The case revolves around whether the use of a trademark as a keyword in Google Ads constitutes "use" under the Trade Marks Act, 1999 and if Google can claim protection as an intermediary under Section 79 of the Information Technology Act, 2000. DRS Logistics, the plaintiff, alleged that Google allowed third parties to use its trademark "Agarwal Packers and Movers" as a keyword, leading to traffic diversion to competitors' websites. Google contended that using trademarks as keywords did not amount to infringement under the Trade Marks Act and that it was protected under intermediary safe harbor provisions of the IT Act.

• Factual Background:
  • Google LLC, a US-based company, operates the Google Search Engine and Google Ads Programme.
  • Google India Private Limited, its Indian subsidiary, acts as a reseller of the Ads Programme in India.
  • DRS Logistics is engaged in packaging, moving, and logistics services and owns the trademark "Agarwal Packers and Movers".
  • DRS alleged that competitors were using its registered trademark as keywords in Google Ads, misleading customers and diverting traffic.
  • Google's auction model allows advertisers to bid for keywords, ranking ads based on Quality Score and Maximum Cost Per Click (CPC).
  • DRS claimed this model encouraged trademark misuse for monetary gain.
• Procedural Background:
  • DRS filed a suit under Order 39, Rules 1 and 2 of the CPC, seeking an injunction against Google.
  • The Single Judge ruled in favor of DRS, stating that using trademarks as keywords constitutes "use" under the Trade Marks Act, 1999.
  • Google appealed this decision before the Division Bench of the Delhi High Court.
• Issues Involved:
  • Whether the use of a registered trademark as a keyword in Google Ads constitutes "use" under the Trade Marks Act, 1999.
• Submissions of the Parties:
  • DRS:
    • Argued that the use of its trademark in Google Ads caused consumer confusion and amounted to passing off.
    • Claimed Google promoted the use of trademarks as keywords, benefiting competitors unfairly.
    • Pointed to Google's Keyword Planner tool, which encouraged the selection of well-known trademarks.
  • Google:
    • Argued that using a trademark as a keyword was not visible to consumers and did not constitute "use" under the Trade Marks Act.
    • Relied on international decisions such as:
      • Veda Advantage Ltd. v. Malouf Group Enterprises Pty Ltd. (2016 FCA 255)
      • Intercity Group (NZ) Ltd. v. Nakedbus NZ Ltd. (2014 NZHC 124)
    • Claimed protection under Section 79 of the IT Act as a neutral intermediary.
• Discussion on Judgments and Citations:
  • The court examined multiple judgments on keyword advertising.
  • Referred to the European Court of Justice's ruling in Google France SARL v. Louis Vuitton Malletier SA (C-236/08 to C-238/08), which held that using trademarks as keywords could amount to infringement if it caused confusion.
  • Cited Rescuecom Corp. v. Google Inc. (562 F.3d 123 (2d Cir. 2009)), where a US court ruled that selling trademarks as keywords constituted use under the Lanham Act.
  • Discussed contrasting international judgments, such as:
    • Veda Advantage Ltd. v. Malouf Group Enterprises Pty Ltd. (2016 FCA 255) (Australia)
    • NZ Fintech Ltd. v. Credit Corp Financial Solutions Pty Ltd. (2019 NZHC 654) (New Zealand)
  • The court distinguished these foreign rulings, emphasizing that Indian law does not require "visual representation" for trademark use.
  • Relied on Indian precedents, such as:
    • Hamdard National Foundation v. Hussain Dalal (2013 SCC OnLine Del 2289) – recognizing "invisible use" of trademarks as infringement.
    • Amway India Enterprises Pvt. Ltd. v. 1MG Technologies Pvt. Ltd. (2019 SCC OnLine Del 9061) – holding that meta-tags and keywords can infringe a trademark if they divert traffic.
• Reasoning and Analysis of the Judge:
  • The court held that using trademarks as keywords in Google Ads qualifies as "use" under the Trade Marks Act, 1999.
  • Rejected Google's argument that keywords were invisible to consumers.
  • Stated that the economic function of a trademark is to attract customers, and any unauthorized use that diverts traffic undermines its purpose.
  • Regarding Section 79 of the IT Act:
    • Ruled that Google does not qualify as a passive intermediary.
    • Held that Google actively participates in ad placement and profits from keyword sales.
    • Noted that Google's policies varied across jurisdictions, imposing restrictions in Europe but not in India.
• Final Decision:
  • The court upheld the Single Judge's ruling and directed Google to:
    • Investigate complaints regarding unauthorized use of trademarks as keywords.
    • Review whether Google Ads result in trademark infringement or passing off.
    • Remove ads that violate trademark rights.
  • Denied Google safe harbor protection under Section 79 of the IT Act.
• Law Settled in This Case:
  • Using trademarks as keywords in Google Ads constitutes "use" under the Trade Marks Act, 1999.
  • Such use can amount to trademark infringement if it misleads consumers or diverts traffic unfairly.
  • Google is not entitled to intermediary protection under Section 79 of the IT Act if it actively participates in ad placement.
  • Invisible use of a trademark (such as in keywords) can amount to infringement if it affects the economic function of the mark.

Case Title: Google LLC Vs. DRS Logistics (P) Ltd. 
Date of Order: August 10, 2023
Case No.: FAO(OS)(COMM) 2/2022 & FAO(OS) (COMM) 22/2022
Neutral Citation: Not specified
Court: Delhi High Court
Judges: Hon'ble Justice Vibhu Bakhru and Justice Amit Mahajan

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539