Use Of Registered Mark By Competitors As Keyword In Google Ads Program Prima Facie Infringement Under Trademarks Act: Delhi High Court

The Delhi High Court recently granted injunction in favour of Make My Trip while observing that use of its registered mark by competitors even as metatags is an infringement under Trademarks Act and that third party bidding on trademarks as sponsored keywords for use by internet search engines can constitute misrepresentation. The observation was given by Justice Prathiba M. Singh, "In view of the facts, orders and legal position as discussed above, this Court is prima facie of the opinion that the use of the Plaintiff's registered mark 'MakeMyTrip' on the Google Ads Program as a keyword would amount to trademark infringement. The same would be detrimental to the Plaintiff's monetary interest as also to the brand equity of the Plaintiff's mark. To allow competitors such as www.booking.com and even Google to encash upon the reputation of the Plaintiff's mark for their own monetary advantage is not permissible in the opinion of the Court."The Court noted that the balance of convenience lies in the favour of the Plaintiff and if the injunction is not granted, Defendant and other competitors would continue to bid for its mark `MakeMyTrip' on a daily basis, resulting in severe prejudice to the Plaintiff, its mark, its brand equity and its business.Thus, it restrained the Defendants from using the mark 'MakeMyTrip' together/ in conjunction, with or without spaces for the purpose of using it as a keyword on the Google Ads Program till the next date of hearing."However, this shall not prevent the Defendants from using words 'make', 'my', 'trip' not conjunctively on a standalone basis in a descriptive or generic sense on the Google Ads Program," the Court clarified. The Court also clarified that the said interim injunction will stay limited to the territory of India. The Plaintiff - MakeMyTrip (India) Pvt. Ltd. had filed the suit for permanent injunction seeking protection of its registered trademarks 'MakeMyTrip' and its variants. It was the case of the Plaintiff that their marks are being used by Booking.com B.V. as keywords on the Google Ads Program for promoting their services as advertisements when search results are displayed on the Google search engine. The case of the Plaintiff was that when a search is carried out for 'MakeMyTrip' in the Google search bar, quite often the first advertisement which is displayed in the search results in the advertisement category is that of Defendant No.1- Booking.com, who is one of the major competitors of the Plaintiff. The Plaintiff has placed on record the screenshots of the search results, as well as auction insight of its own account on Google Ads Program to show that Defendant No.1- Booking.com has made bids for the keyword 'makemytrip' on the Google Ads Program in order to ensure that its website is shown as one of top three search results in the advertisement category when someone searches for 'MakeMyTrip' on Google. According to the Plaintiff, such use of its registered mark would constitute infringement, especially when done by its competitor such as booking.com. Aggrieved by the same the plaintiff had moved Delhi High Court. Amit Sibal appearing for the petitioner argued that there has been exchange of notices between the Plaintiff and Defendant No.1. According to the Plaintiff, the first notice was issued on 09th October, 2019 asking Defendant No.1 to cease bidding on the keyword 'makemytrip'. He argued that Defendant No.1 stopped bidding for the Plaintiff's mark post the said notice. Thereafter, another cease-and-desist letter was issued to Defendant No.1 on 28th August, 2020 asking Defendant No.1 to cease its unauthorized and illegal bidding for the trademark 'MakeMyTrip' as a keyword. "As per the Plaintiff, Defendant No.1 again stopped committing the infringing activity. However, as of 2022, Defendant No.1 refused to comply with the requisitions of the Plaintiff and in fact, took a position that in view of the judgment of the European Commission in Case AT.40428-GUESS dated 17th December, 2018 (hereinafter "Guess judgment"), that there cannot be any restriction on the use of a trademark on the Google Ads Program as a keyword, including by competitors." Sibal argued that the use of the Plaintiff's mark would constitute infringement under Sections 29(6)(d), 29(7), 29(8) and 29(9) of the Trade Marks Act, 1999 (hereinafter "Act"). Defendant No.1 is using the complete identity of the mark of the Plaintiff as a keyword, and therefore it ought to be restrained. Senior Counsel Chander Lall appearing for Defendant no 1 argued that there has been concealment and suppression of material facts by the Plaintiff- MakeMyTrip. He relied upon a Strategic Partnership Agreement dated 27th May, 2016 entered into between the two parties wherein, under clause 4.4.1.2, Defendant No.1 - Booking.com permitted the Plaintiff to conduct, undertake, use, and perform paid searches or Search Engine...

Use Of Registered Mark By Competitors As Keyword In Google Ads Program Prima Facie Infringement Under Trademarks Act: Delhi High Court

Zeb Hasan

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