 2010 wherein Google was bound to follow the keyword policy in India prior to amendment. The policy that was to be followed for India was also clarified in paragraph 51 of Consim II.

14. Mr. Lall relied on the judgment of the Bomaby High Court in the case of People Interactive (I) Pvt. Ltd. vs. Gaurav Jerry, MIPR 2014 (3) 101, to state that, meta-tags are special lines of code embedded in the web pages which provide structured data (meta data) about the web page and that these meta-tags are used by search engine robots to assess webpage contents and other relevant material relating to a webpage in the building of search engine indices. The illicit use of meta-tags could be severely damaging and that this is a form of hijacking the plaintiff’s reputation and goodwill. Similarly, Mattel Inc. & Ors. vs. Jayant Agarwalla & Ors., 2008 (38) PTC (416) (Del) held that meta-tags are machine readable codes used by search engines to index sites. Additionally, he stated that meta-tags are included in the code that defines the functionality of a website by a website owner and that the use of trademarks as meta-tags constitutes infringement and passing off since the defendant Nos. 1 and 3 through such tags divert internet traffic away from the plaintiff’s website.

15. By placing reliance on Consim I, he also argued that keywords are meta-tags which have been commercialised and are available to third parties for a price. According to him, defendant No.3 describes a keyword as words or phrases you choose that can trigger your ad to show on search and other sites; these keywords are used synonymously with ‘search terms’ and ‘AdWords’.

16. Mr. Lall argued that Google is not an intermediary, but rather a direct beneficiary through the sale of keywords. As per the judgement of Consim II, Google explained that advertisers who vie with one another are asked to bid upon the basic price fixed by the search engine for selection of the keyword; and parties can advertise their services on the sponsored links by paying necessary charges to Google. According to the written statement of defendant No.3, Google India is the reseller of Adwords Program in India and as per Consim I. Google guides the advertiser in selection of the keyword and charges them either a fixed rate or gives it to the highest bidder.

17. Mr. Lall has pointed to Google’s policy to state that Google maximises its revenues by linking keywords with the goods/services of the advertisers and that these keywords enable the advertisements to appear on diverse Google platforms. The relevant section of Google’s policy has been reproduced as under.

“With a keyword-targeted ad on Google and its search partners, your bid is based on your maximum cost-per-click (max. CPC) bid, the maximum amount you’re willing to pay for each click on your ad (though the final amount you’re charged per click – your actual CPC – could end up being less). Your Quality Score is based on the relevance of your keywords, the quality of your landing page, your ad’s click through rate (CTR), adjusted for its position on the page, and a few other factors.

xxx xxx xxx

Keywords can trigger your ads to appear next to search results on Google and other search sites. But keywords can also trigger your ads to show on other sites across the Internet – Google-owned properties like YouTube as well as Google’s partner sites like NYTimes.com or Families.com, for example. We call these placements, which are part of what we call the Display Network.”

18. Mr. Lall points out to the averments made by the defendant No.3 in their written statement that the sponsored results / ads are obtained by the mechanism put in place under the AdWords Program. Only advertisers having an AdWords account can access the AdWords Program, which allows advertisers to create, select, edit and manage keywords based on which their advertisements can show up as a ‘sponsored links’ / ads in response to a search query entered by any user. He stated that the defendant admitted that the keyword mechanism is at the heart of Google’s programming, as they have stated in the written statement that, the automated response which Google search engine makes to a user’s search request by displaying a sponsored link is wholly determined by the keywords and other content of the sponsored link which the advertiser has chosen.

19. Mr. Lall has pointed to the Plaintiff’s affidavit with a screenshot of how the keyword Planner which assists the advertisers in selecting certain terms and combinations thereof as keywords under the AdWords Program which can help improve the likelihood of an advertisement receiving a higher relevancy score of Ad rank; which reads that the keyword ‘agarwal packers and movers’ has 170 as average monthly searches and the screenshot reads that the competition against this keyword as ‘High’ and suggests a bid of ₹168.69. The keyword planner tool according to them provides data and information to an advertiser relating to popular keywords in the same field of business and gives information such as average monthly searches for any popular keyword or a suggested value of the bid amount to help the advertiser plan its bid value, keeping in mind other advertisers in the same field of business. Mr. Lall argued that by the virtue of the above acts, Google cannot be termed as an intermediary, as the term has been defined under the Information Technology Act, 2000 (‘IT Act’ for short). It is not entitled to claim the harbour of Section 79 of IT Act as it is Google itself which provides the service of keywords, selects the people who can participate and actually shepherds them through the process and conspires and abets the commission of unlawful acts. Mr. Lall has placed reliance on the affidavit of Ramesh Agarwal filed on April 19, 2014, wherein screen-shots of the Keyword Suggestion Tool which shows the advertiser the Ad group ideas along with keyword ideas as well as country specific options, language, negative keywords, etc. This is also succeeded by a column for Keyword filters with Keyword options, Show broadly related ideas, Hide keywords in my account, Hide keywords in my plan. The prospective advertiser is offered a menu of keywords to choose with the following information:

20. He argued that Google’s argument is merely an afterthought. Its AdWords Policy itself acknowledged that the use of trademarks as part of keywords constituted violation of trademark rights and merely because they now unilaterally decide to change that policy, the legal position remains unchanged and Google is estopped from claiming to the contrary. He further anchors his argument on the fact that the use of keywords by search engines require licenses, a fact which has been acknowledged by Google; as per the plaint wherein the plaintiff has submitted that the plaintiff also participates in the Google AdWords Program and when it does, in such a case the plaintiff licenses the use of its registered trademark to the defendant No.1 and the defendant No.3 for use as a keyword. According to him defendants specifically admit the position that its AdWords Policy, Terms of Service requires the trademark owner to grant to Google a license to use the keywords in future. The need to obtain a license by Google constitutes an admission that unlicensed use is not authorised.

21. He submitted, that as per section 29(7) of the Trade Marks Act, 1999 (TM Act ‘for short’) clearly sets out that a registered trademark is infringed by a person who applies such registered mark to a material intended to be used for advertisement of goods or services and here the goods or services are not restricted to goods/services for which the trademark is registered.

22. Mr. Lall has argued that defendant No.2 Just Dial is another service provider which collaborates with Google and its AdWords Policy; when one searches for the plaintiff’s registered trademark a Just Dial advertisement appears on top. The name of Just Dial is in juxtaposition to the trademark of the plaintiff. Just Dial is then able to direct traffic to a telephone number who pays them the highest fee, just like Google. The first number that appears on Just Dial is of the person who pays the highest fee for the listing.

23. Mr. Sandeep Sethi and Mr. Arun Kathpalia, learned Senior Counsels who appear with Mr. Neel Mason and Mr. Saransh Jain on behalf of defendant Nos. 1 and 3 (collectively referred to as ‘Counsels for Google’), argued that the Google Ads program, is an advertising service where any advertiser can create and display an online advertisement in relation to its website, including search-based advertising on the Google search engine. The search results on the first page of the Google Search engine are of two types, i.e., ‘Sponsored Search Results’ and ‘Organic Search Results’. The former comprises of advertisements and appear separately from the organic search results; and are differentiated from the label ‘Ad’.

