With the growth of technology and the increasing dependence of people on the internet, businesses have also made a shift to the virtual world. In today's times, one of the best ways of advertising is online advertising. Displaying the aptest advertisements to the prospective customers at the right time is the main objective of online advertisements.
Keyword advertising on search engines using keyword research is the most common tool that businesses use to augment their existence on the internet. Keywords are words, expressions, symbols, or numbers used as search strings in a search portal by the users. For example, if a company sells footwear, it is made sure that keywords like "sneakers", "women's boots", "running shoes" and the like direct the seeker to the website of that company. There are keyword advertising programs that enable advertisers to procure certain words/ phrases that would direct the searcher towards their products or services.
A problem arises when a registered trademark is used as a keyword by a third party to link its website to promote its goods and services. This creates confusion in the minds of the consumers about the source, owner, or developer of the product/service, which negates the entire purpose of a trademark which is to reduce doubt or uncertainty among prospective customers. Further, when a third party purchases a keyword that is a registered trademark, it runs the risk of infringement. It is often argued by the trademark holders that permitting a rival or a competitor to use a trademark as a keyword on search engines allows the latter to take an unfair advantage over the registered holder of the trademark.
Section 29 of the Indian Trademarks Act, 1999 states that infringement of a registered trademark occurs when a person not being a registered proprietor uses in the course of trade, a mark identical or deceptively similar concerning goods or services in respect of which the trademark is registered.
Some cases have been filed and decided on the above-stated concern. The issue of trademark infringement through keyword advertising was discussed for the first time in India in the case of Consim Info Pvt. Ltd. v. Google India Pvt. Ltd. & Ors., 2013(54)PTC578(Mad). In this case, the Appellant which is a leading company in online matrimonial services had registered several trademarks such as Bharatmatrimony, Tamilmatrimony, etc. It was thus prayed by them that the Respondents be restrained from using these registered trademarks or their variants as a keyword for internet search. The Respondents contended that their use of the Appellant's trademark did not constitute use "in the course of the trade" and further, that the use of such trademark was in alignment with honest industrial and commercial practices. Therefore, such use would not amount to infringement or passing off. The Court eventually held that the registered marks of the Appellant were descriptive in nature in respect of the services provided, thus nullifying the liability of both the advertiser as well as the search engine.
In the case of DRS Logistics Pvt Ltd & Others vs Google India Pvt Ltd & Others, CS (Comm) 1/2017, the Plaintiff sought to restrain Google and other third parties from using its registered trademark "Agarwal Movers and Packers" as a keyword in setting off search results on Google ads. The Court, in this case, held that the keyword even if assumed to be invisible, directed internet traffic to the website of the competitor/ advertiser thereby confusing the minds of the ordinary public about the origin of the webpage and whether it belonged to the Plaintiff or not. Thus, it was held that the effect of infringement/ passing off of the trademark of the owner's goods and services was implied.
Most recently in the case of Upcurve Business Services Pvt Ltd vs. Easy Trip Planners Private Limited & Ors., CS(COMM) 155/2022, a suit was filed by the Plaintiff (a company involved in travel business) on the ground that the Defendant Number 1- Easy Trip Planners Private Limited and Defendant Number 2- happyfares.in used its registered trademark "UdChalo" [Translation - "Lets Fly"] on the Google Ads Program to attract users to their websites. It was contended by Plaintiff that their mark "UdChalo" was registered under Class 39 which covers offline and online travel arrangements, seat reservations, including aircraft reservations, air ticketing, tours, journeys, etc. The Delhi High Court passed an Order binding Defendant Number 1 from using Plaintiff's mark as a keyword. The Court further acknowledged that Defendant Number 2 was involved in the competing industry of travel services and that using "UdChalo" as a term to promote Defendant Number 2's business would constitute trademark infringement. On the issue of whether the same would constitute infringement in law or not and whether or not the use of a trademark as a keyword would constitute a violation of law, the Court held that the matter shall be treated as a part-heard and shall be heard again.
In conclusion, there is no doubt that keyword advertising is an effective method of online advertising as it targets customers while they are actively searching for information. However, the issue of keyword advertising and related trademark infringement is still evolving in India. There are no particular rules and regulations which govern keyword advertising. Some defenses which might be available to a party that has used a registered trademark as a keyword may be to prove that sufficient preventive steps were undertaken to ensure there is no confusion between the trademark and the keyword, or to avoid any deceptive association between the goods and services offered by the advertiser and the holder of the trademark. However, in such cases, there is always a potential threat of infringement of the registered trademark.
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