Google will not get intermediary safe harbour protection if keywords in Ads Programme infringe trademark: Delhi High Court

The Delhi High Court on Thursday held that Google's use of trademarks as keywords for its ‘Ads Programme’ amounts to ‘use’ of trademarks under the Trademarks Act and that the benefit of safe harbour available to an intermediary would not be available to Google if such keywords infringes on the concerned trademark [Google LLC v DRS Logistics (P) Ltd & Ors]..A division bench of Justices Vibhu Bakhru and Amit Mahajan noted that the Ads Programme is a commercial venture by Google. Therefore, the use of a trademark as a keyword for the display of advertisements for goods or services amounts to the use of the trademark in advertising within the meaning of Section 29(6) of the Trademarks Act (TM Act).The Court, however, added that the use of these trademarks as keywords would not amount to infringement if there is no confusion, dilution, or compromise of the trademark. .On the issue of safe harbour and Google’s liability under Section 79 of the Information Technology Act (IT Act), the Court said that Google is not a passive intermediary when it comes to its Ads Programme. Therefore, the benefit of safe harbour will not be available to the tech giant if it is found to be infringing on the trademarks, the Court observed. “Prior to 2004, Google did not permit use of trademarks as keywords. However, Google amended its policy, obviously, for increasing its revenue. Subsequently, it introduced the tool, which actively searches the most effective terms including well known trademarks as keywords. It is verily believed that in the year 2009 Google estimated that use of trademarks as keywords would result in incremental revenue of at least US Dollar100 million. Google is not a passive intermediary but runs an advertisement business, of which it has pervasive control. Merely because the said business is run online and is dovetailed with its service as an intermediary, does not entitle Google to the benefit of Section 79(1) of the IT Act, in so far as the Ads Programme is concerned,” the Court explained.The bench further said that the use of trademarks as keywords is analogous to using trademarks as meta-tags since both, in a sense, serve the same purpose.“As noticed above, meta-tags serve as a tool for indexing the website by a search engine. Thus, if a trademark of a third party is used as a meta-tag, the same would serve as identifying the website as relevant to the search query that includes the trademark as a search term. The use of keywords in the Ads Programme also serves the same purpose. It, essentially, in a manner of speaking, tags a link of an advertiser (sponsored link) with the keyword(s). The same are used as a device to catalogue the sponsored link. The fact that using a keyword may not necessarily lead to display of the advertiser’s link as a sponsored link on the SERP, pursuant to a search query that includes a keyword as a search term, makes little difference," the Court opined..The division bench was dealing with the two appeals filed by Google LLC and Google India Private Limited challenging a single-judge’s order which had held that the use of trademarks as keywords in the Google Ads Programme amounts to ‘use’ under the TM Act and thus, may constitute infringement.The single judge had further held that Google is not entitled to the defence of an intermediary under Section 79 of the IT Act, 2000.The order was pronounced by the single-judge in a plea filed by DRS Logistics (Agarwal Packers and Movers), which claimed that Google actively encourages the use of its registered trademarks as keywords for third parties to display their sponsored links pertaining to websites that infringe its trademarks. DRS also claimed that such use of its trademarks as keywords infringes its trademark rights. .After considering the case, the division bench concluded that there are no reasons to interfere with the directions of the single-judge and therefore, disposed of the appeals.The Court also rejected Google India’s argument that it had no control over the Ads Programme.“Undisputedly, there is a strong link between Google and Google India. Google India is an Indian subsidiary of Google. Google India also claims to be a reseller for the Ads Programme. Thus, prima facie, it is difficult to accept that Google India has no responsibility in ensuring compliance with the directions issued under the impugned judgment," the Court said..Senior Advocate Sandeep Sethi along with advocates Neel Mason, Ankit Rastogi, Vihan Dang, Aditya Gupta, Abhilasha Nautiyal, Aditi Umapathy, Parva Khare, Sauhard Aulang and Devangini Rai appeared for Google LLC.Senior Advocates Arun Kathpalia and Chander M Lall with advocates Nancy Roy, Jeevesh Nagrath, Ananya Chug, Prakriti Varshney, Kirti Mewar and Arjun Gaur appeared for DRS logistics..[Read Judgement]