Can Keywords Infringe Trademark?

Introduction

The internet is undoubtedly an indispensable part of our lives. In this digital age, there is nothing that cannot be found on Google and other search engines. Our heavy use and dependency on search engines, has opened a pathway for advertising. To profit from this new opportunity, Google set up a platform called Google Ads. This platform enables businesses to buy keywords that are later used in their advertisements. This facility has also led to disputes among competing firms over the use of trademarked keywords. Such disputes have sparked a discussion on whether the use of keywords can lead to Trademark infringement.

Keyword advertising

When we enter specific phrases or words on search engines, we get advertisements in the form of texts and links which are connected to what we are searching for. This happens because there are businesses who bid on certain words relevant to their activity, to incorporate them into their advertisements. Once a keyword is incorporated into an advertisement, the advertisement shows up in the search results of the keyword. This concept is as old as the internet and it is commonly referred to as ‘keyword advertising’. [i]

Can trademarked words be used as keywords?

While keyword advertising is certainly a good marketing strategy that effectively reaches the target customers, it has also led to disputes over alleged trademark infringement. This is because some businesses engage in keyword advertising by buying words that have been trademarked by other businesses, in order to bring in more customers. This practice is also called ‘piggybacking’.[ii]

The opinions on whether this practice infringes trademarks have been diverse. The companies that allege that this is trademark infringement claim that it causes confusion among consumers. Some others are of the opinion that such use creates no likelihood of confusion.

Let us now look at an example of a trademark infringement dispute over keyword advertising.

Playboy Enterprises, Inc. v. Netscape Communication

The plaintiff Playboy Enterprises had trademarked the words ‘playboy’ and ‘playmate’ and alleged that Netscape, a web browser, had used its trademarked words for keyword advertising. The plaintiff alleged that the trademarks were used by their rival site in their ad banners, and misled consumers to believe that the site contains Playboy’s material, leading them to click on the site. The court held that the use of the words in the ad banners alone constitutes an infringement. [iii]

What does the Indian Trade Marks Act say?

The Indian Trademarks Act defines infringement in Section 29 as the unauthorised use of a registered trademark. As per Section 29, a registered trademark is infringed when an unauthorised person, creates confusion among consumers and exploits the mark’s goodwill by using a mark that is blatantly the same as that or deceptively similar to it.[iv] For unregistered trademarks, the unauthorised use is called ‘passing off’. They are protected under Sections 34 and 35 on the basis of prior use[v]. In the light of these provisions, we can understand that the decisions in such disputes are influenced mainly by two factors, the first one being the likelihood of confusion, the second being the exploitation of the mark’s goodwill.

Now, let’s look at a few case laws of target advertising – trademark infringement to understand the interpretation of the Indian judiciary.

Consim Info Pvt. Ltd. v. Google India Pvt. Ltd. and Ors. (2012)

In this case, the plaintiff Consim Info, a technology company, had sued Google and a few matrimonial service platforms for unauthorised use of their twenty-two trademarks, where some of the marks are ‘Bhartmatrimony’, ‘Tamilmatrimony’, and ‘Telegumatrimony’. The plaintiff contended that respondents infringed their trademarks by using them as keywords in keyword advertising. The respondents claimed that there was no infringement as they put a space in between the words, for instance, the trademark ‘Tamilmatrimony’ was used by the respondents as ‘Tamil matrimony’. [vi]

The Madras High Court held that the combination of the words ‘Tamil’ and ‘matrimony’ cannot be made different from ‘Tamilmatrimony’ simply by adding space in between the words. The Court went on to say that under normal circumstances, this practice infringes trademark. However, the Court decided that the combination of the generic words ‘Tamil’ and ‘matrimony’ is not unique and does not qualify for trademark protection. The reason behind this is that the mark is simply descriptive of the services of the platform. Hence, the company can have no monopoly over it as otherwise, it would restrict its usage from the others in the same trade. Hence, the court ruled that the respondents are not liable for trademark infringement.[vii]

M/S Drs Logistics (P) Ltd & Another v. Google India Pvt Ltd & Anr (2021)

