CITATION: 2013 (54) PTC 578 (Mad)
FACTS
In this case, the appellant was a private limited company providing online matrimonial services. In the course of its business, it had adopted several trademarks including, inter alia, Bharatmatrimony, Tamilmatrimony, Telugumatrimony, Assamesematrimony, etc. and registered several domain names with these word marks. The respondents (Google India and its parent company) (“Google”) were in the business of offering an advertisement programme, called, AdWords which generates ‘Sponsored Links’ on the right hand side of any organic search results produced by Google, closely corresponding to the term searched for. Google allow the Key Word to appear as a part of the advertisement as well. Therefore, the more the term is searched for, the more chances are that it is a heavily demanded Key Word. The competitors would thus bid for the Key Words of the other players in their business to catch the attention of the user and thereby divert the business meant for such other players.
The appellant filed a suit for permanent injunction restraining Google from infringing their trademarks by using them in the AdWord Program and Key Word suggestion Tool and also to restrict Google from passing off their services using the appellant’s trademarks and their closely resembling variants.
ISSUE
Whether such use of appellant’s trademark by Google’s Ad program amounted to trademark infringement.
CONTENTIONS
Appellant: The appellant contended that their trademark was misused by the respondents jointly and severally to enrich themselves unjustly without the consent/authorization is a clear case of infringement. They submitted that the respondents use the appellant’s trademark in the ad programme with the intention of passing off their services as those of the appellant’s.
Respondents: The respondents contended that their use of the appellant’s trademarks in the impugned Ad program would not amount to use in the course of trade and such use is an honest business practice; that the Key Word Suggestion Tools automatically generates its list by considering the number of hits counted by the term/trademark; that there is no human intervention in the process of selection of the term/trademark as Key Word by the search engine. The respondents contended that they never use the appellant’s trademark in the sense of a trademark over the goods or services as contemplated under the Act. Therefore, such use would not amount to infringement or passing off.
HELD
The Hon’ble Court observed that Google, though having a policy against infringement of trademark and a complaint redressal system for the same, is adopting different policies in different regions. The rationale behind this difference in has not been explained by Google. Hence, Google has been adopting double standards, since the benefit given to the respondents 2 to 4 were not given to the appellant. Had Google adopted uniform standard for appellant on par with the respondents 2 to 4, one can say that the Google has not adopted double standards. But, in the case on hand, there is a clear discrimination between the appellant and the respondents 2 to 4.
Hence, the Court observed that the appellant is entitled for injunction. Though since the respondents have given an undertaking that they would prevent the use of the appellant’s trademark in the impugned ad program which is valid for three years, the court expressed the opinion that this arrangement need not be disturbed as of now.
Author: Akshay Goel, HNLU, Raipur
Image from here
Indian Case Law 