Open Access Research Article
KEYWORD BASED ADVERTISEMENT AND TRADEMARK PROTECTION INTRODUCTION:
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KEYWORD BASED ADVERTISEMENT AND TRADEMARK
PROTECTION INTRODUCTION:
AUTHORED BY - NISHANTH GOWDA S
Businesses have moved to the virtual world as a result of technological advancements and people's growing reliance on the internet.
Online advertising is one of the most effective forms of advertising in the modern world. The basic goal of internet
advertisements is to show the best advertisements to potential clients at the appropriate
moment.[1]
Advertisers
use search engines Bing Ads or Google Adwords, respectively, to buy any keyword that will then trigger their
advertisements when a user uses it as a search string which means keywords bidding. If multiple users bid
for the same keyword, the highest bidder will have his sponsored advertisements or links appear next to the organic
results that the algorithm produced in
response to the search string.
TRADEMARK INFRINGEMENT:
Section 29 states
that using a mark that is identical to or deceptively similar to one that is registered in respect of goods or services
by an individual who is not the registered proprietor constitutes infringement.[2]
Section 29(6)(d)
deals with whether a person uses a registered trademark on business
papers or in advertising.[3] If
the individual knew or had cause to know that the use of the mark would lead to infringement of the said trademark
without duly authorized by the proprietor or a licensee, in the course of advertising goods
or service, such act would
be infringement to the mark holder. [4]
Section
29(8) deals with infringement of mark by way of advertising, if such
advertising takes unfair advantage
and contrary to industrial or commercial practices;
hampers the distinctive character; and against the trademark reputation.[5]
KEYWORD TRADE
INFRINGEMENT:
The term "Keyword Trademark Infringement" refers to a situation in which a firm with trademark rights claims that its rights have been violated when the mark is
used by other businesses,
particularly rivals, as keywords in online searches to promote their own
products or services. Customers are
misdirected to the wrong websites as a result, and the reputation of the original business may be severely harmed
if the latter company so chooses. Hence, the latter business can benefit from the former's goodwill.For example, if
someone opens a new NGO and purchases Child Rights as a keyword,
the NGO advertisements might show up whenever
someone searches for Child Rights and You (CRY). It seems that the
advertisers made a wise decision
because the popular phrase CRY would receive more views than the keywords for
the recently established Organization.[6]
According to the ECJ[7],
to show trademark infringement, four essential requirements must be demonstrated. The infringement must be:
(i)
made in the course of business;
(ii)
made without the mark owner's consent;
(iii)
related to identical or similar goods or
services; and
In M/s DRS Logistics Pvt. Ltd and
Anr v Google India Pvt. Ltd and Ors,[9]
the Plaintiff approached the Delhi High Court seeking
protection of his trademark
“Agarwal Packers & Movers”, under which
it has been offering transport and logistics services for decades. The plaintiff
complained of a number of third parties,
largely of its competitors, that use the plaintiff’s
trademarks as a keyword on the defendants search engines, allowing their
competing websites to be displayed as top search results when
the plaintiff’s trademark is entered into search engine by an unsuspecting consumer.
Despite several favorable
judgements against specific
third-party advertisers, the plaintiff was forced to take action directly against
the search engines that were
parties to the current lawsuit since the unauthorized use of its trademarks had not stopped. Plaintiff's arguments
continued to centre on (i) customer uncertainty regarding the source of the competitor's services
and (ii) traffic
being diverted from the plaintiff's website to the competitor's or advertiser's
website. The main argument put forth by the defendants was that using keywords in such an invisible way
did not amount to trademark infringement. This is so that the Trademarks Act of 1999's definition of "use"[10]—which does not include
using a trademark as a keyword—can be applied.
The High Court held that this type of trademark
use is considered invisible trademark
infringement and is in line with the definition of Sec 2(2)(b) read with
Sec 29(6)(d) and directed the
defendants to:
?
Investigate all of the plaintiffs' complaints alleging the use of their trademark to divert traffic..
?
Examine the entire
impact of the advertisement to see if the plaintiff's trademarks are violated..
?
And if they find that the use infringes on the plaintiff's trademarks, they will block or remove it.[11]
In Amway India Enterprises Pvt Ltd
and Ors v 1MG Technology Pvt Ltd and Ors,[12]
The Division bench of this court has
held that the use of the trademark "Amway" by third-party e-commerce platforms to promote their own sales constitutes a trademark
infringement because it is done
without the owner's permission. In fact, the court found that Section 29(8)
explicitly states that there has been
an infringement even in the absence of a sale if any advertising of a mark unfairly benefits from it or
undermines its distinctiveness.
The Court observed that any business may bid for keywords that
potentially contain any person's trademark under the Google
AdWords programme. Later
Competitors bid against
one another for one
another's trademarks in an effort to improve the exposure of their products and
services on search engines. Thus the
owner is compelled to invest in the Google AdWords Program as a result. The Court relied on “DRS Logistics” expansive interpretation of
Section 2(2)(b) read with Section
29(9) (spoken use of word marks can also be infringement), to opine that
invisible marks can constitute use, and therefore infringement.[14]
CONCLUSION
Due to lack of public awareness, there aren't many of these cases before
Indian courts right now, but there
will undoubtedly be more of them in the future. In Consim Info Pvt. Ltd. v. Google
India the court have established a precedent to follow the use keyword advertising and the legal disputes
that may result in infringement.The Division bench granted
injunction against the defendant company
using the word protected under trademark, however,
pursuant to Trade Marks Policy between the Google India
and the plaintiff, the court opined that there was no requirement of disturbing the arrangement among the parties To
protect trademark owners from online infringement, the Indian Judiciary
and Indian Legislature still have a ways to
go in developing cases and
legislation.
[1] Chiranjeev
Gogoi, Trademark Infringement Through Keyword Advertising In India: Issues And
Challenges, http://docs.manupatra.in/newsline/articles/Upload/03DB7DF0-4F52-45EA-ABFF-AC5DB67FC9D9.2-C IPR.pdf
[6] Bhumesh Verma,
Keyword Advertisement and IPR Considerations, https://www.scconline.com/blog/post/2019/06/04/keyword-advertisement-and-ipr-considerations/
[8] Google France SARL v. Louis Vuitton Malletier SA, Case C-236/08, order dated 23-3-2010 ECLI:EU:C:2010:159
[9] CS(COMM) 1/2017
[11] King Stubb and Kasiva, Invisible
Trademark Infringement: India’s
Standpoint, https://ksandk.com/ipr/invisible-trademark-infringement-india/
[13] CS(COMM)268/2022
[14] Sangita Sharma, MakeMyTrip vs
Booking.com – Looking at the Delhi High Court Injunction on Usage of Adwords,https://spicyip.com/2022/05/makemytrip-vs-booking-com-looking-at-the-delhi-high-court-injunction-on-u
sage-of-adwords.html
Article Information
KEYWORD BASED ADVERTISEMENT AND TRADEMARK PROTECTION INTRODUCTION:
Authors: NISHANTH GOWDA S
- Journal IJLRA
- ISSN 2582-6433
- Published 2023/04/26
- Volume 2
- Issue 7
About Journal
International Journal for Legal Research and Analysis
- Abbreviation IJLRA
- ISSN 2582-6433
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