Author: Intern - Sonal Sinha
In the matter of M/S DRS Logistics (P) Ltd & Anr. v. Google India Pvt. Ltd. & Ors [CS (COMM) 1/2017], Justice V Kameswar Rao of the High Court of Delhi (the “Court”) vide judgment dated October 31, 2021, held that invisible use of trademark to divert traffic from proprietor’s website to advertiser’s website amounts to infringement of trademark.
Sections 29(9) of Trade Marks Act, 1999 (the “Act”) state that “where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation …”. That question that arises is whether ‘spoken use’ would include invisible use of a registered trademark in the form of keywords?
Plaintiff was the owner of the registered trademark, “Agarwal Packers and Movers” and sought to restrain Google from using or permitting third parties to use their registered trademark either as a keyword or as a trademark. It was contended by the Plaintiff that keywords trigger search results on Google by way of Google Ads. These keywords are used by third-party infringers using Google’s services for inserting their infringing advertisements when users searched for the Plaintiff, amounting to use as per Section 29(9) of the Act.
The Defendant contended that Google Ads is an advertising service wherein advertisers can create and display their online advertisements in relation to their websites and keywords provided by them are just backend triggers used for displaying of Ads and do not amount to use within the meaning of Section 29(9) of the Act.
Granting protection to the plaintiff’s registered trademark, the court noted that “a perusal of Section 29(9) makes it clear that an infringement of a trademark can be by way of spoken use which is different from printed or visual representations of the mark. That is invisible use of the mark can also infringe a trademark”. The court further observed that, “it is clear that the use of the mark as meta-tags was held to be infringement of trademark. It follows, that invisible use of trademark to divert the traffic from proprietors’ website to the advertisers’ / infringers’ website shall amount to use of mark for the purpose of Section 29”.
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