The Delhi High Court held that the use of trademarks as keywords in Google Ads program absent any confusion or unfair advantage, is not infringement.

The Court held thus in a batch of appeals filed by Google LLC against MakeMyTrip (India) Private Limited (MIPL) challenging an ad interim order passed by the Single Judge.

A Division Bench of Justice Vibhu Bakhru and Justice Amit Mahajan observed, “We are also unable to concur with the learned Single Judge that provision of Sub-section (7) of Section 29 of the Trade Marks Act are applicable. The said sub-section is applicable when a person applies a registered trade mark to a material intended to be used for labelling or packaging of goods, as a business paper, or for advertising goods or services. In the present case, the use of trade marks as keywords cannot, by any stretch, be construed as applying the registered trade mark to any material intended to be used for labelling or packing goods, as a business paper, or for advertising goods or services. It was contended by Mr. Sibal that use of keywords would, in the virtual world, be akin to applying the trade mark in the software used to power the Google Ad Program. The said contention is unmerited and insubstantial. The trade mark is not applied to any material when it is used as a keyword. Neither Google nor the advertiser applies the trade mark on any material.”

The Bench added that neither of them do so to any material intended to be used for labelling or packaging of goods or as a business paper and that there is no application to any material for advertising goods or services.

Senior Advocate Sandeep Sethi appeared for the appellant while Senior Advocates Amit Sibal and Arun Kathpalia, and Advocate Ankur Sangal appeared for the respondents.

In this case, MIPL had filed a suit for permanent injunction restraining infringement of its trademarks, passing off, dilution of goodwill, unfair competition, and rendition of accounts of profits/damages, etc. It sought a decree of permanent injunction against ‘’ from in any manner bidding for, adopting or using its registered word marks or any deceptive variant as keywords through Google Ads Program or using the same in any manner amounting to an infringement.

MIPL also sought a decree of mandatory injunction against Google India and Google requiring them to ensure that does not promote their business by using MIPL’s word trademarks as keywords in the Google Ads Program. The Single Judge restrained the defendants i.e., Google, Google India, Booking Netherlands, and Booking India from using the mark ‘MakeMyTrip’ together or in conjunction, with or without spaces as a keyword on the Google Ads Program. Hence, Google LLC filed appeals before the High Court.

The High Court in the above context of the case noted, “We are also unable to accept the view that ex facie the use of MIPL’s trademark MakeMyTrip as a keyword falls foul of Section 29(8) of the Trade Marks Act as it amounts to unfair advantage and is contrary to the honest practices in industrial or commercial matters and thus, constitutes infringement under Section 29(8) of the Trade Marks Act. Use of trademarks as key words by competitors, absent any confusion or deceit, does not per se amount to infringing use. These issues are squarely covered by the decision of this Court in Google LLC v. DRS Logistics (P.) Ltd. and Ors. (supra).”

Furthermore, the Court did not agree with the contention that Sub-section (4) of Section 29 of the Trade Marks Act, 1999 would be applicable in cases where the goods and services in respect of which allegedly infringing marks are used, are similar. The Court said that Sub-section (4) to Section 29 of the Trade Marks Act is applicable only when a person who is not a registered proprietor of a registered trademark, or otherwise entitled to use the same, uses in the course of the trade a mark, which is identical or similar to the registered trademark in relation to goods or services, which are not similar to those for which the trademark is registered.

“Clearly, it is open for the defendants to persuade the Court on the basis of material on record that there is no likelihood of any confusion. It is erroneous to suggest that in cases where a trademark, which is deceptively similar, is used in connection with similar goods and services, an injunction must necessarily follow”, observed the Court.

The Court also clarified that the meaning of the expression ‘shall presume’ as set out in the said Section is in respect of the meaning of the said expression under the Indian Evidence Act, 1872 and it is not necessary that the same meaning be ascribed to the expression as used in other enactments.

Accordingly, the High Court disposed of the appeals and set aside the impugned order.

Cause Title- Google LLC v. MakeMyTrip (India) Private Limited and Ors. (Neutral Citation: 2023:DHC:8960-DB)

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