24. The Counsels for Google have submitted that for creation of an advertisement, the advertiser inter alia has to provide the text of his Ad, i.e., the Ad-Text and also provide the search terms or phrases, which are known as keyword(s), which the advertiser believes are most relevant to its business. When the said keyword is typed in by any internet user on the Google Search Engine, as a search query, the Ad of the advertiser may be eligible for display on the Google Search Engine Results Page. Counsels for Google have maintained that each and every element of the Ad is created and provided solely by the advertiser, whereas the Google Ads program merely provides an advertising platform and interface for creating and placing such an Ad on Google Search. A keyword provided by the advertiser is treated as just a backend trigger for an Ad to be displayed and is never used in a trademark sense. Keywords provided by the Advertiser are not visible anywhere within the advertisement nor are they used in any tangible or perceptible manner to the end user.

25. The Counsels for Google have explained that the search-based Ads are triggered by a way of automated software algorithms that match the search query entered by a user with the set of keywords provided by various advertisers and algorithmically determines which Ad is most relevant to the search query and should be triggered, if at all. The actual display and ranking of an Ad is not determined by the selection of keywords alone nor the highest bid, but is a function of a combination of the bid amount, quality score (that factors the relevance of the Ad), the context of a user’s search and the expected impact of Ad formats and extensions. It is the case of Google that revenue is not earned or generated by Google merely by an advertiser participating in the Google Ads program or upon the mere display of an Ad. A charge is made to the advertiser only if the Ad is clicked upon by the end user.

26. It has been argued by the Counsels for Google that the keywords are neither sold by Google nor are they purchased by the advertiser in the sense of exclusively reserving the term or phrase for the purpose of triggering Ads. Google has stated that none of the Advertisers acquire any proprietary rights in the keywords provided by them to Google and that multiple advertisers can select the same keyword.

27. With regard to the keyword Planner Tool, the Counsels for Google have argued that, this is a standalone research tool, i.e., the keyword planner which was earlier known as Keyword Suggestion Tool. They have submitted that this is a tool for the benefit of advertisers to gain statistical information and understanding about the kind of words, expressions, combinations that may be relevant for an advertiser to consider as keywords for triggering their advertisements. They state that, the keyword planner tool is not a mandatory step for creating or running advertisements on Google Ads and is simply a free facility or a software tool that is separately available to the advertiser and can be used to help plan an advertisement campaign, should the advertiser choose to avail of it. This keyword planner is only for the internal reference of advertises and is not publicly accessible except to advertisers who specifically look for this tool on the Google Ads program. According to them, prospective advertisers can use this tool to generate and compile lists containing some relevant statistical data e.g., number of average monthly searches, the competition level, the amounts bid by advertisers for a keyword, etc., regarding a given business field and learn which keywords and search phrases would generate an optimum value for the advertiser. They have stated that, the information that is ultimately displayed using this tool is based on the millions of bits of data that is being stored dynamically to the extent it matches with the queries fed in by the user of the tool; and Google has taken a stand that the advertiser is free at all times whether or not to use the keyword planner tool and has the full discretion and choice to provide or not provide a keyword, irrespective of whether it forms a part of keyword planner or not and may even provide a keyword that is not a part of the keyword planner at all. Google has maintained that the said tool is line, both with the applicable law in India as well as honest commercial/industrial practices.

28. In context of their trademark policy vis-a-vis the Google Ads, the Counsels for Google have stated that the Google Ads Trademark policy explicitly prohibits any advertisements that infringe the trademark rights of others. They have also stated that under the policy, Google investigates the use of trademarked terms in the Ad-Text of competitor ads, i.e., in the visible portion of the ad that appears on the search results page. Google does not restrict or investigate use of trademarks as keywords. They have stated that the, trademark policy permits use of the trademark term in the Ad-text by resellers, informational sites and authorized advertisers, if they meet the necessary requirements, consistent with the applicable law in India. According to them, Google Ads Trademark policy which is applicable globally including in India is aligned with global legal precedent, finding that a mere use of a trademark as a keyword, without more, does not amount to infringement or unfair competition. They have stated that the said policy had been recorded and accepted in Consim I and reiterated by the Division bench in Consim II. The said policy has not undergone any significant change since then, contrary to what the plaintiff has alleged. They have stated that the only issue subsisting in the present matter is whether permitting a third party to register a keyword that is a registered trademark amounts to infringement, which according to them is a question answered in the negative, based on the findings of numerous foreign Courts.

29. It is the case of Google that, once the Ad is created or edited by an advertiser, the Ad is reviewed in an automated manner for compliance with the Google Ads policies and applicable laws. The process of review involves the Ad being reviewed in an automated manner and algorithmically without any human intervention to check any Ad that may be placed in the system for violations of applicable laws. The content, including headline, description, keywords, destination and any images and videos are reviewed within one business day. Ads which on the face of it violate Google Ad policies; for instance, Google algorithms will automatically track and block advertisements which are prohibited under the Pre-Conception and Pre-natal Diagnostic Techniques Act, 1994 (‘PCPNDT Act’, for short). At the same time, for certain policy violations such as trademark violations (in the Ad Text), the Ads tools can detect and block the misuse of a trademarked term in the Ad Text once the owner of such rights has informed Google of its valid and existing rights and as to how a particular advertisement is in violation of such rights. It is Google’s case that the plaintiff itself has benefitted from the said feature and is very well aware of the nature and functioning of review of Ads by Google.

30. According to the counsels for Google, Google Advertisement Policies also include the Misrepresentation Policy. The thrust of the said policy is to route out ads that seek to mislead users or misrepresent themselves to offer genuine or authorised goods or services or in any manner seek to play a fraud on the users. For instance, Ads scamming users by impersonating brands or businesses by referencing the brand content in the ads, URL, destinations or an advertiser misrepresenting itself as the brand or business in user interactions is not permitted under the said policy. An Ad which is suspended for violation of this policy also leads to suspension of the associated accounts of advertisers of such Ads, since this is considered to be a gross violation of the Ad policies. It had also been submitted, that the Plaintiff in the present proceedings had reported certain Ads for violation of their trademark rights. However according to Google, such ads were not found to be in violation of the Trademark policy of Google Ads because they did not feature the plaintiff’s trademark in the Ad Text, the same were found to be in violation of the Misrepresentation policy and had been acted upon accordingly. It has been submitted that, Google Ads program does not permit bad ads, that are intended to deceive users by excluding relevant information or providing misleading information and such ads will be reviewed under the Misrepresentation Policy, as and when reported by the Plaintiff.

31. Another limb of argument advanced by the Counsels for Google, has been that keywords are not meta-tags. According to them, meta-tags are neither used by Google in the organic search result nor are they part of sponsored links/Ads section.

