India: Are Trademark Proprietors Compelled To Invest In The Google Ads Program To Safeguard Their IPR?

SUPREME COURT SEALS THE LAW ON GOOGLE ADS PROGRAM AND TRADEMARK INFRINGEMENT.

There has been considerable confusion regarding the intellectual property rights implications of keyword advertising, exacerbated by conflicting rulings from various High Courts. The recent ruling by the Supreme Court in Makemytrip (India) Private Limited Petitioner(s) Versus Google Llc & Ors.¹ clarifies it's stand, establishing the rule of law in such cases. This SLP was lodged on December 14, 2022, against the ruling of a Division Bench (DB) of the Delhi High Court, which determined that using trademarks as keywords does not constitute infringement in the absence of confusion or unfair advantage. The Apex Court rejected MakeMyTrip's (MMT) SLP concerning Google's alleged misuse of MMT's trademarks as "keywords" in Google Ads.

The plaintiff initiated the lawsuit to safeguard its assortment of registered trademarks, which Defendant No.1, Booking.com B.V, employed as keywords in the Google Ads Program to promote its services through advertisements displayed alongside search results on Google. The plaintiff contended that Booking.com's utilization of Makemytrip's trademarks as keywords frequently results in Booking.com's advertisement appearing as the top result when users search for 'MakeMyTrip' on Google.

If one conducts a search for 'MakeMyTrip' on Google's search engine, the Court observed that a sponsored link to Booking.com appeared after Makemytrip's own organic search result approximately seven out of ten times. MakeMyTrip's essential contention was that Booking.com's advertisements or links should not appear as sponsored links on the results page of a Google search for 'MakeMyTrip.' However, such a right cannot reasonably be derived from the Trademarks Act. The Court determined that this action alone did not inherently constitute trademark infringement, as it did not result in confusion for the internet user. Given that Booking.com is also a renowned platform providing similar services, the Court concluded that there was no potential for confusion between the services offered by MakeMyTrip and those provided by Booking.com.

This verdict resonates with the ruling in the Google v. DRS Logistics (P) Ltd. & Ors.² , wherein the court acknowledged that assuming an internet user is solely seeking the proprietor's address when entering a search query containing a trademark is fallacious. The user may indeed be searching for product or service reviews, or exploring competitors in the same domain. The Court does not classify keyword advertisements as 'use' under Section 29(1) of the Trademarks Act. The judgement asserted that the 'likelihood of confusion' test is inapplicable to keywords, given the presumption that internet users operating a search engine are familiar with its basic functions. The concept of initial interest confusion is deemed irrelevant here, according to the judgment.

OUR OBSERVATION

As per the recent judgements, the clandestine utilization of the mark by a non-owner might simply serve as a distraction or redirection. It doesn't inherently result in consumer confusion or business detriment. The Court's decision appears to be primarily grounded in the presumption of business loss. Ideally, concrete evidence, such as consumer surveys or similar methods, would have been preferable to grasp this concept because Indian trademark infringement law emphasizes both consumer confusion and the rights of traders.

In the whole scenario, Google comes out as the absolute winner. The Google Ads program permits any entity to bid on keywords, potentially incorporating trademarks belonging to others. Competitors engage in bidding wars over each other's trademarks to enhance the visibility of their products and services on the search engine. Consequently, this practice compels trademark proprietors to bid on their own trademarks to prevent competitors from utilizing them to advertise their own offerings. Thus, it obliges the owner to invest in the Google Ads Program.

One cant help delving on the Single Judge's observation in the MMT v Booking.com' case that the Plaintiff is being forced to bid for his own registered mark on the Google

Ads Program on a daily and monthly basis. As per the Plaintiff's submissions, the monthly investment being made by the Plaintiff is to the tune of Rs. 6 crores. This is precisely because of the fact that Google allows even non-proprietors, such as Defendant No.1 in the present case, to bid for a registered trademark as a keyword.

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