Google's Trademark Problem In India

In a recent judgment, the Delhi High Court has said search engines like Google cannot absolve themselves from the liability of ensuring that a keyword isn't an infringement of the trademark.

The high court directed Google India Pvt. to restrain its advertisers from using the registered trademark of DRS Logistics, “Agarwal Packers and Movers or DRS Logistics” as keywords or meta tags.

The court has asked Google to ensure that if any trademark violations are made by its advertisers against a registered trademark, such advertisements are blocked.

The judgment doesn't require Google to look into trademark infringements or hunt down for trademark infringements in all cases, Prashant Gupta, partner at law firm K&S Partners, told BloombergQuint. But equally, Google cannot say that I am an intermediary, I have no liability and say I will not act upon complaints, Gupta added.

One of the reasons this case piques interest is because it deviates from the traditional definition of "use" of a trademark, where the mark in question is not used directly on the goods and services but via a medium of advertising, Nirupam Lodha, partner at law firm Khaitan & Co., told BloombergQuint.

AdWords is an advertising service offered by Google to businesses. It allows allows brand owners to market their products and services using a combination of keywords to best describe their product.

The court was hearing DRS Logistics Pvt.'s petition against Google India, Google LLC and Just Dial Ltd. seeking to restrain them from permitting third parties to use their registered trademark "Agarwal Packers & Movers" or "DRS Logistics" either as a keyword, meta tag or as a trademark.

The “Agarwal” Problem

"Agarwal Packers and Movers" is a registered trademark of DRS Logistics. But websites of competitors pop up when a user searches for “Agarwal Packers and Movers", the company told the high court.

For instance, one party namely Agarwal Packers India (Agarwal Express Links Pvt.), against whom a decree has been passed, continues to appear in the keyword, ad-title and URL.

DRS Logistics contended that sponsored results popped up above their organic results, as few of their competitors are using Google’s advertising services.

Advertisers using Google’s AdWord program can create and select keywords based on which their advertisement shows up as a sponsored link, thereby diverting the traffic from DRS’ website, the company argued.

Trademark In Keywords Is No Infringement, Argues Google

The AdWord program merely provides an advertising platform for creating and placing an ad, Google argued before the high court. A keyword provided by the advertiser is treated just as a backend trigger for an ad to be displayed and is never used in a trademark sense, it said.

Google contended that it treated Adwords and ad text differently.

The use of somebody’s trademark in ad text or in the URL of an advertiser is violative of Google's intellectual property rights policy and therefore, it is taken down. But use of trademarks as keywords does not amount to "use" under the Trademarks Act, Google said.

Act On Trademark Complaints, Court Tells Google

The Trademarks Act, 1999, doesn’t specify an intermediary’s liability for trademark violations. Section 29(9) of the act says if a registered trademark consists of or includes words, spoken use of those words or visual representation may amount to infringement.

The high court relied on this provision to say that an infringement of a trademark can be by way of spoken use which is different from printed or visual representations of the mark. This essentially means that even an invisible use of the mark can also infringe a trademark, it pointed out.

And once it’s found that usage of a trademark, its variations as keywords or the overall effect of the ad results in infringing/passing off the trademark, then Google has to restrain the advertiser from using the trademark and remove / block such advertisements, the high court said.

Rather than directing Google to look up trademark violations, the court has asked it to promptly act on trademark infringement complaints. It also said that advertisements cannot be made at the cost of a registered trademark.

Noting that Google is an intermediary, the court said there is an obligation on its part to ascertain that the keyword chosen by the advertiser is not a trademark and if it is a trademark, it has been licensed or assigned. Seeking the benefit of safe harbour provision under the Information Technology Act would amount to legalising the infringing activity, the high court concluded.

Finally, the Delhi High Court also expressed concern over Google's policy of investigating trademark violations in keywords in the European Union and not in India. "There cannot be any reason why such a procedure is not followed in India," the court opined.

This means search engines like Google would need to put in place a newer system and also, deal with day-to-day complaints placed by brand owners, Lodha said.

Google will need to investigate and review the overall impact of an ad, i.e., whether any part of an ad contains any material infringing the trademark, Lodha pointed out. "Other companies could go for similar orders against the internet giant."