With the evolution of technology, businesses across the globe have adopted the inclusion of various tools and strategies to promote their products and services. An effective manner to promote a business/brand is the use of trademarks as keywords in the Google Ads program. This helps in achieving the target potential customers with the most relevant search terms. The article examines how courts across various jurisdictions have addressed infringement of trademark through the Google Ads Program and outlines the legal implications of using trademarks as keywords on the Google Ads platform.
Google operates the popular Google Search Engine, with the function of enabling a user of the Google Website to search for relevant webpages, content, images, etc. on the internet by using keywords. As status quo bias exists amongst consumers, they tend to hit the top few results only displayed on the Google Search Engine list. This is the reason why businesses use various optimization tools and techniques, so that if a user puts keywords relating to their business, their own website is listed in the top few results.
The Google Ads Program aids in the visibility of a business/brand in the search results. The subscribers of the program pay a fee to select words/phrases that they believe are likely to be used by customers on the Google Search Engine. By selecting keywords, the Google Ads Program offers the subscribers’ website/webpage or content to be displayed at the top as an “Ad” in the search results. The subscription fees for the Google Ads program are determined by bidding, in a manner that the more famous the keyword, the more the chance of it being bid by an entity through the Google Ads Program.
Does Invisible Use of Trademark Amount to Infringement?
The quintessential aspect of Trademark Law is to secure the real identity of any product/service. Section 29 of the Indian Trademarks Act, 1999 [“the Act”] deals with the infringement of a registered trademark when a person, not being a registered owner of a mark, uses in the course of trade a mark identical or deceptively similar to the goods or services of the owner of the registered trademark. The use of trademarks as keywords on the Google Ads Program is extremely beneficial to businesses as they help them reach potential customers who are searching for a specific product or service they offer. For instance, if a company sells cars, they might use the trademark “Audi” as a keyword in their Google Ads campaign. Thereby, when a consumer searches for Audi on Google, their ads will appear on the top of the search results.
The issue of infringement of trademark through keyword advertising was for the first time dealt with in India in Consim Info Pvt. Ltd. v. Google India Pvt. Ltd., 2012 SCC OnLine Mad 3462. In this case, the Appellant had bid for the keyword “BharatMatrimony,” a registered trademark of a leading company in online matrimonial services. The Court opined that the registered mark is descriptive in nature in respect of the services provided. Moreover, the word “matrimony” is a generic word for all entities in this business. Thereby, giving monopoly to the mark “Matrimony” in the Google Ads domain will hamper competition. Hence, the Madras High Court nullified the liability of both the advertiser as well as Google.
The jurisprudence of infringement of trademarks as keywords was developed in DRS Logistics Pvt. Ltd. & Ors. v. Google India Pvt. Ltd. & Ors., CS (Comm) 1 of 2017, wherein the suit was filed to restrain Google and other third parties from using the registered trademark “Agarwal Movers and Packers.” This case categorically held that keywords, even though invisible, direct internet traffic to the website of a competitor, confusing the consumers. Thus, the Delhi High Court opined that the use of such a keyword, which is a registered trademark, calls for action for infringement/passing off. Similarly, in Upcurve Business Services Pvt. Ltd. v. Easy Trip Planners Pvt. Ltd. & Ors., CS (COMM) 155 of 2022, the Defendants were using the registered trademark “UdChalo” on the Google Ads program. The Delhi High Court acknowledged that the Defendants were involved in the competing industry of travel services as that of the Plaintiff, and bidding on its registered mark would confuse the consumers who would use the services of the Defendants as they are displayed as a top result in the search engine. Hence, keywords, even though invisibly used, amount to infringement of trademarks.
Looking through the lens of MakemyTrip v. Booking.com
In a landmark order dated 27th April 2022, the Delhi High Court awarded an interim injunction in favor of MakemyTrip in the matter of MakeMyTrip India Pvt. Ltd. v. Booking.com B. V. & Ors., CS (COMM) 268 of 2022. Booking.com was restrained from using “MakeMyTrip,” a registered mark, as a keyword on the Google Ads Program, as that would result in infringement of trademark and will constitute passing-off action. This order elucidates the path of other increasing similar cases against the use of trademarks on the Google Ads program.
Google has no rules against the bidding of brand keywords. Google’s advertising policies on trademarks as keywords explicitly state that “We do not investigate or restrict trademarks as keywords.” However, if a trademark is used in ad text, Google may restrict the use of such trademarks, provided the trademark owner submits a valid complaint. The Court opined that the Google Ads program setup forces the owner of the trademark to bid for its own trademark as a keyword, or else its competitors will be at better visibility for their goods and services on Google. Thereby, Google is in turn drawing money from the goodwill of a trademark owner by allowing its competitors to bid for the said mark as a keyword. The Court in this case expansively interpreted Section 2(2)(b) of the Act (“use” requires visual representation) read with Section 29(9) of the Act (spoken use of word marks can be infringement) and opined that invisible marks can constitute use. Further, the use of such registered trademarks as keywords violates Section 29(6)(d) and Section 29(7) of the Act.