On the specific issue of meta-tags the Counsels for Google addressed the following issues:

i. That there is neither any pleading nor any factual foundation laid down in the plaint to allege what meta-tags are or how Google is allegedly infringing the Plaintiff’s trademark rights through meta-tags. According to them the only reference is in the prayer clause of the plaint, which is entirely unsupported by pleadings. The arguments raised regarding meta-tags have been raised for the first time in rejoinder arguments and that too only in oral submissions. It is a well settled principle that a party cannot be allowed to bring a fresh cause of action at the stage of rejoinder.

ii. It is their argument that the plaintiff should be precluded from raising this argument at this stage. It has been their submission that meta-tags are ‘website descriptors’ or ‘tags’ that can be words, expressions or phrases that are put in the source coding of any website to help describe the contents of their website. If the website owner puts certain keywords in his website’s source coding and designates them as met-tags, they are referred as ‘keyword meta-tags’. However ‘keyword meta-tags’ cannot be confused with ‘keywords’. A keyword is conceptually different from a meta-tag. A keyword is a word/phrase that is provided by an advertiser to act as a trigger for its ad. It is not embedded, included or incorporated into any source code or other text of either the ad or the advertiser’s website. On the other hand a meta-tag is a word /phrase put in source code by a website developer.

iii. According to them the difference had been discussed by the Federal Court of Australia in the judgement of Veda Advantage Ltd. vs. Malouf Group Enterprises Pvt. Ltd. [2016] FCA 255, wherein it has been noted that “keyword meta-tags” were trademarked words embedded in the source code of a website and its pages by the creator/editor of the site. It had also been that unlike the ‘keywords’ employed by Google as a trigger at the backend, ‘keyword meta-tags’ were not entirely invisible and were visible to those who know what to look for, in the source data.

iv. They have argued that the reliance placed by the plaintiff on the judgments in the cases of People Interactive (supra) and Mattel (supra), is misplaced and unsustainable. According to them the Courts have not in any way held a search engine responsible for use of meta-tags by a website owner in his website’s coding and are being read by the Plaintiff to suit his own case. They have argued that the aforesaid cases are inapplicable to the facts of the present case and that the plaintiff has read orders as well as concept of meta-tags to its own liking and same does not reflect the correct position of facts.

32. Another argument taken by the counsels for Google has been that the use of Trademarks as keywords does not amount to “use” under the TM Act. According to them, section 2(2) (b) requires a trademark to be used “in a printed or other visual representation” as a prerequisite before use under section 2 (2)(c) can even be examined. The key requirement here is that the use of a trademark is in some visible or tangible form which is “represented” to an end user / consumer. Mere providing of a trademark term as a keyword as a back-end trigger by the advertiser to display its ads does not in any manner amount to such “representation” and does not qualify as “trademark use” particularly by Google.

33. It has been their case that as per the Federal Court of Australia in Veda Advantage (supra) wherein the Court had held that the use of a trademark as a keyword “which is invisible to the consumer” is not a use as trademark. The Court rejected the proposition that using the words which are invisible and inaudible, indeed imperceptible, to consumers, amounts to trademark use. Further, the UK Court of Appeal in the case of Reed Executive Plc & Anr. vs. Reed Business Information Ltd. and Ors., [2004] EWCA (Civ) 159 had stated in relation to use of trademarks as keywords, that an invisible use of such sort, may not be use at all, for the purpose of the trademark legislation as there is no meaning being conveyed to anyone – “no sign”. In another decision given by the Moscow City Arbitrazh (Commercial) Court in the case of Nebo vs. Almazakh, Case No. A40-128465/17-91-1116 (2017) had held that using a trademark as a keyword does not constitute use of a trademark and observed that keywords cannot be viewed as means of using a trademark as such words do not carry the “branding” capacity. The Court had observed that keywords do not form part of the advertisement proper, they are not included in its content and are not shown to the user. Keywords cannot even be used for identifying a particular ad as the same keywords may be used for multiple advertisements. Therefore, users do not know on the basis of which keyword a particular advertisement is shown nor can they determine which exact keywords correlates with the said advertisement.

34. It is their case that section 2(2)(c) further requires that the Plaintiff’s trademarks be used “as or as part of any statement about the availability, provision or performance” of its services for it to qualify as trademark use. Mere providing of a trademark term as a keyword as a back-end trigger by the advertiser to display its ads does not in any manner amount to a “statement” to the end user / consumer and does not qualify as “trade mark use”, especially by Google. The High Court of New Zealand in the case of NZ Fintech Limited T/A Moola vs. Credit Corp Financial Solutions Pty Ltd T/A Wallet Wizard [2019] NZHC 654 held that an advertiser is not using a keyword as a “badge of origin” for its goods or services, but rather it is being used in Google’s paid service “to place its comparative or competitive offering” in the search results along with the trademark owner’s offering which indicates that there is “no use as a trademark”; and also in the case of Veda Advantage (supra) it was observed that keywords being indiscernible to the consumers are not being used by the advertiser to “distinguish the services of one trader from another” and cannot denote a connection in trade between them. Such use by the advertiser is merely to “identify internet users who may have interest in using its services”.

35. Counsels for Google, have argued that section 29(6) is to be read in addition and as a further elaboration of use under Sections 2 (2)(b) and 2(2)(c) that particularly identifies four specific forms of “use” of a trademark, which may qualify as infringement under section 29. Use of trademarks as keywords at the “back end” for triggering ads does not qualify as use, including under any of the subsections of section 29(6), especially by Google. It is their case that it has been held across various international Courts that internal use of the trademark at the backend for triggering ads does not amount to use and hence cannot amount to trademark infringement.

36. It is their case that, if there is no use of trademark for five years as contemplated under section 47(1)(b), which provides that a trademark may be removed from the register, if a trademark owner is permitted to claim to be making “trade mark use” of a trademark solely by using the term as a keyword at the backend without it otherwise appearing anywhere in the trademark owner’s advertising materials or business activities, “non-use ” as contemplated under Section 47 and its purpose would stand defeated.

37. The Counsels for Google have argued that, even if use is established, there are no elements for infringement and/or passing off under the TM Act which have been established. According to them section 29(1) stated that the use of a trademark is infringing only if it is “likely to be taken as being used as a trademark”. The High Court of New Zealand in Intercity Group (NZ) Limited vs. Nakedbus NZ [2014] NZHC

124 had held that use of a trademark as a keyword is an act which is not “seen” or “known” or understood by the consumer, it could thereby not be “taken as” anything, let alone amounting to use that this is “likely to be taken as being used as a trademark”. This view was also accepted by a Court of the United States of America in the case of Merck & Co. Inc. & Anr. vs. Mediplan Health Consulting, 425 F. Supp 2d 402 and it was observed that internal use of a trademark as a keyword on Internet Search results does not constitute a trademark use. They state that, Courts have around the world held that in cases of no visible appearance of a third-party trademark in keyword advertising, it cannot amount to infringement. Reliance has been placed on Reed Executive (supra) and Veda Advantage (supra). They also submitted the judgement of the Chancery Division Court in the case of Cosmetic Warriors Ltd. & Anr. vs. Amazon.uk. Ltd & Anr., [2014] EWHC 181 (Ch), wherein it was held that the use of third party trademarks as keywords to trigger advertisements does not constitute trademark infringement.

