Google AdWords and trademark infringement

Introduction

Google has embedded itself into every part of our lives and permeates every facet of modern life. It has become pervasive. Google has become one of the most successful marketing companies in the world as a direct result of people’s growing dependency on the internet and the fact that the bulk of our lives now occurs online. Google Ads is an advertising platform developed by Google to assist merchants and business owners in expanding their customer base via the targeted broadcast of adverts to potential customers.

When internet users use Google’s search engine to do a search, the aforementioned feature allows advertisers to make bids on “keywords” so that brief advertisements, service offers, and product listings may be shown to those users.

After then, advertising will appear above the user’s organic search results, with the term “Ad” applied to the beginning of such search results to signify that they are advertisements. After the user has finished their search, this will occur. The aforementioned feature enables advertising to reach a wide variety of prospective customers for their product or service.

What are keywords and how the Google Ads program operates?

The most common strategy used by businesses to build their online presence is a kind of advertising known as keyword advertising on search engines that use keyword research. Users of a search portal will often employ words, phrases, symbols, and even numbers as search strings. These are referred to as keywords.

Example: If a business sells footwear, for instance, its website is optimized so that visitors looking for phrases such as “sneakers,” “women’s boots,” “running shoes,” and similar terms are sent to that company’s website. There are methods for keyword advertising that enable marketers to obtain specific words or phrases that will direct searchers to their products or services when they are seeking anything relevant to the keyword.

This program makes it possible for an advertiser to make a bid on certain keywords, which are phrases entered by browser users. The advertiser’s AdWords account permits the selection of keywords pertinent to the company’s brand, products, and services, as well as the industry.

After the user has entered the relevant term, the advertiser with the highest bid on the supplied keyword will have his ad shown at the top of the list of available advertisements. AdWords is a pay-per-click advertising program, so Google earns money whenever a user clicks on an advertisement and subsequently visits an advertiser’s website.

When does the problem arise?

Since the owner of a trademark has greater control over the brand, it might cause problems when a third party uses the trademark as a term to connect to its own website and sell its own goods and services. Trademark infringement may occur if a third party uses a word that is already owned by another party.

Trademark owners often complain that allowing competitors to use their mark as a keyword in search results is unfair since it provides them an edge over the trademark owner.

Google’s trademark policy and Indian legal framework

Google’s policy concerning trademarks

As part of its Ads policy1, Google says it will follow local trademark laws and requires that Google Ads not violate the trademarks of third parties. Google also says that it will follow all trademark laws around the world. If a trademark owner thinks that someone else is using their mark without permission, they can file a complaint with Google.

Google looks into these complaints, and if it finds that the concerns are valid, it may limit how the trademark can be used. On the other hand, Google doesn’t do much more than look at and track how trademarks are used in the text or URLs of ads. Google’s policy is that trademarks can be used as keywords without being looked into or limited in any way.

Exception: If a trademark infringement complaint is made, Google will do a limited investigation in countries that are part of the European Union and the European Free Trade Association to see if a keyword and an ad with a trademark make it hard to tell where the advertised goods or services come from.

This is an exception to the rule that Google usually doesn’t look into complaints about trademark infringement. If Google thinks that putting together a keyword and an ad makes for a bad user experience, it will limit how often people can do that. If Google does

Indian legal framework

Infringement of a registered trademark is defined by Section 29 of the Indian Trademarks Act, which states that this type of violation occurs when a person who is not the registered owner of the trademark uses, in the course of trade, a mark that is identical or deceptively similar to the registered trademark in relation to the goods or services for which the trademark is registered.

Important precedents

Consim Info Pvt Ltd v. Google India Pvt. Ltd. & Ors., 2013(54)PTC578(Mad).

• In the case of Consim Info Pvt. Ltd., trademark infringement through keyword advertising was examined for the first time in India.
• In this case, the Appellant, a well-known provider of online marriage services, has registered a number of trademarks, including Bharatmatrimony, Tamilmatrimony, and others.
• As a result, the Appellant requested that the Respondents be prohibited from using these registered trademarks or variants as online search keywords.
• The Respondents asserted that their use of the Applicant’s trademark was not “in the ordinary course of business,” but rather in conformity with acceptable business and industrial practices.
• Ultimately, the court determined that the registered marks of the appellant were descriptive of the services they offered. Neither the advertiser nor the search engine was required to pay.

