Google AdWords, Internet Search & Trademark Infringement in India
Google is widely regarded as the most favoured search engine globally, commanding a significant audience share of 80% among Internet users worldwide. Given the extensive user base that engages with its search results, Google has effectively leveraged this characteristic to establish itself as a highly lucrative advertising company in the form of its AdWords (or ‘Google Ads’) platform. This advertising platform exhibits ads and sponsored links that are activated by specific keywords, appearing alongside organic search results that are not sponsored.
The platform, however, has faced criticism and legal challenges in the United States, the European Union and, more recently, in India due to its alleged involvement in trademark infringement. The courts, while dealing with the issue, have been compelled to address the conflict between traditional trademark infringement principles and the emergence of new technologies in the digital era.
In this post, I seek to analyse the current state of trademark law in India with respect to keyword-triggered online advertisements. I examine how Google AdWords uses keywords to generate online advertisements, where trademarked terms can enter this process, and how Google's policy in India has treated the use of such terms.
Google AdWords Platform and Trademark Infringement
The Ads Programme serves as a user-friendly advertising platform that enables advertisers to create and display online advertisements that are linked to their respective websites. The advertiser acquires specific keywords to establish associations between their website and AdWords advertisements, and there are multiple advertising tiers available for selection. When an individual utilises the Google Search application to execute a search query, advertisements will be displayed in conjunction with other search results.
The primary disagreement between trademark owners and Google pertains to the utilisation of registered trademarks as keywords, wherein advertisers engage in competition to obtain prominent placement in search results. For instance, in DRS Logistics (P) Ltd v Google India (P) Ltd, the trademark owner claimed that ‘when someone looks for “Agarwal Packers and Movers”, Google is able to direct that traffic meant for the plaintiff, to the site of infringing third parties…this is a classic case of direct infringement and inducement to infringe.’ Google, for its part, has maintained that, as per its policy, ‘Google does not allow any third party to put /publish/refer to a Trademark of an owner in the Adtext /Adtitle.’ The defence strategy employed by Google in such cases has mostly been predicated upon its particular understanding and application of trademark usage. It has contended that its practise does not meet the criteria of ‘usage’ as defined by the Trade Marks Act, 1999. Furthermore, according to Google, even if the keyword bears resemblance to a registered trademark, it does not inherently constitute an act of infringement. According to Google, the utilisation of keywords does not meet the criteria of ‘use of a mark’ as defined in section 2(2)(b) of the Act, as these keywords are not perceptible to internet users. It has contended that 'the utilisation of specific phrases or trademarks must not be subject to any limitations or constraints in terms of bidding. In addition, Google has utilised the protective provision delineated in section 79 of the Information Technology Act, 2000 (‘IT Act’) to position itself as an intermediary. The company asserts that it functions as an impartial platform, shielded from legal responsibility regarding the content provided by external parties.
Legal Position in India
The Trade Marks Act encompasses provisions for the registration of trademarks and establishes a civil cause of action for trademark infringement as outlined in section 29. In the context of section 29, Indian courts have consistently established certain criteria for determining infringement. Firstly, in terms of section 28(1) of the Act, the trademark in question must possess validity as the action for infringement of a trade mark is a ‘statutory remedy conferred on the registered proprietor for the vindication of his exclusive right to use the registered mark.’ Secondly, the infringer must have employed the trademark in commerce, specifically in relation to the sale or promotion of goods or services. Thirdly, in terms of section 29(4)(c), this utilisation must have occurred without proper authorization. Lastly, the unauthorised use of the trademark must be reasonably expected to result in confusion.
The division bench of the Delhi High Court, in its recent decision in Google LLC v DRS Logistics (P) Ltd, declined to restrict the interpretation of ‘use’ solely to visual representations. The Court placed emphasis on the fact that the utilisation of a trademark is not necessarily restricted to tangible or printed manifestations. It conducted a comprehensive analysis of section 29 of the Trade Marks Act to thoroughly examine whether the use of trademarks as keywords amounted to infringement. The Court reached the conclusion that the scope of ‘use in advertising’ surpasses the mere visual display of the trademark within an advertisement. Having held the above, however, the Division Bench answered the key question as to whether the use of trade marks as keywords is an infringement in the negative. The Court held that, in absence of any confusion, unfair advantage, dilution or compromise of the trade marks, a keyword does not perform any primary function of identifying the source of the goods or services. Its use, therefore, cannot be perceived as a ‘use of trade mark.’ It further held that, while Google, as an intermediary, might not be liable for any third-party information, data or communication link available or hosted by it in terms of section 79(1) of the IT Act, the said exemption was not available if its function was not limited to merely providing access to the communication system over which information made available a by third-party was transmitted or hosted. The Court unequivocally rejected the fundamental assumption that Google's role is limited to providing tools and technical infrastructure for advertisers to utilise keywords and held that its utilisation of trademarks as keywords constituted usage in advertising in terms of the Trade Marks Act.
Following the said judgment, the Delhi High Court, in PolicyBazaar Insurance Web Aggregator v Coverfox Insurance Broking Pvt Ltd, has further clarified that, if the advertisements displayed would lead the user to believe that they are associated with the trade mark, then the use of the trade mark as a keyword would infringe the trade mark. The Court observed that the display of such advertisements would amount to infringement even if the user realises upon accessing the website that it was not the one he intended to access and that the goods and services were not those associated with the registered trade mark.
Employing a registered trademark as a keyword has enabled the creation of a platform wherein two competitors can vie for enhanced search engine prominence. This necessitates the trademark owner to engage in bidding for its own trademark to guarantee that its goods/services are prominently displayed in Google search results and not unlawfully appropriated by competitors. While the courts in India have aimed to consider the assertions made by trademark holders, they have also exhibited caution in order to avoid impeding the fundamental operations of Google, which has become an indispensable component of the Internet's structure. The courts have so far expressed the view that the use of trade marks as keywords, in absence of any confusion, unfair advantage, dilution or compromise of the trade marks, would not amount to an infringement.
Saai Sudharsan Sathiyamoorthy is an Advocate at the High Court of Madras, India.
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