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2023 Supreme(Del) 3089
IN THE HIGH COURT OF DELHI AT NEW DELHI
Vibhu Bakhru, Amit Mahajan, JJ.
Google Llc – Appellant
Versus
Drs Logistics (P.)Ltd. & Ors. – Respondents
FAO(OS)(COMM) 2 of 2022 and FAO(OS) (COMM) 22 of 2022 & CM Nos. 5879 of 2022 & 5882 of 2022
Decided On : 10-08-2023
Subject
Intellectual Property - Trademark Law
Headnote
(B) The court distinguished between 'use' as confined to visibility and held that use of a trademark as a keyword is actionable under Section 29. (Paras 31, 58)
(C) Presumption of confusion under Section 29(2) cannot be avoided solely on the basis that the click-through leads to a different website. (Paras 134, 164)
(D) Google is active in selecting keywords and facilitating ads, thus not a mere intermediary and not entitled to the benefits under Section 79 of the IT Act. (Paras 182, 186) (E) The direction placed a duty on Google to investigate trademark complaints regarding its Ads Programme. (Paras 127, 192)
Mr Sandeep Sethi, Senior Advocate with Mr Neel Mason, Mr Ankit Rastogi, Mr Vihan Dang, Mr. Aditya Gupta, Ms. Abhilasha Nautiyal, Ms Aditi Umapathy, Mr Parva Khare, Mr Sauhard Aulang and Ms Devangini Rai, Advocates, for the Google LLC/Google India Pvt. Ltd.
Mr. Arun Kathpalia & Mr Chander M. Lall, Senior Advocates with Ms Nancy Roy, Mr Jeevesh Nagrath, Ms Ananya Chug, Ms. Prakriti Varshney, Ms Kirti Mewar and Mr Arjun Gaur, Advocates, for R-1 & 2.
Ms Sriparna Dutta Choudhury, Advocate, for R-3 in FAO(OS)(COMM) 2/2022, for thee Appellant in FAO(OS) (COMM) 22/2022 & CM Nos. 5879/2022 & 5882/2022.
Mr Kshitij Parashar, Advocate, for R-4.
| Table of Content |
|---|
| 1. impugned judgment details appellate context. (Para 1 , 2) |
| 2. factual background on google and drs. (Para 3 , 4 , 5 , 6 , 7) |
| 3. drs alleges trademark infringement. (Para 8 , 9) |
| 4. explanation of google ads programme. (Para 10 , 11 , 12) |
| 5. contentions and arguments regarding trademark use. (Para 28 , 29 , 30 , 31) |
| 6. court's analysis of trademark infringement. (Para 36 , 37 , 38 , 39) |
| 7. court's observations on use as keywords. (Para 55 , 56 , 57) |
| 8. conclusion of the judgment. (Para 189 , 190 , 191) |
JUDGMENT
Vibhu Bakhru, J.
INDEX
I. INTRODUCTION
II. FACTUAL CONTEXT
III. THE ADS PROGRAMME
IV. THE CONTROVERSY
V. THE IMPUGNED JUDGMENT
VI. CONTENTIONS ADVANCED ON BEHALF OF GOOGLE
VII. CONTENTIONS ADVANCED ON BEHALF OF DRS ANALYSIS:
VIII. USE OF TRADEMARKS AS KEYWORDS, WHETHER USE
IX. META-TAGS & KEYWORDS
X. USE OF TRADEMARKS AS KEYWORDS, WHETHER `USE' BY GOOGLE
XI. USE OF TRADEMARK AS KEYWORDS ABSENT ANY CONFUSION, UNFAIR ADVANTAGE, DILUTION OR COMPROMISE OF THE TRADEMARK, IS NOT INFRINGEMENT
XI.I. INITIAL INTEREST CONFUSION
XI.II UNFAIR ADVANTAGE DETRIMENTAL TO DISTINCTIVE CHARACTER OR REPUTE OF A TRADEMARK
XII. CONTRIBUTORY INFRINGEMENT
XIII. WHETHER GOOGLE IS ABSOLVED OF ANY LIABILITY BY VIRTUE OF SECTION 79 OF THE IT ACT
XIV. GOOGLE INDIA'S APPEAL
XV. CONCLUSION
XVI. CAVEAT
INTRODUCTION
1. The appellants have filed the present appeals impugning a common judgment dated 30.10.2021 (hereinafter `the impugned judgment') passed by the learned Single Judge, whereby the respondents applications under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereafter `the CPC') were allowed in terms of the following directions:
"127. I must state here that the plaintiff can seek protection of its trademarks which are registered in view of Section 28 of the TM Act, but cannot have any right on surnames/generic words like Packers or Movers individually. Having said that in view of my above discussion, the applications are liable to be allowed, subject to final determination of the suit in the following manner:
(I) The defendant Nos.1 and 3 shall investigate any complaint to be made by the plaintiff to them alleging use of its trademark and its variations as keywords resulting in the diversion of traffic from the website of the plaintiff to that of the advertiser
(II) The defendant Nos.1 and 3 shall also investigate and review the overall effect of an Ad to ascertain that the same is not infringing/passing off the trademark of the plaintiff
(III) If it is found that the usage of trademark(s) and its variations as keywords and/or overall effect of the Ad has the effect of infringing/passing off the trademark of the plaintiff then the defendant Nos.1 and 3 shall restrain the advertiser from using the same and remove/block such advertisements."
2. By the impugned judgment, the learned Single Judge found that the use of trademarks as keywords in the Google Ads Programme amounts to `use' under the provisions of the Trade Marks Act, 1999 (hereinafter `the TM Act') and thus, may constitute infringement. The learned Single Judge further held that Google LLC is not entitled to the defence of an intermediary under Section 79 of the Information Technology Act, 2000 (hereinafter `the IT Act').
FACTUAL CONTEXT
3. Google LLC, the appellant in FAO (OS) (COMM) 2/2022, hereafter referred to as `Google', is a company incorporated under the laws of the United States of America and owns, manages and operates the Google Search Engine (www.google.com/www.google.co.in) (hereafter also referred to as `the Search Engine') as well as the Google Ads Programme (hereinafter `the Ads Programme'). Google India Private Limited, the appellant in FAO OS (COMM) 22/2022, hereafter referred to as `Google India', is a subsidiary of Google and is appointed as a non-exclusive reseller of the Ads Programme in India.
4. DRS Logistics (P) Ltd. (respondent no. 1) and Agarwal Packers and Movers Pvt. Ltd. (respondent no. 2), hereinafter collectively referred to as `DRS', are the lea