Moreover, the Court cited People Interactive Pvt. Ltd. v. Gaurav Jerry, 2014 SCC OnLine Bom 4607, to ascertain that the invisible use of registered trademarks by competitors dilutes the mark and amounts to online piracy. Notably, keyword bidding on the Google Ads program, through advertisement, diverts the business of the proprietor’s website to the competitor and creates an unfair advantage in violation of Section 29(8)(a) of the Act.
However, the Court failed to examine the question as to whether a user who specifically wants to use the services of the MakeMyTrip website would in actuality be diverted/confused. In foreign jurisdictions, the question of trademark infringement is ascertained by analyzing customer surveys and data on the basis of click-through campaigns/rate, etc. It is essential that this data-driven approach is introduced in Indian Courts to demonstrate and prove the claims of consumer confusion. The court in the MakeMyTrip decision ruled on trademark infringement solely on the basis of business loss without analyzing the aspects of consumer confusion, which is ideal for violation of Section 29 of the Act. The reasoning ought to have been based on both these parameters before ascertaining a conclusion. The Court, via the interim order, restricted the use of “MakeMyTrip” as a keyword on the Google Ads program within the territory of India.
Global Injunction on the use of keywords as trademarks
The question as to whether a global injunction can be granted against the use of a registered trademark as keywords in the Google Ads Program so far remains unanswered by the Indian Courts. However, the author is of the opinion that a global injunction restraining the Defendants/competitors from bidding on the trademarks of the proprietor on the Google Ads Program will be in contravention to trademark law of other foreign jurisdictions such as the European Union.
The European Commission in Case AT 40428-GUESS dated 17th December 2018 (“Guess Judgment”) opined that there cannot be any restriction on the use of a trademark as keywords on the Google Ads Program. It was opined that such restriction would lead to restraint in effective competition “by object.” Moreover, the Commission observed that the proprietor of a trademark can prevent a competitor from advertising his trademark through AdWords if it creates confusion in the general public, not when it results in increased advertising costs.
The position that the use of a trademark as a keyword is not infringement is internationally recognized in the UK, US, European Union, Australia, New Zealand, Russia, South Africa, Canada, Spain, Italy, Japan, and China. In Veda Advantage Limited v. Malouf Group Enterprises, [2016] 255 FCA, the Federal Court of Australia has observed that keywords are invisible to consumers, so they are unaware as to which keyword is driving the search results. Thereby, bidding on competitors’ trademarks on the Google Ads platform is not infringement. The Courts in Australia have observed that keywords can be acquired by anyone, and they do not fulfil the function of a mark in identifying a commercial source to the exclusion of others. In contrast, the use of keywords as search terms produces other competitor ads as well on the search engine.
The foreign jurisdictions have observed that keywords are invisible, inaudible, and imperceptible to the consumers. Keywords could not be understood to differentiate the services of one seller from that of another, as a consumer is unaware of its implication. Further, global standards to protect trademarks as keywords in the Google Ads program are very low in various other foreign jurisdictions as compared to India. Thereby, the Indian Courts should not impose their standards of trademark protection internationally among foreign jurisdictions, and a global injunction on the use of keywords as trademarks is not an ideal endeavor.
The Contemporary Position
The issue of using trademarks as keywords on the Google Ads program and its related infringement has evolved in India with the Google LLC v. DRS Logistics (P) Ltd, 2023 SCC OnLine Del 4809 judgment passed by the Division Bench of the Delhi High Court. The Hon’ble Court delved into the core functions of a trademark and ruled in favor of Google by holding that it prima facie found nothing illegal in Google’s acts of using trademarks as keywords, provided there was no confusion that the links or Ads displayed were not associated or related to DRS. Absent any likelihood of confusion, DRS’s grievance would not be actionable under Section 29(2) of the TM Act.
Even the MakeMyTrip Case was challenged under appeal, and the Hon’ble Division Bench in Google LLC v. MakeMyTrip (India) Pvt. Ltd., FAO(OS) (COMM) 147/2022, judgment dated 14.12.2023, set aside the order in MakeMyTrip India Pvt. Ltd. v. Booking.com B. V. & Ors., CS (COMM) 268/2022, which was decided on 27th April 2022. It is now a settled position of law that the use of trademarks as keywords by competitors, absent any confusion or deceit, does not per se amount to infringement of trademark.
In conclusion, the recent judgments in the cases of Google LLC v. DRS Logistics (P) Ltd. and Google LLC v. MakeMyTrip (India) Pvt. Ltd. have established a clear legal precedent regarding the use of trademarks as keywords in Google Ads. The Delhi High Court’s rulings underscore that the mere use of trademarks as keywords does not constitute trademark infringement, provided there is no likelihood of confusion or deceit among consumers. These decisions reflect a balanced approach that harmonizes competition law with trademark law, recognizing the commercial realities of digital advertising. The principle of comity of court and nations has guided these rulings, affirming that competitive practices in the online marketplace, when conducted transparently, align with legal standards. As such, businesses engaging in keyword bidding on Google Ads can operate with greater clarity, knowing that trademark usage will not be deemed infringing unless it misleads or confuses consumers.