38. Google has taken a stand that there is no prima facie evidence of confusion for infringement under sections 29(2) and 29(3) of the TM Act which state that use of a trademark is infringing if it is “likely to cause confusion on part of the public”. They have contended that it is settled law that confusion to the public or even likelihood of confusion cannot be automatically assumed in a vacuum where the actual advertisement and corresponding website does not mislead the consumer in any way. In absence of any actual or visible use of a trademarked term within the text of an advertisement, no question of likelihood of confusion or deception arises. Mere triggering of an advertisement of a third party cannot per se give rise to an assumption of confusion in public. Counsels for Google have also relied on McCarthy on Trademarks and Unfair Competition to state that a computer user who sees a search engine results page and clicks on a non-deceptive advertising link resulting from a trademark keyword purchased by a competitor is not confused as to the source of affiliation of any ultimate purchase that is made from that website and after trial, almost all Courts have found no likelihood of confusion exists. They have placed reliance on the judgement of District Court of New York in Alzheimer’s Disease & Related Disorders Association vs. Alzheimer’s Foundation of America Inc. 307 F. Supp. 3d 260 (2018), to state that purchase of competitor’s trademarks as keywords alone, without additional behaviour that confuses consumers is not actionable.

39. Moreover, the relevant class of consumers who access the internet and, more particularly, use the Google Search Engine to search for the Plaintiff’s alleged marks are likely to be discerning class of users that is literate or at the very least semi­literate, having a basic understanding of how to search websites on the internet, having a basic knowledge of English language, understand how search results appear, and understand the difference between normal organic search results and Ads, and also are aware of the various industry players in the packing and moving business. Such users are also likely to be familiar with the websites like www.amazon.in, www.flipkart.com, www.bing.com, in.search and yahoo.com, all of which includes results for alternatives to the brand searched in a user’s query. Such users accordingly anticipate that they will encounter ads promoting alternatives to the term they searched, and they are very much in a position to make well-informed choices. The likelihood of confusion in respect of such a select class of consumers is even less likely and is in fact negligible, especially when Plaintiff is appearing prominently in the organic results and that the entire right-hand side of the page which displays the search results on the desktop, features information about the Plaintiff; as well as in sponsored links. They have stated that in any case consumers are unlikely to be confused by the appearance of the advertisement as the advertisement is clearly marked as ‘Ad’ and depicts the details of the advertiser and therefore there is no likelihood of initial interest of confusion.

40. Reliance has been placed on the judgement of District of Utah and North Carolina respectively of the United States of America in Jive Commerce LLC vs. Wine Racks Am., Inc Case No. 1:18-CV-49 TS-BCW and Passport Health LLC vs. Advance Health System, Inc., Case No. 5:17-CV-187-BO. They have also placed reliance on the case of Nebo (supra) wherein it had been observed that the use of a trademark as keyword does not create the possibility of confusing any products of the claimant with those of the advertiser and it is merely one of the technical criteria provided by the advertiser for displaying its ad in the online advertising spaces. The Supreme Court of South Africa (Court of Appeals) in the judgements in the cases of Cochrane Steel Products (Pty) Ltd. vs. M-Systems Group (Pty) Ltd & Anr. (227/2015) [2016] ZASCA 74 and Esquire Electronics Ltd. vs. Roopanand Bros., [1991] R.P.C. 425, had observed that it would be unnatural for a consumer to get misled by a clearly labelled ad, which clearly identifies the source. If neither the advertisement nor the advertiser’s website contains any reference to the trademark owner then consumers ought to conclude that it is not related to the trademark owner’s products or services, causing no confusion, and this was supported by absence of any evidence of actual confusion. Reliance is also placed on a judgment of a Coordinate Bench of this Court in Havells India Ltd. & Anr. vs. Amritanshu Khaitan & Ors., 2015 SCC OnLine Del 8115, to contend that advertising forms a part of commercial speech and it is an essential facet covered by Article 19(1) of the Constitution of India. Moreover, counsels for Google have stated that comparative advertisement is permissible and in the interest of public enlightenment and competition. Such use is permissible under the umbrella of fair use. Any comparison which is unfavourable to a competitor does not mean that it is dishonest or detrimental to the mark of the owner.

41. The Counsels for Google have argued that there is no prima facie basis to establish ingredients of section 29(4) of the TM Act, as there is no basis to establish that the use of Plaintiff’s alleged trademark as a backend trigger is without due cause or takes unfair advantage of the Plaintiff or is detrimental to the distinctive character or repute of the trademark. They have also argued that a case under section 29(5) of the TM Act is also not made out, as plaintiff’s case is that the advertiser or Google has used the Plaintiff’s alleged trademarks as its trade name or part of its trade name, business concern or part of the name, of its business concern dealing in goods and services in respect of which the plaintiff’s alleged trademarks are registered.

42. It is the case of Google that comparative advertising is permitted under sections 29(7) and 29(8) assuming that the use of trademark as a keyword is presumed to be “use” under section 29(6)(d). The trademark laws permit comparative advertising where a person can lawfully use his competitor’s registered trademark within the advertisement itself to compare his goods/services to those of the competitors’ and offer consumers with choices to make informed decisions. If the law permits honest usage of trademarks within the advertisement, it can be permitted as a back-end, invisible trigger for advertisements, even more so when the “overall effect” of the advertisement is neither misleading nor deceptive.

43. Another argument that has been advanced, is that the plaintiff has failed to make out any case of passing off, in the absence of establishing any confusion or misrepresentation to the end user or any harm to the plaintiff’s reputation and goodwill by any advertiser’s use of the Google Ads program. In relation to passing off, reliance has been placed on Vancouver Community College vs. Vancouver Career College (Burnaby) Inc. & Ors. 2017 BCCA 41 to state that mere bidding on a keyword is not sufficient to amount to a component of passing off and factors like how the advertiser has presented himself and his advertisement is what needs to be considered to test any misrepresentation. Reliance has also been placed upon Reed Executive (supra) to state that when the user clicks through the advertisement and then finds misleading material on the website of the advertiser and not on the advertisement of a search engine result page.

44. The Counsels for Google have argued that Google has not used the plaintiff’s trademarks “in course of its trade” or “in relation to the goods or services in respect of which the trademark is registered” or “within its advertising” or “in a manner to have taken unfair advantage of or in a manner detrimental to alleged distinctive character or repute of the plaintiff’s trademarks” or “in a manner likely to be taken as being used as a trademark”. According to them, a reliance on keywords at the backend for triggering Ads does not amount to either “use” of a trademark or “infringing use” or “passing off”, on the part of Google. This proposition, which has also been accepted by Courts of the European Union in Google France SARL vs. Louis Vuitton Malletier SA C-236/08 to C­238/08 (2010). In L’Oreal SA vs. eBay International AG C-324/09 (2010) it was held that the use of a trademark, if any in relation to the course of their commercial activities, such as offers for sale, signs corresponding to trademarks by the online service provider does not amount to use of those signs / trademarks by the service providers. Reliance has also been placed on Victor Andrew Wilson vs. Yahoo! UK Ltd. & Anr. [2008] EWHC 361 (Ch) and Fischerwerke GmbH & Co. vs. Beijing Baidu Netcom Science Technology Co. Ltd. & Others., [2013] Gao-Min-Zhong-Zi No.1620 They have quoted McCarthy on Trademarks and Unfair Competition to note that there is no sale of trademarks by the service provider, only sale of advertising space.

