The Delhi High Court has observed that the use of keywords for promoting a business using competitor's trademark would be violative of the rights of the trademark owner.
Justice Pratibha M Singh was of the view that there would be no difference in the use of trade marks as a keyword on search engines as opposed to use as a keyword on App store searches.
"So long as the key words are being used for promoting a business, using a competitor's trade mark, the same would be violative of the rights of the trade mark owner," the Court said.
The Court was dealing with a suit filed by Head Digital Digital Works Pvt. Ltd. seeking permanent injunction. The Plaintiff was engaged in the business of designing and developing software related to games of skill, deploying and maintaining an online gaming website and a mobile application via the internet. The plaintiff was providing the said services through its website www.a23.com and its mobile application 'A23'.
The suit was filed by the Plaintiff to protect its marks 'Ace2three' and 'A23' which were registered as trademarks under various classes. The said marks were registered trademarks of the Plaintiff since 2006 and 2020 respectively. The Plaintiff's marks relate to online gaming platforms operated and controlled by the Plaintiff and were stated to represent India's first ever online rummy platform.
The Plaintiff was aggrieved by the use of the marks 'A23' and 'Ace2three' as 'keywords' by the Defendant, Tictok Skill Games Private Limited, on the Apple Application Store. It was the case of the Plaintiff that in February, 2022 it came to the knowledge of the Plaintiff that the Defendant was using Plaintiff's mark as 'keywords' on the App Store.
It was submitted by the plaintiff that when any user searches for 'A23' or 'Ace2three' on the App Store the first result in the advertisement section of the search result was that of the Defendant's app 'WinZO Games'.
It was also argued that a case had already been filed by the Defendant against the Plaintiff in respect of use of the marks 'WinZO', 'WinZO Games' as a meta tag or title tag by the Plaintiff. It was argued that in the said case, the Court had granted an injunction restraining the Plaintiff from using the mark or name 'WinZO'/'WinZO Games' or its variants on its website and web advertisements.
"Considering the history of litigation between the parties as also the order in MakeMyTrip (supra), the invisible use of the Plaintiff's mark as an 'adword' or 'keyword' on any online platforms by the Defendant would be violative of the Plaintiff's rights in the marks," the Court observed.
At the outset, the Defendant stated that it was not using and did not intend to use the said marks as 'adword' or 'keyword'. Accordingly, it was directed that the Defendant shall abide by the said stand and not use the marks 'A23' and 'Ace2three' or any other variants/formative mark thereof as an adword, keyword, meta tag, or domain name, with or without space on any of the online search engines or application-based search platforms including Apple Application Store etc.
However, since the parties wished to explore amicable resolution of disputes, the matter was referred to mediation by the Court.
The matter will now be heard on August 22.
Case Title: HEAD DIGITAL WORKS PRIVATE LIMITED v. TICTOK SKILL GAMES PVT LTD
Citation: 2022 LiveLaw (Del) 515