Back
IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
Makemytrip India Private Limited - Appellant
Versus
Booking.com B. V. & Ors. - Respondents
Civil Suit (COMM) No. 268 of 2022, I.As. No. 6443-6447 of 2022
Decided On : 27-04-2022
Trademark Infringement - MakeMyTrip - Commercial Courts act, 2015 - Sections 29(6)(d), 29(7), 29(8) and 29(9) of the Trade Marks act, 1999 - Sections 2(2)(b), 29(4)(c), 29(6)(d), 29(7) and 29(8)(a) - Misrepresentation and Passing Off - Google ads Program
Fact of the Case:
The Plaintiff, MakeMyTrip (India) Pvt. Ltd., sought protection of its registered trademarks 'MakeMyTrip' and its variants, alleging infringement by Defendant No.1, Booking.com B.V., through the use of the mark as a keyword on the Google ads Program for promoting its services. The Plaintiff claimed that such use constituted infringement under the Trade Marks act, 1999.
Finding of the Court:
The Court found that the use of the Plaintiff's mark 'MakeMyTrip' as a keyword through Google ads Program by Defendant No.1 constituted trademark infringement under various sections of the Trade Marks act, 1999. The Court also held that the 'invisible' use of a mark as a keyword can constitute passing off as a matter of principle.
Issues: The issues involved included the use of a registered trademark as a keyword on the Google ads Program, infringement under the Trade Marks act, 1999, and the concept of misrepresentation and passing off in the digital era.
Ratio Decidendi: The Court's decision was influenced by the interpretation of key legal provisions under the Trade Marks act, 1999, and the Commercial Courts act, 2015, regarding trademark infringement, misrepresentation, and passing off in the context of the use of trademarks as keywords on the Google ads Program.
Final Decision: The Defendants were restrained from using the mark 'MakeMyTrip' as a keyword on the Google ads Program, with an exception for standalone use of words 'make', 'my', 'trip' in a descriptive or generic sense. The injunction was restricted to the territory of India.
JUDGMENT
Prathiba M. Singh, J. - This hearing has been done through hybrid mode.
I.a. 6446/2022 (for exemption)
2. This is an application seeking exemption from filing original documents. Recording the Plaintiff's undertaking that the inspection of original documents shall be given, if demanded, and that the original documents shall be filed prior to the stage of admission/denial, the exemption is allowed.
3. I.a. 6446/2022 is disposed of.
I.a.6447/2022 (for court fees)
4. This is an application seeking extension of time for filing of court fees. Ld. counsel for the Plaintiff submits that he has deposited the court fee in the treasury. One week time is extended for placing the stamp on record. 5. I.a.6447/2022 is disposed of.
I.a. 6445/2022 (additional documents)
6. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial appellate Division of High Courts act, 2015 (hereinafter, 'Commercial Courts act'). The Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts act.
7. I.a. 6445/2022 is disposed of.
I.a.6444/2022 (sealed cover)
8. This is an application seeking leave to file select documents in a sealed cover. These documents have been perused by the Court and they set out the daily budget of the Plaintiff on the Google ads Program.
9. Considering that the Defendant No.1 is one of the biggest competitors of the Plaintiff, the documents shall be kept in a sealed cover. I.a.6444/2022 is disposed of.
CS (COMM) 268/2022
10. Let the plaint be registered as a suit.
11. Issue summons to the Defendants through all modes upon filing of Process Fee.
12. The summons to the Defendants shall indicate that the written statement(s) to the plaint shall be positively filed within 30 days from date of receipt of summons. along with the written statements, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statements shall not be taken on record.
13. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement(s). along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
14. List before Court on 27th July, 2022.
I.a.6443/2022 (u/O XXXIX Rules 1 & 2 CPC)
15. This suit is one amongst a large number of suits, which have been filed before this Court by various trademark owners seeking protection from misuse of the trademarks by their competitors, who use the trademarks for the purpose of getting greater visibility of their own advertisements on Google searches in order to promote their own services. Two such cases, namely, CS(COMM)- 392/2019 titled Cars24 Services Pvt. Ltd. v. Girnarsoft automobiles Pvt. Ltd. and CS(COMM) 155/2022 titled Upcurve Business Services Pvt. Ltd. v. Easy Trip Planners Pvt. Limited are currently part-heard before this Court.
16. The Plaintiff - MakeMyTrip (India) Pvt. Ltd. has filed the present suit for permanent injunction seeking protection of its registered trademarks 'MakeMyTrip' and its variants. It is the case of the Plaintiff that the Plaintiff's marks are being used by Defendant No.1- Booking.com B.V. as keywords on the Google ads Program for promoting Defendant no.1's services as advertisements when search results are displayed on the Google search engine.
17. In the present case, the domain name www.makemytrip.com, was registered by the Plaintiff way back in May, 2000. The Plaintiff is the registered owner of the trademark 'MakeMyTrip' in various classes 9, 35, 39 & 43 since the last several years. In the application bearing number 2149947 for the registration of the mark 'MakeMyTr
AI
The use of a registered trade mark as a keyword through Google Ads Program by a competitor constitutes trademark infringement under the Trade Marks Act, 1999.
The use of trademarks as keywords in advertising can constitute infringement under trademark laws, even if not visible to consumers, as it may mislead and divert traffic from legitimate trademark own....
The main legal point established in the judgment is the violation of the interim injunction order and the importance of preventing diversion of traffic from the plaintiff's website to that of a compe....
The main legal point established in the judgment is the finding of trademark infringement and passing off, leading to the award of compensatory and nominal damages to the Plaintiff.
The court emphasized likelihood of consumer confusion in trademark law, holding that similar marks can infringe established trademarks regardless of differences in service or field, thus supporting t....
The court upheld that lack of deceptive similarity precludes claims of trademark infringement and passing off, necessitating proof of goodwill and likelihood of confusion.
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