45. The stand taken by Google is that even if it were to be assumed that the “use” and “infringing use” of trademark on Google’s part, such use by Google is fair and in line with industry practice and is therefore exempt under section 30(1). It is their case that several other notable search engine providers such as Yahoo and Microsoft (Bing) also provide for a similar keyword advertising service, whereby they permitted use of registered trademarks not only as keywords but also within the text of the advertisement itself. Many e-commerce providers, such as FlipKart and Amazon, use registered trademarks in their backend systems to trigger offers for alternative brands and products. They have drawn an analogy to Netflix to state that even it shows alternatives to a particular title searched by a user, presumably using that information in its backend systems as well. The TM Act itself permits descriptive use of a trademark under Section 30(2)(a) or under Section 35; nominative fair use of a trademark under section 30(1) of the TM Act.

46. It is their case that the Competition Commission of India in the case of Matrimony.com Ltd. & Ors. vs. Google LLC & Ors., 2018 CompLR 101 (CCI), observed that the Google’s keyword bidding policy promotes competition and provided similar consumer benefits and choice as compared to traditional advertising. They place reliance on the case of Private Career Training vs. Vancouver Career College (Burnaby) Inc. 2010 BCSC 765, the Canadian Court held that the keyword advertising is no different than the accepted marketing practice of a company locating its advertisement close to that of a competitor’s in a traditional media such as Yellow Book and the said practice was not found to be false, deceptive or misleading. They have submitted that similar views have been taken by Courts of other jurisdictions such as Spain, South Africa and Canada, in the cases of Chocolat Lamontagne Inc. vs. Humeur Groupe-conseil Inc., [2010] Q.J. No. 7172; Cochrane Steel Products (supra); Google Ireland Ltd., Google Inc. & Google Spain S.L. vs. Fotoprix, SA, Appeal 151/2016.

47. Another submission made by the Counsels for Google is that the present suit is bad in law for non-joinder of necessary parties. It is their case that the issues in the present suit cannot be decided in the absence of the parties whose use of the Google Ads program the Plaintiff wants to restrain. It has been argued that the plaintiff is praying for an in rem decision that would affect all potential advertisers without making those advertisers as party to the proceedings. They state that entities such as Safe Packers Movers Pvt. Ltd., Gati Ltd., DTC Cargo Packers and Movers Pvt. Ltd., Leo Packers and Movers India Pvt. Ltd., etc. which have been impugned in the present proceedings without taking any steps to implead the owners of such websites as parties to the suit and that in their absence the interim injunction cannot be effectively adjudicated.

48. Mr. Kshitij Parashar learned Counsel who appears for defendant No.2, Justdial Ltd. has argued that the main objective of defendant No. 2 is to provide people with immediate access to fast, reliable and comprehensive information on businesses, products and services across India and that the database of defendant No.2 comprises of approximately 6 million business listings across various cities and towns in India as of June 30, 2011. It has been submitted that defendant No.2 Company provide two types of listing i.e. Free/Non-Paid listing and Paid Listing to the business entities who want to register at the search engines of the defendant No.2. It was also submitted that many users or business entities register themselves as the Free/Non-paid Listers and that these Free/Non-paid Listing of the user or the business entity can be created by any person by just logging on the website of the of the defendant No.2 Company and thereafter by entering the details of their business entity or services which they intend to provide. In this regard he has placed reliance on the screenshots of the website of defendant No.2 reproduced in their written statement. He stated that the information so entered needs to be validated through a mobile verification of the person making such an entry and once the validation is done the entry goes live. Once this is done, the users can visit and change the company details as per their requirement. He has stated that the defendant No.2 also provides an option of “REPORT ABUSE”, through which if any wrong details have been updated for any company the user or the affected party can comment on it which gets rectified on a priority basis.

49. He then went onto to explain the Paid listing option which is available on the website of defendant No.2 where any prospective user who wishes to avail the services of the defendant No.2 has to pay a certain amount to defendant No.2. The process of paid listing has been explained as under:

i. A telemarketing executive of the defendant No.2 would schedule an appointment with the prospective Advertiser.

ii. Thereafter the prospective Advertiser would be visited by the Marketing Executive of the defendant No.2, who would then explain to him the various categories of listing e.g. platinum, diamond, gold, etc. along with the different payment options.

iii. Once the mode of payment and the contract amount is finalised, the prospective Advertiser would then sign a contract with defendant No.2 after agreeing to the terms and conditions therein.

iv. Only after the contract is finalised and the formalities completed the information of the said Advertiser would go live on the website of defendant No.2.

v. Any customer who calls the defendant No.2 for an inquiry regarding the services which are also provided by the said Advertiser, only once a confirmation is received from the said customer the defendant No.2 shares the customer’s number with the advertiser.

50. He explained that the basic difference between the Free/Non-Paid listing and the Paid Listing is that the Paid Listing Advertisers would get leads from the defendant No.2 Company on the instance when any customer calls the helpline number of the defendant No.2 for certain inquiries regarding any service/goods. That the information retrieval officer (IRO) after responding to the said inquiry of the customer also suggests similar services which are also being provided by other company(s) and once the customer is satisfied and confirms that his information can be shared, it is then forwarded with the paid listing advertisers of defendant No.2.

51. It is the case of the defendant No.2 Company, that it cannot keep a regular watch on the free listing or the paid listing. Defendant No. 2 Company believes the information provided by any prospective advertiser to be correct and genuine. That in case a person is listed as a free lister/paid lister he can change his information as and when he wants and it is practically impossible for the defendant No.2 to keep a regular watch on it. He reiterated the option of “REPORT ABUSE” wherein if a wrong detail is updated for any company, the user or the affected party can comment on it, after which it gets rectified on a priority basis. Mr. Parashar has referred to the Warranty Disclaimer Policy on its website, which clearly states that the defendant No.2 would not examine the authenticity/reputation of the advertisers and the same would be the sole responsibility of the advertiser. He has referred to the terms and conditions of the contract which specifically states that defendant No.2 does not have any liability towards the information which is being provided by the listers and the same belongs to the listers alone.

52. It is the case of Defendant No.2 that, it has not put any advertisement on its website infringing the trademarks/copyright of the plaintiff. It has been argued that the listing which has been questioned, does not belong to the plaintiff as it is DRS LOGISTIC and not DRS LOGISTICS. Mr. Parashar has referred to the screenshots which have been reproduced in the written statement of defendant No.2. It is the case of defendant No.2 that it has not infringed upon the trademark or copyright of the plaintiffs and that it is also not gaining any monetary benefits from the free listing as the same have been provided by defendant No.2 for the sake of convenience to the general public.

53. Mr. Lall in his rejoinder arguments has stated that the plaintiff’s grievance is against the defendants’ services which enable third party infringers and counterfeiters to direct internet traffic towards themselves and receive inquiries and deliver on packing and moving services by deceiving consumers into believing that the services are being provided by the Plaintiffs. He has argued that many users have lost articles and household goods on account of such deception and the services of the defendants enable dubious operators to set up fraudulent accounts with the defendants temporarily, deceive consumers and then disappear. Had it not been for the services of the defendants, such parties would have no means of promoting or advertising their services and perpetrating such fraud. The services offered by defendant Nos. 1 and 3 include, Google Adwords, Google Maps and Just Dial, i.e., defendant No.2 enables third parties to provide users fraudulent websites, fraudulent telephone numbers and fraudulent addresses, due to which ultimately people have lost their household items and valuables. In this regard Mr. Lall has referred to affidavits of Ramesh Agarwal and Gaurav Bakshi, the latter who got confused and suffered huge damages due to such confusion created by the Defendants. Additionally, he has also referred to newspaper articles in order to establish this point.

