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Delhi High Court Holds Google Liable for Trademark Infringement Through Keyword Advertising: Hindware v. Grohe
Summary
In a significant ruling on the intersection of trademark law and digital advertising, the Delhi High Court in batch matters Hindware Ltd. v. Grohe India Pvt. Ltd. & Ors. [CS(COMM) 591/2017] and Hindware Ltd. v. Omkara Infoweb Pvt. Ltd. [CS(COMM) 592/2017] held that Google’s practice of permitting advertisers to bid on a competitor’s registered trademark as a keyword under its AdWords programme can amount to trademark infringement. The Court observed that allowing competitors to use the well-known trademark “HINDWARE” as a keywo-rd enabled them to unfairly benefit from the goodwill associated with the mark and constit-uted an unauthorized commercial exploitation of the plaintiff’s trademark rights. The judgment reinforces the principle that trademark protection extends beyond traditional forms of use and applies equally within the online advertising ecosystem.
Facts of the Case
The plaintiff, Hindware Limited, is the proprietor of the trademark “HINDWARE,” a well-known and extensively used mark in relation to sanitaryware, bathroom fittings, and allied products. Over several decades, the plaintiff had built substantial goodwill and reputation in the mark through continuous use and extensive advertising.
The dispute arose when Hindware discovered that competing businesses, including manufacturers and sellers of sanitaryware products, were using the keyword “HINDWARE” through Google’s AdWords programme. Under this advertising model, advertisers could bid on specific keywords so that their sponsored advertisements would appear when users searched for those terms on Google’s search engine. As a result, internet users searching for “HINDWARE” were shown advertisements for competing brands, including CERA and GROHE, often before or alongside the plaintiff’s own search results. Hindware argued that Google was not merely a passive intermediary but was actively facilitating and profiting from the use of its registered trademark by competitors. The plaintiff therefore sought injunctive relief against Google and the advertisers for infringement and unauthorized exploitation of its trademark rights.
Issue before the Court
Whether Google’s practice of allowing competitors to purchase and use the registered trademark “HINDWARE” as a keyword under its AdWords programme amounted to trademark infringement and unfair commercial exploitation of the plaintiff’s trademark.
Findings of the Court
The Court noted that “HINDWARE” was a coined and distinctive trademark that had acquired the status of a well-known mark. Given the reputation and recognition attached to the mark, it was entitled to a high degree of legal protection.
Rejecting Google’s contention that keywords function merely as invisible backend tools and therefore do not amount to trademark use, the Court held that the commercial value of a trademark extends beyond its visible display. The Court emphasized that trademarks serve multiple functions, including identifying origin, preserving goodwill, and representing significant advertising and investment value.
The Court observed that Google actively encouraged advertisers to bid on trademarks and derived revenue from such bidding. By making the plaintiff’s trademark available for purchase as a keyword, Google enabled competitors to attract consumers searching specifically for Hindware products. This, according to the Court, constituted an unauthorized use of the trademark and allowed competitors to take unfair advantage of the goodwill associated with the mark.
The Court further held that permitting such keyword bidding was contrary to honest commercial practices. While comparative advertising and market competition are legitimate commercial activities, the Court emphasized that competition cannot be achieved through the unauthorized exploitation of another trader’s proprietary rights. The use of a competitor’s trademark as a keyword effectively diverted consumer attention and diluted the exclusivity enjoyed by the trademark owner under the Trade Marks Act, 1999.
Importantly, the Court clarified that the exclusive rights conferred upon a registered proprietor under Section 28 of the Trade Marks Act are not limited to visible instances of trademark infringement. Those rights also protect the proprietor from unauthorized commercial use that capitalizes on the reputation and value of the mark, including in digital advertising environments.
Held
The Delhi High Court decreed the suits in favour of Hindware and granted a permanent injunction restraining Google from using or permitting the use of the plaintiff’s trademark “HINDWARE” as a keyword or AdWord in a manner that infringes the plaintiff’s rights. The Court held that Google’s AdWords policy, to the extent that it facilitated bidding on the plaintiff’s trademark by competitors, amounted to trademark infringement and unfair commercial exploitation of the mark’s goodwill and reputation.