Upcurve Business Services Pvt Ltd v. Easy Trip Planners Private Limited & Ors., CS(COMM) 155/2022,

• In this case, a travel firm known as the Plaintiff filed a complaint against Easy Trip Planners Private Limited and happyfares.in for utilizing the registered trademark “UdChalo” (which means “Let’s Fly”) to attract customers to their websites through the Google Ads Program.
• The Delhi High Court granted an order prohibiting Defendant Number 1 from using Plaintiff’s mark as a keyword.
• The court agreed that Defendant Number 2 was in a rival company, travel services, and that using the phrase “UdChalo” to advertise its business would be a trademark infringement.
• Regarding whether or not this would be a breach of the law and whether or not using a trademark as a keyword would be a violation of the law, the Court determined that the matter would be regarded as if it had been heard before and would be heard anew.

DRS Logistics Pvt Ltd & Others v. Google India Pvt Ltd & Others CS (Comm) 1/2017,

• In this case, the plaintiff attempted to prevent Google and other third parties from using its registered trademark “Agarwal Movers and Packers” as a term to trigger search results on Google advertisements.
• In this instance, the court determined that the keyword, despite being deemed inconspicuous, drove internet traffic to the competitor’s/website. advertiser’s This made it unclear to the general public where the page originated and whether it belonged to the Plaintiff.

MakeMyTrip v. Booking.com on Google CS (COMM) 268/2022

• The facts of the case are, MMT is the registered owner of the trademarks “MakeMyTrip,” “MakeMy,” “MyTrip,” and “MMT,” however Google provides these terms as keywords to third parties including Booking.com.
• The Google AdWords program offers businesses a competitive advantage since their adverts display first in the category of the advertisement. MMT requests that Google stop using its registered trademarks as keywords. This is all connected to the case they filed against Google.
• Google argues that the use of a trademark as a keyword does not constitute trademark infringement. The United Kingdom, the United States, the European Union, Australia, New Zealand, Russia, South Africa, Canada, Spain, Italy, Japan, and China all accept this. MMT’s claim that it has been aware of the usage of the term “MakeMyTrip” since 2019 is deceptive and contradicts its previous claim that it has been aware of the usage since 2018.
• The court judged it inappropriate to enable Booking.com or Google to benefit from the goodwill of the Plaintiff’s mark. As a result, the court forbade Google Ads from utilizing the term “makemytrip.”
• The Court ruled that Booking.com may use the terms “make,” “my,” and “travel” in the Google Ads program so long as they are not used concurrently.

Conclusion

Google Adwords is one of the tools that help businesses choose the right keywords and target them. The European Court of Justice has decided that using a term in business that is the same as or very similar to a registered trademark does not mean that the trademark itself is being used.

Considering the significance that the internet currently plays in each of our lives, it should come as no surprise that online advertising is a crucial tool that businesses can utilize to increase their consumer base. It is of the highest significance to always foster healthy competition in the market so that customers are aware of all available options.

However, a compromise must be reached between trademark owners who want to protect their legal rights and marketers who want to connect with their target audience of consumers in the most effective way possible. The customer’s demands are of the highest significance and must be prioritized.

Bibliography:

Vadehra, S. (2022) Use of a trademark as a keyword on Google ad program-infringement or not? – trademark – India, Use Of A Trademark As A Keyword On Google Ad Program-Infringement Or Not? – Trademark – India. Kan & Krishme. Available at: https://www.mondaq.com/india/trademark/1192864/use-of-a-trademark-as-a-keyword-on-google-ad-program-infringement-or-not (Accessed: November 2, 2022).

Iplf (2022) Google Adwords and infringement of trademarks, IPLF. Available at: https://www.ipandlegalfilings.com/google-adwords-and-infringement-of-trademarks/ (Accessed: November 2, 2022).

Narula, R. and Singh, D. (2022) Google ads program under scrutiny by the Delhi High Court, Lexology. RNA Technology and IP Attorneys. Available at: https://www.lexology.com/library/detail.aspx?g=2e5c946a-180b-4521-b76c-05f27bd9eb31 (Accessed: November 2, 2022).

Sangal, A., Roy, S. and Nag, T. (2022) AdWords litigation in India, Lexology. Khaitan & Co. Available at: https://www.lexology.com/library/detail.aspx?g=06fdcf96-9496-44b4-89c6-e75a789d0170 (Accessed: November 2, 2022).

This article has been submitted by Nirmiti Ratnakar, a student at Symbiosis Law School, Pune.