A Delhi High Court Bench of Justice Vibhu Bakhru and Justice Amit Mahajan has held that the use of trademarks as keywords by Google in its Ads Programme does amount to "use" under the intellectual property law and, in case of infringement, it cannot claim the benefit of "safe harbour" from liability under the law.

Senior Advocate Sandeep Sethi, among others, appeared for the appellant, while Senior Advocate Arun Kathpalia and Senior Counsel Chander M Lall, among others, appeared for the respondents.

In this case, the Court was hearing an appeal by Google against a decision made by a Single Judge on October 30, 2021. In that ruling, the judge held that Google cannot avoid the responsibility of making sure that a keyword doesn't violate a trademark. The judge also determined that Google cannot claim the protection of being an intermediary under Section 79 of the Information Technology Act, 2000.

The original lawsuit was filed by DRS Logistics to stop Google India, Google LLC, and Just Dial from using their registered trademark "AGARWAL PACKERS & MOVES or DRS LOGISTICS" as a keyword, meta tag, or trademark.

The Single Judge had instructed Google to look into any complaints by DRS Logistics about their trademark being used as keywords, causing online traffic to be directed away from their website to the advertiser's site.

The Court observed that, prima facie, Google is an "active participant" in use of the trademarks of proprietors and it is difficult to accept that the search engine would be exempted under Section 79 of the Information Technology (IT) Act from the liability of infringement of trademarks by its use of the trademarks as keywords in the Ads Programme.

The Court said that, "Prima facie, we are unable to accept the view that use of trademarks as keywords in the Ads Programme is use only by the advertisers and not Google... It is difficult to accept that whilst Google, in a manner of speaking, sells keywords for use in its proprietary software; it does not use it".

In a similar vein, it was said that, "Google is not a passive intermediary but runs an advertisement business, of which it has pervasive control. Merely because the said business is run online and is dovetailed with its service as an intermediary, does not entitle Google to the benefit of Section 79(1) of the IT (Information Technology) Act, in so far as the Ads Programme is concerned".

The Court noted that the Ads Programme is Google's commercial venture and the use of a trademark as keywords for display of advertisements in respect of goods or services clearly amounts to use of the trademark in advertising within the meaning of Section 29(6) of the Trademarks Act.

In light of the same, the appeal was dismissed.

Cause Title: Google LLC vs DRS Logistics (P) Ltd. & Ors.

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