Conclusion
The judgment is a significant development in Indian trademark jurisprudence and reflects the judiciary’s willingness to adapt traditional trademark principles to modern digital business practices. By recognizing keyword advertising as a potential form of trademark use, the Court has expanded the scope of trademark protection in the online marketplace. The decision sends a strong message that search engines and digital advertising platforms cannot commercially benefit from the unauthorized use of registered trademarks. It also provides valuable guidance for brand owners seeking to protect their trademarks in an increasingly competitive and technology-driven advertising landscape.
Delhi High Court Upholds Injunction Against Dabur for Trade Dress Similarity and Passing Off: Emami v. Dabur
Summary
In Dabur India Limited v. Emami Limited, FAO(OS) (COMM) 23/2026, the Division Bench of Delhi High Court upheld an interim injunction restraining Dabur from using its existing trade dress for its cooling hair oil product, “COOL KING THANDA TAEL”. The Court found that Emami had established a strong prima facie case of passing off, observing that the overall visual presentation of Dabur’s product bore striking similarities to Emami’s well-known “Navratna Oil” packaging. The judgment reiterates that while individual packaging elements may be common to the trade, the overall combination and arrangement of those elements can acquire distinctiveness deserving protection.
Facts of the Case
The respondent, Emami Limited, launched “Navratna Oil” in 1989 and has used the product’s distinctive trade dress and the tagline “Thanda Thanda Cool Cool” continuously for over three decades. Through extensive promotion and sales, the product acquired substantial goodwill and became a market leader in the therapeutic cooling oil segment, commanding a significant market share. Emami also secured various trademark, copyright, and design registrations relating to its packaging and branding.
In June 2023, Dabur introduced a competing cooling hair oil under the brand name “COOL KING THANDA TAEL”. Emami alleged that Dabur had deliberately adopted a trade dress closely resembling that of Navratna Oil, including the colour scheme, packaging layout, imagery, and overall visual appearance. Claiming that the adoption was intended to ride upon the reputation and goodwill associated with Navratna Oil, Emami filed a commercial suit seeking an injunction against Dabur.
The learned Single Judge granted an ad interim injunction in favour of Emami. Aggrieved by the order, Dabur preferred an appeal before the Division Bench, contending that the allegedly similar elements were common, descriptive, and incapable of exclusive appropriation. Dabur further argued that the prominent display of its well-known house mark “DABUR” was sufficient to distinguish its product from that of Emami.
Issue before the Court
Whether Emami had established the essential ingredients of a passing off action, namely goodwill in its trade dress, likelihood of consumer confusion arising from Dabur’s packaging, and the consequent risk of commercial damage, so as to justify the continuation of the interim injunction.
Findings of the Court
The Court observed that trade dress protection extends to the overall visual appearance of a product, including its packaging, colour combination, layout, get-up, and presentation. While individual elements such as the colour red, depictions of hibiscus flowers, ice cubes, or descriptive expressions like “cool” and “thanda” may not be exclusively protectable in isolation, the law protects the distinctive combination and arrangement of such elements when they have come to signify a particular source in the minds of consumers.
Upon comparing the rival products, the Court found substantial similarities in the bottle shape, colour scheme, placement of features, imagery of ice cubes and hibiscus flowers, colour of the oil, and overall packaging presentation. The Bench noted that the cumulative effect of these similarities created a strong likelihood of consumer confusion and could not be dismissed as mere coincidence.
The Court further held that the presence of Dabur’s house mark did not negate the possibility of deception. From the perspective of an average consumer with imperfect recollection, the overall trade dress of the competing products was sufficiently similar to create an impression of association with Emami’s Navrat-na Oil. Consequently, Emami had successfully established a prima facie case of passing off.
Held
The Division Bench dismissed Dabur’s appeal and upheld the injunction granted by the Single Judge. The Court restrained Dabur from manufacturing, selling, advertising, or distributing its “COOL KING THANDA TAEL” product in the impugned trade dress. It held that Emami had satisfied the triple test for passing off by demonstrating goodwill, likelihood of confusion, and potential commercial injury. However, the Court clarified that its observations were prima facie in nature and would not prejudice the final adjudication of the suit after trial.
Conclusion
The judgment reinforces the importance of trade dress protection in Indian trademark law and highlights that passing off claims are assessed on the overall commercial impression created by competing products. It underscores that competitors cannot evade liability by relying on generic or descriptive elements when the cumulative packaging presentation closely imitates that of a market leader. The ruling also affirms that the use of a prominent house mark is not a complete defence where the overall trade dress is likely to mislead consumers and appropriate another trader’s goodwill.
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