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