DRS Logistics Pvt ltd & Ors. Vs Google India Pvt ltd & Ors.

This article on ‘DRS Logistics Pvt ltd & Ors. Vs Google India Pvt ltd & Ors.‘ was written by Risha Sharma, an intern at Legal Upanishad.

DRS Logistics Pvt ltd & Ors. Vs Google India Pvt ltd & Ors.

Decided on: 30 October 2021

Decided By: Justice V. Kameswar Rao

Introduction

The advent and advancement of technology have made it such that reliance on the internet has become an integral part of our lives. The high usage of search engines has made it much easier and more efficient for consumers to connect with businesses or look for the right products. Businesses have taken their advertising online as well in a bid to attract customers at the right time. Keyword search and advertising have been the major propelling factors in this segment, leading the consumers to their websites on having typed certain keywords in the search bar.

However, this risks the usage and infringement of a trademark when competitors in the market use the trademark as a ‘keyword’, thus creating an unfair advantage over the trademark holders. This area of concern has been brought up before the Courts several times and notably, in the Delhi High Court case of DRS Logistics Pvt ltd & Ors. Vs Google India Pvt ltd & Ors., which has been discussed at length in the following article.

Case Summary

Facts of the case

The Plaintiff (M/S DRS Logistics Pvt Ltd) had filed two interim applications and a permanent injunction application in the Delhi High Court, requesting to restrain the Defendants (Google India, Google LLC, and Just Dial) from offering its registered trademark “Agarwal Packers & Movers” and “DRS Logistics” to third parties as a keyword, meta-tag or trademark. The plaintiff contended that several third parties, mainly its competitors, used the trademarks owned by the plaintiff as “keywords” on the defendant’s search engine which made it so that the competitors’ websites appeared at the top of the results when the consumers searched for the trademark of the plaintiff.

Plaintiff further stated that despite having several favourable decrees in his favour, the infringing advertisements were not discontinued by Google on their platforms. The plaintiff further argued that third parties utilizing his trademark as keywords led to a large-scale diversion of web traffic from the plaintiff’s website towards the third parties’ websites as a result of confusion among the general public. It was also contended that obtaining orders against individual infringers has proven to be ineffective in the past and resultantly, the plaintiff was left with no option but to proceed with the present suit.

Defendant, Google, contended that the mere usage of a trademark as a keyword does not constitute an infringement or unfair competition. The defendant further contended that the keywords employed by the advertisers for the Google Ads Program simply act as a backend trigger and are in no manner used in the sense of trademark. It was further stated by Google that the use of a trademark as a keyword does not equate to “use” as prescribed under the Trademarks Act, 1999 and cannot be said to infringe a trademark or passing off action.

This was grounded on the argument that the Act mentions the use of the trademark as “the use of printed or other visual representation of the mark”, i.e., in a form represented quite visibly to the consumers or the end-users. The defendant further contended that the Google Ads Program merely acts as an advertising platform that enables advertisers to make and place ads on Google Search.

Legal Issues

The main issue before the Court was whether providing a trademark of an owner as a keyword to a third party would amount to trademark infringement.

Legal History

The courts have dealt with similar issues in the past. The Madras High Court in Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd.[1](“Consim I”) and Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd.[2] (“Consim II”) dealt in depth with the workings of the Google AdWords Programs and their applicability to a list of countries. The appellant, a leading matrimonial website had registered several trademarks such as “BharatMatrimony”, “TamilMatrimony”, etc, which were used as keywords on the search engine as a part of the ad programme, and thus, the appellant sought an injunction.

The Court noted the discriminatory policy and “double standards” adopted by Google caused an unjust advantage to the respondents (advertisers) over the appellant (trademark holder). The HC granted the injunction but ultimately held that the appellant’s registered trademarks were descriptive in nature of the services provided and thus, the respondents were free from liability of trademark infringement.

Concerning the usage of meta-tags, which are words included in the source code and invisible to the general public, the Delhi High Court in Kapil Wadhwa vs. Samsung Electronics Co. Ltd.[3] deemed the trademark usage in source code, i.e., by means of meta-tags, which remain hidden from the consumer or end-user to be illegal.

Along similar lines, in the case of Mattel Inc. vs. Jayant Agarwalla,[4] the Court stated that “meta-tags are machine-readable codes used by search engines to index sites”, forming part of the HTML of the website which describes the site’s subject matter. This further helps the search engine identify which websites are more relevant to the keywords entered therein. Thus, the usage of trademarks as meta-tags results in a trademark infringement or passing-off action.

The Bombay HC had opined that the use of the plaintiff’s proprietary marks by the defendant as a meta-tag in their website would be an “attempt to misappropriate the plaintiff’s mark and hijack the web traffic from the plaintiff’s website”, having stemmed from a dishonest and mala-fide use of the plaintiff’s mark. This would result in the dilution of the trademark and also be deemed as “online piracy.”[5] Similarly, in Amway India Enterprises Pvt. Ltd. vs. 1MG Technologies Pvt. Ltd.[6] a Coordinate Bench of the Delhi High Court maintained that using a mark in meta-tags or in advertisements without the proprietor’s consent constitutes a trademark infringement.

Judgment

The Delhi High Court directed Google to investigate the complaints put forth by the plaintiff and to examine whether the act of using keywords in the advertisements would result in trademark infringement. Taking into consideration Google’s high duty of care stemming from its policy applicable in the EU and EFTA, the defendant was further directed to take down any advertisement found to be infringing a trademark or passing off action.

Holding that the legislature has strayed from the ordinary construction of the term “use” under the Trademarks Acts, the “invisible use” of the mark can also amount to the infringement of a trademark. The Court placed reliance on some decisions touching upon similar issues to arrive at this conclusion and further took into account the detrimental effects of web traffic diversion to the competitor’s websites.

DRS Logistics Pvt ltd & Ors. Vs Google India Pvt ltd & Ors.

Analysis

The order passed by the Delhi High Court in the present case can be tagged as a progressive judgment since it amplifies the rights of trademark holders in the country in light of the visible gap in laws relating to keyword advertising. While relying on several judgments which clearly state that the infringement of a trademark may not necessarily be limited to visual representations, the Court stated that Google cannot shy away from its liability of making certain that a keyword used by non-proprietors does not infringe a trademark or negatively impact the marks’ goodwill.

This is indeed a welcome move since Google was denied from taking shelter u/s.79 of the IT Act as an intermediary owing to its Keyword Planner Tool, which actively promoted and suggested keywords to advertisers and was a monetary tool for Google. The Court bestowed an obligation of the higher duty of care upon Google to ensure that the goodwill associated with trademarks be protected.

The usage of keywords as a part of the AdWords programme, including matter contained in the Ad-content, comprising of Ad-title, Ad-text, and URL, utilized by Google is bound to deceive or kindle uncertainty and puzzlement in the mind of an average person with imperfect recollection.[7] By establishing a link between their products/services with certain search terms or keywords, the advertisers were able to gain an advantage while placing advertisements on Google.

This entailed that the advertisers bid for the search terms or keywords to be placed at the top of the results when a certain keyword was searched, allowing Google to earn huge profits through the same. Such a practice takes the rivals to a higher pedestal since the general public gets easily directed toward the rivals’ websites while they continue to ride on the trademark holder or proprietor’s goodwill. In doing so, they also manage to tarnish the goodwill of the trademark holder and slowly dilute the trademark as well. Thus, the Delhi High Court reaffirmed the rulings in Mattel and Wadhwa that the trademark usage in meta-tags is a trademark infringement nonetheless.

The Court further took note of the high degree of care employed by Google in its EU and EFTA Policies wherein the public is more internet-literate and Google further investigates an Ad comprising of a trademark as keywords. In this regard, the Court highlighted the need for a similar procedure to be brought into play in India.

The Court further laid down the distinction between an average consumer in certain foreign countries as compared to an average consumer in India, where in the former case, the consumer is generally informed and reasonably attentive.[8] The Court disregarded several foreign judgments dealing with similar issues on account of the same.

Undoubtedly, keyword advertising provides a much-needed boost to any advertiser as part of his marketing strategy, but it also leads to complexities arising in terms of trademark infringement. An air of ambiguity is generated between rival trademarks and the consumers get caught in the crossfire where they remain in the dark about the source, owner, or developer of a particular product or service and easily get misled.

As the end result, the consumer too is at risk of getting cheated by dubious websites posing to be the trademark holders under the guise of meta-tags and keywords, which remain invisible to the eyes of the consumer or the end-user.

This case creates a strong reliable precedent for the various other cases pending in the courts battling similar issues on trademarked keywords or meta-tags as Google’s AdWords Programme continues to create conflict. In light of the lack of concrete legislation on the same, any and every contribution made by the courts plays a vital role in the development of that field. The decisions of the Delhi High Court are in consonance with the previous judgments on this subject matter.

The Court has expressly made Google accountable for infringement cases coming under its radar as a result of its Ad Programme, further solidifying the proprietors’ rights and slowly filling the gaping void in law pertaining to the same.

Conclusion

The concept of keyword advertising is still developing in India with no clear guidelines or regulations governing the same. The primary source of protection awarded to the trademark owners affected by the predatory, unfair, and mala-fide usage of their trademark by rivals stems from various orders and judgments laid down by the Courts.

The Courts have thus far been proactive in attempting to safeguard the proprietors’ rights by imposing a higher duty of care over search engines to ensure that the goodwill of a trademark holder is not disrupted by the advertisements of competing businesses. The Delhi High Court has succinctly highlighted the lapse in Google’s policy for investigating trademark infringement by the usage of marks in keywords, meta-tags, etc., and rightly granted the necessary relief to the affected party.

The Courts have acknowledged the usage of trademarked keywords as amounting to trademark infringement, irrespective of whether such usage is visible or not to the end user.