54. Mr. Lall argued that the algorithm developed by Google permits the mischief that has been complained of by the plaintiff. According to him, Google developed algorithms that look for relevance, i.e., it connects the Keywords to the relevant service provided which in this case “APM” is linked to moving services. They have argued that these keywords are sold to third parties by Google on bidding and Google then charges a fee for such bids and for successful clicks. It is his argument, that it is correct that keywords are never sold, by them; they are kept under ownership of Google and leased to the highest bidder. This he states is the case of Google trading in Trademarks of third parties.

55. Mr. Lall has argued that there is an admission on behalf of Google that its Keyword Suggestion Tool provides the necessary historic information to induce third parties to select keywords consisting of well-known trademarks. Google admits that it collects information on the plaintiff and its use of the keyword such as ‘Agarwal Packers and Movers’ and this data is then used to induce third parties to select this trade mark as their keyword and attaches it to their website. In the case when someone looks for ‘Agarwal Packers and Movers’, Google is able to direct that traffic meant for the plaintiff, to the site of infringing third parties. Mr. Lall, has argued that this is a classic case of direct infringement and inducement to infringe.

56. He has referred to the statement by defendant No.3 in its written submission, “Trademark Policy permits use of the trademarked term in the Ad-Text by resellers, informational sites and authorized advertisers, if they meet the necessary requirements, consistent with the applicable law in India”, which does not form part of the Court order dated January 22, 2020 and cannot be an exception now sought to be carved out by Google. The same is liable to be disregarded. He argued that, such permission can only be granted by Google which, according to their own statement, makes a determination whether the user of the trademark term is a reseller or authorised agent or not. This he stated was proof that Google plays an active role in granting keywords to third parties.

57. Mr. Lall has countered the submissions made by the Counsels for Google with respect to Google’s review of an advertisement by stating that such submissions are beyond pleading and therefore liable to be disregarded. He stated that this too would go to show that Google plays an active role in selection of keywords and that Google possesses the capability to assess and reject mischievous ads and keywords selected by advertisers, but chooses to ignore them with an incentive for profiteering.

58. Mr. Lall argued that in the pleadings Google has admitted that keywords are meta-tags. In the plaint these terms have been used synonymously by the plaintiff, which according to him, are admitted in the pleadings. He stated that, the reliance placed on Veda Advantage (supra) is misplaced as in paragraph 130 it was stated that keywords are “words embedded in metatags”; and that meta-tags are used in indexing and ranking of websites, which is exactly what keywords are used for, i.e., they are one and the same thing. He argued that it was the Defendants who failed to distinguish the two binding precedents of law in People Interactive (supra) and Mattel Inc. (supra).

59. Mr. Lall has countered the argument advanced by the Counsels for Google that use of trademarks as Keywords does not amount to “use” under the TM Act by stating that when an entity participates in the Google AdWords Program it licenses the use of its registered trademark to Google for use as a keyword. He referred to paragraph 60 of Veda Advantage (supra) to state that it had been recorded in the said judgment that, sponsored links were advertisements, which Google’s AdWords program allows advertisers to create, change, and monitor. They are triggered by keywords privately supplied by the advertiser to Google. Courts while discussing the law in the context of the United Kingdom (‘UK’ for short) and European Union (‘EU’ hereinafter) stated that in the European context it was stated that the keywords used in course of trade in respect of goods or services would amount to use as a trademark. However, it was held that the laws in Australia were different from the laws in the UK and similarly the laws in India are different and recognise that the use of keywords / meta-tags constitute use and infringement of a trademark.

60. Mr. Lall has argued that the interpretation of the decision by Google in Reed Executive (supra) is incorrect as the Court in that case had categorically expressed itself when it in paragraph 140 stated that, whether the use as a reserved word can fairly be regarded as use in course of trade or not, on which the Court expresses no opinion. In paragraph 142 the Court again restrained itself from expressing opinion and hence there is no finding at all on the question that the use of keywords does not equal to use in trade.

61. He argued that reliance placed on Nebo (supra) is misplaced as the Article 1484 of the Civil Code of the Russian Federation is very different from the Indian Law. Similarly, the laws of New Zealand are completely different from Indian Laws and therefore the decision in the cases of Intercity Group (NZ) (supra) and NZ Fintech (supra) would not be applicable in the present case.

62. He stated that section 29(6) is to be read with section 29(7) and indeed is in addition to the definition of “use” under section 2(2). Admittedly use of a trademark in the keyword by Google amounts to use “in advertising” as per sections 29(6), 29(7) and 29(8) and it is also admitted that a Google advertisement cannot be triggered without keywords. This indicates that it is an integral part of “use” in advertising and in background of the instant case where the question of “use in advertising” amounting to “use” is concerned, foreign cases cannot be relied on as the laws in India are very specific when it comes to “use in advertising” constituting “use” of a trademark. If a registered trademark is used in a keyword, it would constitute use of trademark and can be used to ward off an action for cancellation.

63. The argument, that even if the use is established, elements of infringement/passing off under the TM Act have not been established, has been opposed by Mr. Lall by arguing that there is no requirement of visibility of a trademark to constitute infringement. Such limitations to infringement are only figments of imagination of Google and are not supported by law. A trademark, need not be visible which is apparent from section 29(9) wherein it is stated that infringement may occur even by spoken use. So is the case of a keyword. He argued that the use in any case is not invisible as Google actually makes the plaintiff’s trademark visible to its customers/ prospective advertisers by offering it to be selected by third party advertisers.

64. He submitted that in the case of Mattel Inc.(supra) and People Interactive (supra) it was held that use of trademark in meta-tags constituted use and therefore the visibility of a trademark is not a prerequisite to constitute infringement. Since it is his case that meta-tags are keywords, the use of keywords would constitute infringement and in the direct applicability of aforementioned judgments on the issue, foreign laws should not be relied upon. He argued that Google has misread section 29(3) of the TM Act which categorically states that where marks are identical, confusion on part of the public is presumed; in this case Google admittedly sells and pawns an identical trademark of the plaintiff and in fact correlates the use of an identical mark to identical services, by its specially made algorithms, which amounts to “taking unfair advantage” and is detrimental to the distinctive character and repute of a mark.