In this case, the plaintiff contended that his trademark ‘Agarwal Movers and Packers’ was used by the defendants for keyword advertising, thereby infringing it. He claimed that it constitutes an infringement as it creates confusion among the customers, and as it attracts their customers to their rivals’ platforms. The plaintiff contended that this caused him financial losses and affected the goodwill of his business. To prove this claim, the plaintiff also submitted an affidavit by a consumer who contended that the third party who used the trademark ‘Agarwal Movers and Packers’ while advertising had provided bad services. [viii]

The defendant Google contended that the usage of the trademark as a keyword does not fit the definition of ‘use’ under Section 2(2) of the Trade Marks Act [ix], as it did not visually represent the mark. It claimed that the use of the mark was through metatags (parts of HTML code that contain information about a website), which is not visible to the consumers and hence, did not create confusion. Google also contended that as an intermediate party, it is not under the obligation to ensure that the keywords used for advertising do not infringe the trademark, under Section 79 of the Information Technology Act. [x]

The Delhi High Court decided that the usage of the trademark for keyword advertising does constitute ‘use’ under Section 29(6) of the Indian Trade Marks Act. [xi] With this decision, the Court affirmed that the use of the mark does not have to be visible under Section 29. It is to be noted that this is not the first judgement to hold that the use of a trademark through metatags constitutes infringement, as it was already decided in the cases of Mattel Inc. & Ors v. Jayant Agarwalla & Ors. (2008) [xii] and Kapil Wadhwa v. Samsung Electronics Company (2012). [xiii]

The Court held that the defendants were liable for trademark infringement. It also decided that Google cannot claim protection under Section 79 of the Information Technology Act as it uses its Keyword Planner Tool to enable keyword advertising and even monetizes it. The Court relied on its own judgement passed in Christian Louboutin v. Nakul Bajaj (2018) [xiv] to hold that Google cannot claim protection under Section 79 when it was actively involved in the trademark infringement.

The Court further held that the usage of the trademark as a keyword did divert customers of the plaintiff to the third party, causing losses to the proprietor of the mark. [xv]

Analysis

It is clear that the courts do recognize that keyword advertising is capable of trademark infringement. The Delhi High Court has made it clear in two cases that search engines cannot escape liability if they actively participate in and monetize keyword advertising services. The courts have recognized that trademarked keywords, whether they are visible or not, whether they are a part of the visual representation or the code of the website, infringe the rights of the proprietor. It qualifies the parameters of trademark infringement as it diverts customers by confusing them and exploits the trademark’s goodwill. However, the plaintiffs in such disputes must prove before the court that the alleged mark qualifies as a trademark, that its usage as a keyword poses a likelihood of confusion and that it is likely to affect its reputation.

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[i] Ryte Wiki, https://en.ryte.com/wiki/Keyword_Advertising (last visited 9 July 2022)

[ii] Bhumesh Verma, Abhisar Vidyarthi, ‘Keyword Advertisement and IPR Considerations’, SCC Blog (4 June 2019) https://www.scconline.com/blog/post/2019/06/04/keyword-advertisement-and-ipr-considerations/

[iii] Playboy Enterprises v. Netscape Communications, 55 F. Supp. 2d 1070 (C.D. Cal. 1999)

[iv] Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999

[v] Ibid

[vi] Consim Info Pvt. Ltd. v. Google India Pvt. Ltd. and Ors., O.S.A.NOS.406 AND 407 Of 2010

[vii] Ibid.

[viii] M/S Drs Logistics (P) Ltd & Another vs Google India Pvt Ltd & Anr, CS(COMM) 1/2017 & I.As. 21153/2011

[ix] Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999

[x] Information Technology Act, 2000, Act No. 21, Acts of Parliament, 2000

[xi] Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999

[xii] Mattel Inc. & Ors v. Jayant Agarwalla & Ors.,  IA No. 2352/2008 in CS(O S) 344/2008

[xiii] Kapil Wadhwa v. Samsung Electronics Company, FAO(OS) 93/2012

[xiv] Christian Louboutin v. Nakul Bajaj ,CS (COMM) 344/2018

[xv] M/S Drs Logistics (P) Ltd & Another vs Google India Pvt Ltd & Anr, CS(COMM) 1/2017 & I.As. 21153/2011