Many of us search for our favourite brands on Google, but still end up seeing search results dominated by advertisements from rival brands.This does not just happen on a generic search but even when you put the specific trade mark or trade name in your search bar, the competitor brands makes their place in the top search results. This is because those competitors have bid higher than the actual proprietor of those trade marks to pop up as ads even on top of the organic search results that show up. On search engines, there are organic search results which appear based on the algorithm of the search engine and others are paid search results displayed as advertisements. Google has its Google Ads Program which offers businesses to buy relevant keywords most likely to be searched by the users. While this system generally operates smoothly, conflicts arise when these keywords are the trademarks of competing brands. Consequently, trademark owners find themselves compelled to engage in bidding wars to reclaim their own trademarks as keywords, often having to outspend their rivals to secure top placement. This is how the bidding for keywords starts amongst the two competitors which does not end up in a one-time keyword purchase, but the trade mark owner ends up spending in the Google Ads Program on a daily basis, for visibility and to ensure their products and services under their trademarks are prominently featured on top of their competitors.

This is what happened in the present case where MakeMyTrip (India) Private Limited (“MIPL”) was spending a substantial amount of money to bid for its own registered trademark as a keyword on the Google Ads Program against its competitor Booking.com who was using its registered trademark ‘Makemytrip’ to appear as advertisements when search results are displayed. In such a scenario, the issue of whether the use of a registered trade mark as a keyword through Google Ads Program can amount to misrepresentation. It also becomes important to consider if such an act is justified especially when it amounts to taking advantage of the distinctive character and reputation of the trade mark. The issues were addressed by the Learned Single Judge in Makemytrip India Private Limited vs Booking.Com B. V & Ors., CS (COMM) 268/2022 & I.As. 6443-47/2022, through an interim order opined that the use of the mark ‘MakeMyTrip’ as a keyword through Google Ads Program by one of its major competitors, Booking.com is infringing use under Sections 29 of the Trade Marks Act, 1999.

Further, though, such use of the trade mark by any third-party does not fit directly within the ambit of passing off as there is no visible or actual use of the mark. However, with the increase in the importance of Internet trading and promotion, such use of a trademark by third parties is an increasing concern for trade mark proprietors. To this, the Learned single judge observed that though using a third-party trade mark as a keyword cannot be excluded from the aspect of misrepresentation, however, if there is no likelihood of being misled, then the same cannot be held as passing off, thus, this shall be decided on the case-to-case basis.

The Court in the interim order held that use of the Plaintiff’s registered mark ‘MakeMyTrip’ on the Google Ads Program as a keyword would amount to trademark infringement and the same would be detrimental to the Plaintiff’s monetary interest as also to the brand equity of the Plaintiff’s mark. However, the said order by the Learned Single Judge was set aside by the Delhi High Court Bench in an appeal by Google LLC. The Court relied on its earlier judgments for similar issues and opined that the view in the interim order that the use of trademark ‘MakeMyTrip’ as a keyword by Booking.com would not amount to infringement under Section 29(4)(c) of the Trade Marks Act as the services offered by Booking.com are similar to the services covered by MIPL’s trade marks.

The bench clarified that though the use of trademarks as keywords “amounts to taking advantage of the distinctive character and reputation of the plaintiff’s trademark” under Section 29(4)(c) of the Act, however, the same cannot be applied without considering the conditions specified under Clause (b) of Sub-section (4) of Section 29 of the Act. A plain reading of Sub-section (4) to Section 29 of the Trade Marks Act indicates that the same can be applied in the context of the use of a trade mark which is identical or similar to the registered trademark by a person who is not a registered proprietor in relation to goods or services which are not similar to those for which the trademark is registered. Unless this is satisfied, the sub clause (c) of Section 29 cannot be applied.

Further, in the view of the bench in the present case, the use of MIPL’s trademark MakeMyTrip as a keyword per se does not fall foul of Section 29(8) of the Act to constitute infringement in the absence of any confusion or deceit. The bench opined that since Booking.com is a well-known and popular platform offering travel services, thus, prima facie, an internet user is not likely to be misled into believing that the services offered by Booking.com are those of MIPL. The bench discarded the applicability of the provision of Sub-section (7) of Section 29 of the Act stating that in the present case the use of the trade mark as keywords by the competitor is not the same as trade mark applied to any material. Neither Google nor the advertiser has applied the trade mark on any material intended to be used for the labelling or packaging of goods or as a business paper and there is no application to any material for advertising goods or services. Thus, the present case does not fit within the aspect of infringement.

Though MIPL appealed against the Delhi High Court’s bench order, however, the same was dismissed by the Apex Court upholding the view that there was no likelihood of any confusion as claimed by MakeMyTrip because its users would visit its website and it was unlikely that they would end up on Booking.com.

Important is to understand that the recent judgment should not be seen as a ticket for businesses to freely use their competitors’ trademarks as keywords. The court’s decision is context-specific and is on the understanding that internet users can distinguish between sponsored and organic search results. Nonetheless, this turns to be a boon for online search engines like Google. The demand for trademarked keywords rises as users recognise and search for a specific mark because of the investment made by the trademark owner in promotion, advertising, and other marketing efforts. When a user, searches for a well-known mark or a mark, which he or she has heard about in the past, on a search engine, it is largely due to the goodwill and reputation associated with those marks, rather than any influence from the search engine or competitors. Despite this, since such usage falls outside the scope of infringement, trade mark owners find themselves compelled to invest heavily in purchasing keywords associated with their own trademarks. This expenditure is driven by the necessity to maintain visibility and control over their brand identity in the digital landscape.

Authors: Naval Kastia and Rishita Joshi

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