LI Network
Published on: December 19, 2023 at 12:19 IST
The Delhi High Court declared that the mere utilization of trademarks on Google Ads, an online advertising platform, does not constitute infringement under the Trade Marks Act, 1999.
This decision came in response to the allegations made by the online travel agency MakeMyTrip (MMT), asserting that its trademarks, “Makemytrip” and “MMT,” were employed as keywords in Google Ads to showcase ads and links of its competitor, Booking.com.
The verdict has triggered a fresh discussion on trademark infringement within the digital domain, centering around the potential confusion it may cause among users.
The Court noted that Booking.com is a well-known website, and the likelihood of confusion between MMT and Booking.com is minimal. The ruling suggests that while an individual or entity may pay to associate themselves with a popular brand, such an action may not be deemed trademark infringement.
Rather than determining right or wrong, the court addressed whether MMT’s trademark rights were violated. Siddhant Chamola, associate partner at Anand and Anand, explained that while the law provides criteria for deciding trademark infringement, not every use of a trademark necessarily constitutes a violation.
For instance, sharing a purchase of a branded item on social media does not imply trademark infringement because it doesn’t suggest that the person manufactured the item in question. Chamola added that the key test in Indian trademark law is whether an average consumer is likely to be confused between two entities.
The ruling implies that a third-party trademark can be used in AdWords bidding (Google’s advertising system) without infringement if it avoids confusion or misleading users about sponsored links and displayed ads. Safir Anand, senior partner at Anand and Anand, noted that based on this order, a third party can pay for ads associated with a keyword as long as the nature of business aligns, and both parties have their own reputation and an informed customer base that understands the distinction between the two companies.
Delhi High Court advocate Shashank Agarwal emphasized that paying for any keyword, even if it is a trademark of another firm, won’t constitute infringement as long as there is no confusion or deceit in the use of the trademark.
Experts caution against interpreting the judgment as a blanket approval for businesses to indiscriminately use competitors’ trademarks as keywords, emphasizing the need for a careful, case-by-case legal analysis.
Sonal Alagh, partner at Alagh & Kapoor Law Offices, emphasized that the ruling sheds light on trademark use in digital advertising but underscores the necessity for ongoing legal scrutiny as the digital advertising landscape evolves.