Use of trademark as keyword: Delhi High Court directs Google to probe into web traffic diversion

The Delhi High Court recently directed Google to investigate into a complaint alleging that the use of a trademark and its variations as keywords on the search engine had resulted in the diversion of traffic from the owner’s website to that of the advertiser [M/s DRS Logistics & Anr v. Google India Pvt Ltd & Ors]..Justice V Kameswar Rao observed that when the use of a trademark as a keyword online constitutes infringement or passing off amounting to violations of rights of the trademark owner under the Trade Marks Act, 1999, Google ought to investigate such advertisements..The Court also underscored, “There cannot be any dispute, that the advertisement is part of free speech, but surely that free speech cannot be at the cost of the trademark of an owner which amounts to a misleading advertisement.”.The Court was acting on a suit filed by M/s DRS Logistics (P) Ltd, owners of Agarwal Packers and Movers, who sought to restrain Google from using its registered trademarks that constituted a part of the ad-title, ad-text, URL and meta-tag or keyword..Senior Counsel appearing for the plaintiff contended that the meta-tags or keywords trigger search results on Google by way of Google Ads, and that several “third-party infringers” used the services of Google for inserting their “infringing advertisements” when a user searched for “Agarwal Packers & Movers.”.“Even if Google under the misrepresentation policy investigates an infringing ad but only after a complaint, there is no doubt that the usage of trademark as keyword results in diversion of the traffic from the website of the trademark owner to the webpage of the advertiser which causes prejudice to the owner of the trademark in terms of goodwill and credibility with respect to the services and should be investigated by Google,” the Court noted..The Court was of a prima facie view that with use of the plaintiff’s trademark as a keyword, the traffic from its webpage was getting diverted to the webpage of the competitor or advertiser. This indicated that a consumer who typed the plaintiff’s trademark as a search query was taken to a webpage that caused confusion, whether or not it belonged to the plaintiff.“In cases of intellectual property, the Courts must also be mindful of the fact that it is ultimately the public at large which gets cheated and feels the brunt of spurious goods and services in the market,” the Court underscored..According to Google, the use of its advertising or sponsored result algorithm was different from that of the algorithm involved in producing an organic search result through use of meta-tags.It was argued that the sponsored result was triggered based on many parameters, where each ad was given a quality score, which was an aggregate of many factors, including relevancy of the ad to a search query, landing page quality, number of ad extensions, past history of the advertiser, geographical relevance of ads to the webpage user. This show that the the program was not driven by monetary consideration alone, it was submitted..“No doubt, that meta-tags and keywords may be conceptually different, however, both are used to show relevancy and appear on the top of the search engine result page, whether in organic or sponsored result,” pointed out the Court.According to the Court, the question whether the use of mark as a keyword results in diversion of traffic from the website of the original proprietor to that of the advertiser, had not been disputed by Google..It was further argued by Google that the use of the keyword does not amount to “use” under the Trade Marks Act, inasmuch as Section 2(2)(b) requires a trademark to be used in a printed or other visual representation before “use” under Section 2(2)(c) can be examined. It was stated that a trademark used as a keyword which is invisible to the consumer, is not a use of the trademark.However, the Court agreed with the contention of the plaintiff that 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. Thus, invisible use of the mark can also infringe a trademark.The Court also observed that that Google followed a policy of investigating the use of trademark as a keyword in the European Union and European Free Trade Association countries, but not in India.Therefore, the keyword, even when assumed to be invisible, was said to divert the traffic of the website of the trademark owner to that of the advertiser, having an “effect of passing off of the goods and services” of the trademark owner as those of the advertiser.“In a way the advertiser through oblique motives is cashing upon the goodwill of the trademark owner for his own benefit and through which process Google is earning revenue and as such is equally liable for the omissions and commissions of the advertiser,” the Court highlighted..Therefore, the Court directed Google to:.Investigate any complaint to be made by the plaintiff to them alleging use of its trademark and its variations as keywords resulting in the diversion of traffic from the website of the plaintiff to that of the advertiser.Investigate and review the overall effect of an ad to ascertain that the same is not infringing/passing off the trademark of the plaintiff.If it is found that the usage of trademark(s) and its variations as keywords and/or overall effect of the ad has the effect of infringing/passing off the trademark of the plaintiff then Google shall restrain the advertiser from using the same and remove/block such advertisements..The Court also clarified it was only a prima facie conclusion and not to construed as a final determination of the suit..Senior Advocate Chander M Lall and Advocate Nancy Roy represented the plaintiffs.Defendants (Google LLC and Google India) were represented by Senior Advocate Sandeep Sethi along with Advocates Neel Mason, Ridhima Pabbi, Ekta Sharma, Vennela Reddy and R Ramya, as well as Senior Advocate Arun Kathpalia with Advocates Saransh Jain, Shlok Narayan and Tejpal S Rathore.Advocate Kshitij Parashar represented another defendant, Just Dial..[Read Judgment]