2012 Supreme(Mad) 3801

High Court of Judicature at Madras
P. JYOTHIMANI & M. DURAISWAMY
Consim Info Pvt. Ltd.,
Versus
Google India Pvt. Ltd., & Others
O.S.A. Nos. 406 & 407 of 2010 & M.P. Nos. 1, 1 & 2 of 2010 & M.P. Nos. 1 & 1 of 2012
Decided On : 10-09-2012

Headnote:A. TRADE MARKS ACT, 1999 - Section 2, 28, 29, 30 and 9, 31, 32 - Injunction against use of Appellant’s Trade mark of "Bharath Matrimony" etc - Refusal of, by High Court - O.S.A. filed - Appellant as well as the respondents 2 to 4 are engaged in the business of rendering the same type of services, namely matrimonial services. The Appellant is the registered proprietor of the trademarks in question. By virtue of Section 28(1) of the Act, the appellant have (i) the exclusive right to the use of the trade marks in question (ii) in relation to the services in respect of which, registration is made. Insofar as the respondents 2 to 4 are concerned, there is a dispute about what constitutes "the use of the trade mark", within the meaning of Section 28(1) of the Act - Contention of Respondent (google) that they are involved in the similar services as that of the appellants. The allegation against them is that of "contributory infringement" or "ancillary infringement" and they are alleged to have facilitated the infringement by the other respondents, by providing the trade marks of the appellant as key words and by allowing them to use those marks in the adtitle and adtext of their advertisement Held, Words ’Tamil’, ’Gujarathi’, ’Muslim’ etc, are descriptive terms, indicating a race, language, ethnic group or a community and no one is entitled to monopolise the use of these words. The word ’matrimony’ is descriptive of the state of marriage of a person. Since both the words are descriptive in nature, the appellant cannot claim monopoly over the individual words namely ’Tamil’, ’Telugu’, ’Gujarathi’, ’matrimony’ etc. However, the appellant registered a combination of these two words i.e. by registering as ’Tamil matrimony’. Malayalam matrimony ’Gujarathi matrimony etc. - If Respondents 2 to 4 uses the individual words constituting the registered trade marks of the appellant in their advertisements in the sponsored links column, then such use would certainly fall within Section 2(2) (c) (ii) and Section 29 (6) (d) of the Act - If the Appellant’s registered trade marks namely Assamesematrimony’ or ’Tamilmatrimony’ etc. is clicked, the respondents 2 to 4 slinks are shown on the right hand side as ’sponsored links’. Excepting the space in between the two words, the other words are identical and deceptively similar which would cause confusion in the mind of public - If one clicks the appellant’s keyword, it goes only to the appellant’s website and not to the respondent’s websites. Therefore, this would clearly establish that the respondents 1 and 5 had discriminated the appellant and also arbitrarily used the trademark words as key words in the ’sponsored links’ causing loss to the appellant business. If the same yard stick is applied even for the respondents 2 to 4, the same cannot be termed as arbitrary or discriminatory, since the appellants are popular in the field of matrimonial services, by adapting such practices as stated above would affect their business considerably.

       B. REGISTRATION OF TRADE MARK - Consideration - Held, on a reading of Section 9(1) (b) and Sections 31 and 32 of the Act, it could be seen that the registration of a trade mark is considered prima facie evidence of its validity and a registered trade mark cannot be held to be invalid in a legal proceeding on the ground that it is not registered under Section 9 of the Act Further Held, In normal course, it is true that the number of visitors that a site has on a daily basis, may include the search engine to include the whole or part of the name or title of the site, in the key word suggestion tool to enable the competitors of the site to choose words as adwords. In this aspect the learned single Judge held that there cannot be a presumption that the inclusion of those mimes in the keyword suggestion tool, happened with the knowledge of the search engine, about the registration of those words as trademarks. The learned Judge also held that the benefit of doubt would go the search engine since choice of the words "Tamil", "Matrimony", etc in the keyword suggestion tool need not necessarily have happened deliberately - the Learned Judge made it clear that dismissal of these applications shall not be construed to mean that the first respondent (google) may henceforth deprive the plaintiff (appellant) of the benefit of their Adwords Trademark policy, as reflected in documents filed by them. As already stated we are of the considered view that the appellant has established their case with regard to prima facie case and balance of convenience. As such, the appellants are entitled for injunction.

       C. CIVIL PROCEDURE CODE, 1908 - Order 41 Rule 27 - Production of Additional Documents - Delay in - Held, 2nd respondent has not stated anything in the affidavit as to the delay, in producing the documents and they have not stated any reason for not producing the documents before the learned single Judge. They have not stated anything in the affidavit filed in support of the petition as to the non availability of the documents at the time when the applications were argued before the learned Single Judge. The reasons given by the second respondent for producing the documents at a belated stage are not acceptable -Petition to receive additional document dismissed.