Google Cannot Absolve Itself From Liability Of Ensuring That Keyword Is Not An Infringement Of Trademark: Delhi High Court

The Delhi High Court has observed that Google cannot absolve itself from the liability of ensuring that a keyword is not an infringement of trademark.

Justice V Kameswar Rao also observed that 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 or Ad-text may constitute an infringement of a trademark or it's passing off.

The Court also opined that the use of trademarks as keywords amounts to "use" in the course of trade in terms of the Trademarks Act.

The Court was dealing with an application seeking ad interim ex parte injunction filed against Google India, Google LLC and Just Dial by the plaintiffs thereby restraining them from using or permitting third parties to use plaintiffs' registered trademark AGARWAL PACKERS & MOVES 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.

While the Court proceeded with adjudicating the two applications, the question framed by the Court was whether providing a trademark of an owner as a keyword to a third party would amount to infringement of a trademark?

It was the plaintiffs' case that several third party infringers use the services of Google for inserting their infringing advertisements when a user on the internet looks for them by typing "Agarwal Packers & Movers". According to the plaintiffs, despite having decrees in its favour against third parties, Google did not stop the use of infringing advertisements on their platforms.

Example was given of a company called Agarwal Packers India (Agarwal Express Links Pvt. Ltd.) against whom a decree was passed, however, according to the plaintiffs, it continued to appear in the keyword, Ad-title and URL of google.

It was thus the plaintiffs' case that obtaining orders against individual advertisers on the Google platform was ineffective due to which it was compelled to initiate the suit against defendants.

On the other hand, counsel appearing for Google submitted that 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.

According to Google, its Ads program merely provided an advertising platform and interface for creating and placing an Ad on Google Search and that a keyword provided by the advertiser is treated just as a backend trigger for an Ad to be displayed and is never used in a trademark sense.

It was also submitted that Google Ads Trademark policy 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. It was also argued that the use of Trademarks as keywords does not amount to "use" under the Trademarks Act.

Hearing the counsel for plaintiffs and defendants, the Court was of the view that an infringement of a trademark can be by way of spoken use which is different from printed or visual representations of the mark and an invisible use of the mark can also infringe a trademark.

Relying on the relevant judgments on the subject, the Court observed thus:

"…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."

Adding that Google sees the quality of the landing page which is primarily the website of the advertiser which may or may not have displayed the infringed trademark, the Court observed thus:

"…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."

On the aspect of Google investigating any infringement of trademark in the Ad-titles, Ad- text and keywords, the Court took note of the fact that according to Google's policy, investigation qua use of the trademark as a keyword is only confined for the Europe Union. 

However, the Court was of the view that the fact that Google investigates an Ad where use of trademark as a keyword is being used, there cannot be any reason why such a procedure is not followed in India.

"…it is clear from Google's EU and EFTA policy that Google provides a higher duty of care in a jurisdiction where large portions of the population are internet literate. This aspect further fortifies my finding as to why such a policy should be followed in India," the Court added.

In this backdrop, noting that Google being an intermediary, the Court further added that there is an obligation on it's part to ascertain that the keyword chosen by the advertiser is not a trademark and even if it is a trademark the same has been licensed or assigned.

"Not ascertaining this factum by Google, it cannot take / seek the benefit of exemption under Section 79 of the IT Act as it has been held in the above judgment as amounting to legalising the infringing activity," the Court said.

Accordingly, allowing the applications, the Court directed Google to investigate any complaint made by the plaintiff alleging use of its trademark and its variations as keywords resulting in the diversion of traffic from their websites to that of the advertiser.

Google was also directed to investigate and review the overall effect of an Ad to ascertain that the same is not infringing or passing off the trademark of the plaintiff.

"If it is found that the usage of trademark(s) and its variations as keywords and / or overall effect of the Ad has the effect of infringing / passing off the trademark of the plaintiff then the defendant Nos.1 and 3 shall restrain the advertiser from using the same and remove / block such advertisements," the Court added.

Title: M/S DRS LOGISTICS (P) LTD & ANR. v. GOOGLE INDIA PVT LTD & ORS.

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