65. Google relied on McCarthy on Trademarks and Unfair Competition and asserted that a computer user who seeks a search engine results page and clicks on a non-deceptive advertising link resulting from a trademark keyword purchased by a competitor is not confused as to the source or affiliation of any ultimate purchase that is made from that website. Mr. Lall stated that even if this is taken to be true, would Google ensure that the advertising is non-deceptive. He contends that Google has stated that it does not control the content in the advertising. He argued that this submission of Google is not relevant to the case as advertisers use a host of techniques to confuse its consumers and Google intentionally pawns well-known trademarks to such parties. According to him, as per section 29(7) there is no requirement of confusion, mere use in advertising amounts to infringement and similarly for the use in advertising, confusion is not a pre-requisite under section 29(8). The use of plaintiff’s trademark as a keyword is not authorised by the plaintiff which is a pre-requisite under section 29(7). Moreover section 29(8) has been violated since the plaintiff’s trademark is being sold as a keyword. Use by Google cannot be said to be honest use under any circumstances, especially when Google does not ensure that the overall effect is neither misleading nor deceptive. He also stated that on the basis of the material placed on record which shows instances of actual confusion and passing off, the submissions made by Google that there is no case of passing off, is unacceptable. In contradiction Google’s argument that no case of use of a trademark or infringement is made out under any part of section 29 of the TM Act. Mr. Lall stated that the terminology used in Section 29(7) of TM Act is “material intended to be used….for advertising goods or services” and keywords are used by Google to trigger advertisements. It is therefore admittedly a “material” intended to be used for advertising. The term “within its advertising” used in the note by Google does not exist in TM Act. It is the case of the plaintiff that there is no exception to section 29(7) for fair use; there is no fair use as evidence has been filed by the plaintiff showing actual confusion on account of mischievous advertising and that none of the assertions with regard to statutory exemption under sections 30 and 35 of the TM Act have been pleaded and there is no evidence that other e-commerce providers also use keywords in their back-end programming.

66. Google also asserts that discerning class of users have basic understanding of how to search for websites on the internet and have basic knowledge of English language and understand the difference between organic search results and Ads. Mr. Lall argued that Google is available in a number of different languages and English is not the primary language of Google. Even otherwise, majority of the people in India are not well versed in English and are likely to be confused between organic results and Ads which are not clearly demarcated. He stated that Google has not placed any evidence to prove these submissions and this argument is covered by the judgment of Baker Hughes Ltd. & Ors. vs. Hiroo Khushlani & Ors. 2004 (29) PTC 153 wherein it was held that the argument of well informed consumers is not a ground available in defence for an action of infringement and passing off.

67. Mr. Lall cited the case of Merck & Co. (supra) wherein the Court held that there is nothing improper with defendant’s purchase of sponsored links to their websites from searches of keyword “ZOCOR”, because the defendants therein actually sold “ZOCOR” manufactured by plaintiff on their website.

According to him, the Court relied upon the Geico case to hold that Google’s sale to advertisers of right to use specific trademark as keywords to trigger their ads would constitute use in commerce.

68. Google relies on foreign decisions of Jive Commerce LLC (supra), Passport Health (supra), Nebo (supra) and Cochrane Steel Products (supra) to assert that consumers cannot be misled by a labelled ad. Mr. Lall rebutted this submission by stating that Google gives no assurances, those advertisements which use the plaintiff’s trademarks as keywords would have all these features. He pointed out that the plaint shows many instances where it is impossible to discern to whom a website belongs to. He stated that in many instances the keyword triggers the advertisement, which shows a phone number and the consumer, under the impression that he is calling the plaintiff, calls on the phone number and gets duped by the advertiser, i.e., a fraudulent party.

69. He argued that in the Cochrane Steel Products (supra) the Court found that Google earns revenue through keywords, that advertisers purchase keywords and that the highest bidder gets the keyword. The Court in that case questioned, whether the Google advertisement which appears in response to the search using the keyword does not enable normally informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to in Google advertisement originates from the proprietor of the trademark or an undertaking economically connected to it or, which originate from third parties. He stated that in that case too, the Court cautioned against use of foreign law and that the ads should be clearly marked different from organic results and held that use of trademarks as keywords could only be permitted if there is no confusion. In the case of Vancouver Community College (supra) the Court held that keywords can cause confusion.

70. Mr. Lall argued that the case of Google France SARL (supra), supports the case of the plaintiff, the conclusion arrived by the Grand Chamber was use of a trademark as keyword does constitute use in relation to goods or services. Such “use” has been further held to have the capability of adversely affecting the function of indicating the origin of the mark. There was also a finding that that even the Internet Service Provider is liable if the role played by the Internet Service Provider is not neutral and the moment it acquires knowledge of the unlawful nature of those data or of that advertiser’s activities, it fails to act expeditiously to remove or to disable access to the data concerned.

71. He stated that in the case of L’Oreal SA (supra) there were several findings in favour of the plaintiff, he stated the said judgment was based on article 14 of the EU Directive 200/31 which stipulates a requirement wherein the intermediary does not have actual knowledge of the illegal activities and upon obtaining such knowledge acts expeditiously to remove or disable access to the information. The Court ultimately found that the proprietor of a trademark is entitled to prevent an online marketplace operator from advertising – on the basis of a keyword which is identical to his trademark and which has been selected in an internet referencing service by that operator. The Court also stated that the use of a keyword is also objectionable. This is especially so where the intermediary plays an active role as to give it knowledge of, or control over, the data. The Court had held that when an operator played an active role in promoting the product, the safe harbour provisions would not apply to such an operator.

72. In case of Victor Andrew Wilson (supra) it was held that the plaintiff therein was the owner of the “Mr. Spicy” trademark and attempted to sue third parties and Yahoo for choice of descriptive words such as “Spicy”, “spicy soup”, etc. as keywords. It was on this basis that the Court concluded that there was no infringement and there could be no objections to Yahoo soliciting third party use of “Mr. Spicy” as a keyword in return for payment, if the keyword is going to attach goods and services that are different from those protected in that case. This case too Mr. Lall argued is favourable to the plaintiff but recognises the weakness of such a descriptive mark to be restricted to goods/services for which it is registered.

73. Mr. Lall went on to argue that Google’s argument that the Google Ads program is pro user choice and permissible is completely flawed as the same is contrary to law. The DG report set out in Matrimony.com Ltd. (supra) tells how Google runs its AdWord policy and how it is actively involved in the selection process of keywords by advertisers.

74. He stated that the case of Private Career Training (supra) relates to specific advertising by law. The case concerned the name of particular university leading to the students getting confused. In that case it was stated that the sponsored links were displayed along with organic search results separated by a vertical line and within either a yellow or blue shaded box. In both the cases the search results are clearly designated as such or as “sponsored results”. Conversely, in the present case Google has refused to make such a demarcation. In that case the Court opined that selection of the university had a high financial cost and personal commitment, hence the students are expected to exercise a high degree of care, which is contrary to the present case and that these findings are contrary to the decision in Baker Hughes (supra).

75. Mr. Lall has submitted that the decision in Chocolat Lamontagne (supra) is concerned it has been clearly recorded therein that Google sells keywords which is contrary to their claims that keywords are never sold or purchased. In this case too Google used a yellow shaded box to identify the sponsored links. The plaintiff in that case had not been successful in showing customer confusion on account of defendant’s activities of a fundraising drive and use the of the term “Alternative to” the plaintiff’s brand.

76. He relied on the decision of the Competition Commission of India in the case of Google India Pvt. Ltd. vs. Addl. Commissioner of Income Tax, LNINDORD 2017 ITATND 3508, to state that Google reviews keywords. Google has certified partners who help manage advertisers’ AdWords accounts and that Google monitors user behaviour and the keywords planner tool suggests the suitability of keywords that are useful in particular month of the year. He stated that it was recorded that Google’s AdWords program changes advertisements daily and that Google does not merely sell advertising space but is actually rendering services.

