Whether Use Of A Trademark As A Keyword On Google Ad Program Would Constitute Infringement? Delhi High Court To Consider

The Delhi High Court is set to consider the question as to whether use of a trademark as a keyword on the Google Ad program, would constitute infringement.

Justice Pratibha M Singh will be adjudicating the said question while dealing with a suit filed by Upcurve Business Services Pvt. Ltd., a company engaged in the travel business. The plaintiff company operates a one-stop travel website called 'udchalo.com.' and had won various awards.

It is the case of the plaintiff that the mark 'UdChalo' was registered in Class 39 relating to offline and online travel arrangements, booking of seats including flight booking, air ticketing, tours and travels, etc.

It was the grievance of the Plaintiff that Defendant No.1, Easy Trip Planners Pvt. Ltd. and Defendant No.2, happyfares.in are using 'UdChalo' as an ad word on the Google Ads Program to attract internet users to their websites.

Earlier, the Court had, after recording Defendant No.1's stand, passed an order binding it that it would not use the Plaintiff's mark as a keyword. Regarding the Defendant No., the said Defendant was not represented and the Court was inclined to grant ad-interim injunction restraining it from using the Plaintiff's mark 'udchalo' as a keyword for promoting its own travel business.

Accordingly, the Court was of the opinion that the use of the mark 'udchalo' would constitute infringement by Defendant No.2.

Therefore, the Court noted that the Defendant No.2 was in the competing business of travel services and the use of 'udchalo' as a keyword to promote Defendant No.2's own business would be violative of the Plaintiff's trademark rights.

"Accordingly, Defendant Nos.3 & 4 are directed to block the keyword usage of the Plaintiff's mark 'udchalo', by Defendant No.2. Defendant No.1 and 2 are also restrained from placing any further bids for keyword 'udchalo' till the next date of hearing," the Court directed.

On the issue of whether the same would constitute infringement in law or not and whether the use of a trade mark as keyword would constitute violation of law, the Court ordered that the matter shall be treated as a part-heard.

The matter will now be heard on April 8.

In November last year, the Delhi High Court had observed that Google cannot absolve itself from the liability of ensuring that a keyword is not an infringement of trademark.

Google Cannot Absolve Itself From Liability Of Ensuring That Keyword Is Not An Infringement Of Trademark: Delhi High Court

Justice V Kameswar Rao had also observed that allowing individuals who are not owners of a trademark to choose a keyword which is a trademarked term or use parts of the trademark interspersed with generic words in the Ad-title or Ad-text may constitute an infringement of a trademark or it's passing off.

The Court had also opined that the use of trademarks as keywords amounts to "use" in the course of trade in terms of the Trademarks Act.

Title: UPCURVE BUSINESS SERVICES PVT LTD v. EASY TRIP PLANNERS PRIVATE LIMITED & ORS.

Click Here To Read Order