Use of Trademarks as Keywords amounts to ‘Use’ and Constitutes infringement under Trade Marks Act, 1999: Delhi High Court

Facts

In the case of Google LLC v. DRS Logistics (P) Ltd.,[1] while hearing the appeal, the Delhi High Court upheld the findings of the learned Single Judge’s order and ruled in favour of DRS Logistics (“Respondent”). The Respondent alleged that the Appellant was using its trademark as a keyword in the Google Ads Program, diverting traffic from their website to its competitors, and thereby infringing the Respondent’s trademarks. The Appellant argued that the mere use of keywords did not constitute ‘use’ under the Trademarks Act, 1999 (TM Act) and that it was entitled to safe harbour provisions under the Information Technology Act, 2000 (IT Act).

Issue Raised

1. Whether the use of trademarks as keywords amounts to ‘use’ under Section 29 of the TM Act?
2. Whether such ‘use’ is attributable to Google?
3. Does the use of trademarks as keywords constitute trademark infringement?
4. Are ‘Meta Tags’ and ‘Keywords’ distinct?
5. Does Google qualify for safe harbour protection under Section 79 of the IT Act?

Observations

Issue 1. Use of Trademarks as Keywords

The Appellant argued that since the keywords are not visible to internet users, they cannot qualify as “use” under the TM Act. For this, the Appellant relied on some foreign judgments but, the Division Bench observed that these foreign judgments vary in their interpretations and are not directly applicable to the present case. The Court referenced to the Supreme Court’s judgment in Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd,[2] wherein it was held that use of a mark could extend beyond its physical representation. Therefore, using trademarks as keywords would constitute ‘use’ under the TM Act.

Issue 2. Attribution of Use

It was the Appellant’s contention that it was the advertisers who are using such keywords and not the Appellant. In order to support this contention, it relied on the case Google France SARL v. Louis Vuitton Malletier SA,[3] but the Court rejected this, asserting that Google actively promoted the use of trademarks as keywords, thus making it liable for infringement.

Issue 3. Trademark Infringement

The Court went on to clarify that using trademarks as keywords did not automatically constitute infringement. The Court observed that rights of a registered trademark do not confer a monopoly on search results. However, since internet users were being diverted to the websites of Respondent’s competitors, the Respondent had a legitimate grievance. The Court applied the Doctrine of Initial Interest Confusion and held that initial user confusion constituted infringement under Section 29(2) of the TM Act.

Issue 4. Meta Tags vs. Keywords

The Appellant argued that ‘Meta Tags’ and ‘Keywords’ are two distinct features. Meta-tags are part of a website’s source code, while keywords are invisible and used for ad display only. The Court found some merit in this argument but observed that both ultimately serve similar purposes i.e., displaying ads and attracting internet traffic.

Issue 5. Safe Harbor Provision

The Court held that Google is not entitled to the defence of an intermediary under Section 79 of the IT Act because it actively participates in promoting and facilitating the use of trademarks as keywords by its advertisers and benefits from such use. The Court further observed that Google cannot claim to be a passive or a neutral intermediary in relation to its Ads Programme.

Analysis

This judgement has captured a comparative analysis of International and Indian trademark law, while highlighting the differences and addressing the evolving landscape of e-commerce and trademark rights. However, two issues still remain open for further discussion. The first one being the distinction between ‘Meta Tags’ and ‘Keywords’ warrants deeper exploration, given their differing functions and technical complexities. Secondly, the judgement did not delve much into the question of whether the unauthorized use of a registered trademark as a meta-tag by a third party would constitute trademark infringement under the TM Act, leaving a significant grey area in trademark law.

Conclusion

The Appeal was accordingly dismissed, and Google was directed to investigate any complaints made by the Respondents alleging the use of their trademarks as keywords resulting in infringement or passing off and to restrain or remove such advertisements if found to be infringing or passing off.

[1] Google LLC v. DRS Logistics (P) Ltd., 2023 FAO(OS)(COMM) 2/2022 & FAO(OS) (COMM) 22/2022, decided on 10-08-2023.

[2] Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd, (2003) 11 SCC 92.

[3] Google France SARL and Google Inc. v. Louis Vuitton Malletier SA & Ors.: C-236/08 to C- 238/08 (2010) [2011] All ER (EC) 411.