FINDINGS

77. Having heard the learned counsel for the parties, and perused the record, the grievance of the plaintiff is when a user on internet searches for the plaintiff by typing “Agarwal Packers and Movers” despite the plaintiff having a registered trademark in its favour with regard to the said mark. The website of the advertiser who may be a competitor of the plaintiff or having similar / deceptive mark pops up over and above the organic results pertaining to the plaintiff within the sponsored results by using Google’s services. This is because of the AdWord program of the defendant Nos.1 & 3 under which an advertiser having AdWord account can create, select, keywords based on which their advertisement shows up as a sponsored link thereby diverting the traffic from the plaintiff’s website to the advertiser.

78. It is clear from the above that google being a search engine does give information about the number of searches made, using any popular keyword, that too in the same filed of business. So, assuming that, the advertiser chooses the keyword, but that is with the help of the information provided by Google. In the case in hand, the keyword is “Agarwal Packers and Movers”, which keyword, has been selected by the advertiser on the basis of statistical information provided by Google and the keyword is the registered mark of the plaintiff. This factum is not disputed by Mr.Sethi and Mr.Kathpalia. So, I proceed on the basis that the keyword being “Agarwal Packers and Movers” is also the registered trademark of the plaintiff. The question which needs to be determined is whether this use of the mark as a keyword shall amount to infringement of trade mark and or passing off.

79. The submission of Mr.Sethi was that the use of the keyword does not amount to “use” under the TM Act, inasmuch as section 2(2)(b) requires a trademark to be used in a printed or other visual representation; before “use” under Section 2(2)(c) can be examined. In other words, a trade mark used as a keyword which is invisible to the consumer, is not a use of the trademark. He also stated that Section 2(2)(c) of the TM Act requires the plaintiff’s trademark to be used as a part of any statement availability, provision or performance of its services for it to qualify as a trademark “use”.

80. To understand the submission, it is necessary to reproduce the relevant provisions of Sections 2(2)(b) and 2(2)(c) along with Sections 29(6), 29(7), 29(8) and 29(9) of the TM Act on which reliance was placed by Mr. Lall:

“(2) In this Act, unless the context otherwise requires, any reference-

xxx                    xxx                   xxx

(b) to the use of a mark shall be construed as a reference to the use of printed or other visual representation of the mark;

(c) to the use of a mark,-

(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;

(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;

xxx                         xxx                     xxx

29. Infringement of registered trade marks.

xxx                         xxx                     xxx

(6) For the purposes of this section, a person uses a registered mark, if, in particular, he—

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising—

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark.

(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.”

81. On a reading of the aforesaid provisions it is clear, that Section 2(2) of TM Act states, that unless the context otherwise provides the use of the mark shall be construed as a reference to the use of printed or other visual representation of the mark in relation to the goods or services, but the reading of Sections 29(6), 29(7) and 29(8) of the TM Act, it is seen that the legislature has expressly departed from the ordinary construction of the expression “use” under this Act to include instances to construe “use” under Section 29 of the Act.

82. Mr.Lall is right in saying that Sections 2(2)(b) and 2(2)(c) have to be read in addition to Section 29(6), 29(7), 29(8) and 29(9). Having said that a perusal of Section 29(9) makes it clear that an infringement of a trademark can be by way of spoken use which is different from printed or visual representations of the mark. That is invisible use of the mark can also infringe a trademark.

83. This I say in view of the Judgment of this Court in the case of Hamdard National Foundation & Ors. vs. Hussain Dalal & Ors., 202 (2013) DLT 291, wherein the Court while considering the suit for infringement, passing off and disparagement held that on a reading of Section 29 (9) it is clear that the said section provides that it is an infringement of the trademark by way of spoken use of the words which are contained in the trademark and the visual representation thereof. So, it follows, what is infringement, is not merely visual representation of the product in bad light under the provision of Section 29(9) but it is infringement of the trademark if the same is caused by way of spoken use of the words and the visual representation of the said words. Furthermore, a Division Bench of this Court in the case of Kapil Wadhwa & Ors. vs. Samsung Electronics Co. Ltd. & Ors., 194 (2012) DLT 23 has found usage of a trademark in the source code i.e., through meta-tagging even though invisible to the end-user / consumer to be illegal. Albeit the appellant therein sold imported goods manufactured by the respondent therein although without the consent of the latter.

84. Having said that, the question is whether the “invisible use” of a mark, as contended by Mr. Sethi shall not amount to “use ” within meaning of Sections 2(2)(b) and 2(2)(c) of the TM Act as it is not a case which falls within the meaning of Section 29. This issue is no more res integra, at least in view of the Judgment in the case of Amway India Enterprises Pvt. Ltd. and Ors. vs. 1MG Technologies Pvt. Ltd. and Ors., 260 (2019) DLT 690, wherein a Coordinate Bench of this court while considering the use of the Mark “Amway” by third party e-commerce platforms, for promoting their own sales, has held the use of a mark in meta-tags or in advertising without the consent of the proprietor as a violation of trademark rights of the owner. In fact, the Court also held that Section 29 (8) also makes it clear that if any advertising of a mark takes unfair advantage of the mark or is detrimental to its distinctive character even without sale taking place there is an infringement.

85. On similar lines, is the Judgment of the Bombay High Court in People Interactive (I) Pvt. Ltd. (supra) wherein the Court observed that the defendant No.1 was using the plaintiff’s proprietary mark shaadi.com and its domain name www.shaadi.com as part of meta-tags in the first defendant’s website, which was held by the Court to be an attempt to misappropriate the plaintiff’s mark and hijack the internet traffic from the plaintiff’s site by a thoroughly dishonest and malafide use of plaintiff’s mark and name in the meta-tags of his own rival website. Paragraph 14 of the Judgment is reproduced as under:

“14. I believe the Plaintiffs have made out not just a strong, but an overwhelming prima facie case. Dishonesty is writ large on the actions of the 1st Defendant. He has used the Plaintiffs’ mark shaadi.com as a suffix to another expression. He has attempted to misappropriate the Plaintiffs’ mark. He has made false claims regarding the extent and size of his service. He has, plainly, hijacked Internet traffic from the Plaintiffs’ site by a thoroughly dishonest and mala fide use of the Plaintiffs’ mark and name in the meta tags of his own rival website. The distinctive character of the Plaintiffs’ mark is thus diluted and compromised by the actions of the Defendant. The 1st Defendant’s action is nothing but online piracy. It cannot be permitted to continue.”

86. Having noted the above Judgments, it is clear that the use of the mark as meta-tags was held to be infringement of trademark. It follows, that invisible use of trademark to divert the traffic from proprietors’ website to the advertisers’ / infringers’ website shall amount to use of mark for the purpose of Section 29, which includes Section 29 (6) and 29(8), related to advertising.

87. It is the submission of Mr. Sethi that there is a difference between the meta-tags and keywords, inasmuch as meta-tags, which are words inserted in the HTML code of the website; unlike keywords which are only a component of the AdWord Program of Google. This submission of Mr.Sethi is denied by Mr.Lall by contending keywords are commercial meta-tags used in the AdWord Program of Google on payment of charges on a pay-per-click basis. The concept of meta-tags and keywords can be understood in the following manner which I have culled out from the judgments given by various High Courts of this country and also pleadings of the defendant Nos.1 and 3 which I reproduce below: