This article on ‘Use of a Trademark as a Keyword on Google Ad Program‘ was written by Amruta Patil, an intern at Legal Upanishad.
Case Analysis
Upcurve Business Services Pvt Ltd vs. Easy Trip Planners Private Limited & Ors., CS(COMM) 155/2022
Issues- Infringement of Trademark “UdChalo”(Trans: Let’s Fly)
Plaintiff– Upcurve Business Services Pvt. Ltd
Defendant– Easy Trip Planners Private Limited & Happy Fares
Bench– Justice Pratibha M Singh
Provision involved- Section 29 and 30 TMA,1999
Date of Decision- Pending (N.D.O.H- 30/11/22)
Introduction
Trademark infringement occurs when a mark is used by a person not authorized to use the mark i.e., is not a registered proprietor.
It is basically the unauthorized use of a registered trademark’s exclusive rights without the owner’s or licensees’ permission. The courts have frequently considered that the public becomes confused because of the similarities between the two marks and the categories of goods and services. They might make use of the registered trademark’s well-deserved repute to their detriment.
Infringement can occur when
- Mark is identical or similar enough to mislead the consumers regarding goods and services offered by the registered mark.
- The mark if similar leads to confusion among the public association with the mark.
- If the registered mark is used as part of any business to gain or destroy the reputation of the registered mark.
The punishment for infringement is imprisonment not less than 6 months extending up to 3 years or a fine of 50,000/- extending up to 2 lakhs.
Brief facts
The company namely Upcurve Business Services Pvt. Ltd is engaged online and offline.
The plaintiff in this suit runs a travel website namely “udchalo.com”. The said website has the mark “UdChalo” registered as a trademark under class 39.
The defendants are
Despite multiple requests, the defendants have not paid any heed to the said request which has led to the filing of this suit for permanent injunction restraining the use of the mark, passing off unfair competition, rendition for the damages, or delivery against the companies Easy Trip Planners, Hapyfares, and Google India Pvt. Ltd & Google LLC.
Issue Raised
Whether the using the trademark for a Google Ad word program constitute trademark infringement?
Contentions by the Plaintiff
The plaintiff’s contentions are that the defendants in this suit have used the keywords and AdWords “UdChalo” to promote their business and attract more customers while violating the plaintiff’s trademark.
The term is a registered trademark by the plaintiff for his business purposes under Class 39.
The issue of the plaintiff in this present suit is regarding the violation of the trademark which is done by the defendants by using his registered trademark on a Google Ads Program to promote their business which is also in the field of tours and travel.
The counsel for the plaintiff states that the use of the keyword for promoting the defendants’ business amounts to trademark infringement.
Contentions by the Defendants
Defendant no 1 contented that he had no “intention of bidding on the registered trademark and does not intend to use the same” and after receiving the notice, the business no longer uses the mark as a keyword.
Defendant no 2(Happyfares) on the account of personal difficulty was concerned if there was any action taken on the order passed by the Hon’ble Court.
The representative for Google on the next date of hearing i.e., 8/4 &26/4 demonstrated the working of the Google Ad Program, which was further responded to by the plaintiff on wanting to present their own technical authority to present the way the Ad program.
Judgment
The Judgement passed by the High Court was the use of the mark will constitute the infringement of the trademark and violation of the rights of the plaintiff, hence it was held that the defendants were directed to not use the mark.
The remaining defendants no 3 & 4 were directed to block the usage of the word “UdChalo”.
The matter is presently listed for November 30th, 2022, at Delhi High Court.
Analysis
Imitation is the best form of Flattery – Oscar Wilde
Businesses have also moved to the virtual world because of technological advancements and people’s growing reliance on the internet. Online advertising is one of the most effective forms of advertising in the modern world. The basic goal of internet advertisements is to show the best advertisements to potential clients at the appropriate moment.
Keywords or AdWords are popular tools for advertising business online, a practice which is being endorsed by many companies as means to promote their business online. The right keyword or AdWords will help attract more people in search of the products and services which are being offered.
A problem arises when a third party uses the mark to promote its products and services using a registered trademark as a keyword. By making consumers confused as to the origin, owner, or creator of the commodity or service, this violates the core goal of a trademark, which is to remove doubt or uncertainty among potential customers. When a third party purchases a keyword that is already a registered trademark, there is also a possibility of trademark infringement.
Owners of trademarks frequently assert that permitting a rival or competitor to use their mark as a phrase on search engines gives the latter an unfair advantage over the registered owner of the mark.
In this matter as well, Plaintiff has worked hard to gather and reach over 2.8 million users for the company, because of which it was targeted by the defendants. Both the contenders in this matter are in the same business i.e Tours and Travel there is a sense of competitiveness which exists to grab the customers.
Present Scenario
The regulations in India regarding trademark infringement and the associated issue of keyword advertising are still being developed, nevertheless. Keyword advertising is not specifically governed by any laws or regulations. A party that has used a registered trademark as a keyword may be able to assert defenses by proving that sufficient precautions were taken to prevent confusion between the trademark and the keyword or by proving that there hasn’t been any misleading association between the advertiser’s goods and services and the trademark holder. However, there is always a potential that in these situations, the registered trademark will be used infringingly.
Reference
- https://indiankanoon.org/doc/149880736/ (order dt. – 11th March 2022)
- https://indiankanoon.org/doc/193161645/ (order dt. – 15th March 2022)
- https://indiankanoon.org/doc/71124116/ (order dt. – 8th April 2022)
- https://indiankanoon.org/doc/140106193/ (order dt. -26th April 2022)
- https://indiankanoon.org/doc/87627115/ (order dt. -28th July 2022)
- https://indiankanoon.org/doc/124599495/ (order dt. – 9 Sept 2022)
- Times News Desk (2022 March 09) “udhchalo files infringement against Easy My Trip and Ors online travel agency in Delhi HC” https://mediabrief.com/udchalo-files-infringement-case-against-easy-my-trip/
- Harsh Asnani (2016 May 26th) “what is an infringement of Trademark” https://blog.ipleaders.in/what-is-infringement-of-trademark/
- https://www.livelaw.in/pdf_upload/google-ad-413982.pdf
- KAN & Krishme (2022 May 18th) “use of TM as a keyword on Google Ad Program – infringement or not” https://kankrishme.com/use-of-a-trademark-as-a-keyword-on-google-ad-program-infringement-or-not/