The Appellants, Google India (P) Ltd., is a non-exclusive reseller of the Google Ads Programme in India, whereas the Respondents were DRS Logistics (P) Ltd., and Agarwal Packers and Movers (P) Ltd., who are leading packaging, moving and logistics service providers in the country.

This case, Google LLC v. DRS Logistics (P) Ltd., (FAO(OS)(COMM) 2 of 2022), involved a dispute as to whether displaying/ encouraging the use of a registered trademark of the Respondent to display third party’s website links, which were infringing the Respondent’s trademark, amounts to infringement. The Court’s ruling also sheds light on whether Google would be getting protected by Intermediary liability under the Information Technology Act, 2000.

The following issues were analyzed by the Delhi High Court.

  1. Whether displaying a trademark as tags or keywords in the Ad Programme of Google amount to the ‘Use’ of the mark?

Section 29(6) of the Act provides that it constitutes use when an unauthorized person,

  • affixes it to goods or the packaging of their product
  • offers goods for sale, puts them on the market, stocks them or provides any service under the name of another’s trademark
  • imports or exports goods under the mark
  • uses another’s trade mark on business papers or in advertising

The Court observed that in the instant case, Google’s Ad Programme was a commercial way of monetizing the use of their search engine, as they displayed those links at the top of the search engine specifically as ‘sponsored’. As the keywords were being used to display the goods or services offered by a third party, it amounted to use as per the above-mentioned provision and thus, constitutes infringement.

In simple terms, keywords (which are the registered trademark of another person) were being used as a way to attract traffic and customers, which is nothing but advertising and therefore, is infringement.

However, it is pertinent to note that the Court also observed that the use of a trademark as a keyword, without causing any confusion as to its origin or causing any dilution to the reputation of the trademark, would NOT amount to infringement. If there is confusion even for a very short amount of time then it’s infringement, else it does not fall under the purview of Section 29(6).

  1. Whether Google can claim immunity as an Intermediary?

The Court ruled that Google runs the Ad Programme and it started allowing the usage of trademarks as keywords after 2004 by amending its policy, clearly with an intent to increase its revenue. When they themselves are involved in the process as an active participant, an entity cannot claim immunity under Section 79 of the Information Technology Act.

Please note that in the instant case, the Respondents were not able to establish that there was any confusion among the public due to the use of its trademark as keywords by other third parties, and therefore did not get a ruling in their favor. If the mark is used as a keyword as a word common to trade, or as an honest and concurrent user, it does not constitute infringement. Thus, use and confusion are the two main ingredients to establish to enforce your rights for infringement.

Written by Keerthana K