In today’s day and age, Google is omnipresent and has found its place into all spheres of our lives. As a result of the people relying on the internet and most of our life being online, Google has become one of the biggest advertisers in the world. One of the specialized products that Google offers to businesses to advertise their business is Google Ads (previously known as the Google Ad Words program).
Google Ads is a system of advertising that Google has developed to aid traders and businessmen to expand their clientele by targeted promulgation of ads to potential customers. The said feature allows advertisers to bid on ‘keywords’ to display brief advertisements, service offerings, product listings etc to web users when they conduct searches on Google’s search engine. The advertisements thereafter appear on top of the organic searches made by the user, with the word ‘Ad’ prefixed before such search results, indicating that they are advertisements. The said feature allows advertisers to reach a wide range of customers for their product or service.
The Google Ads program functions in the following way. An advertiser is permitted to bid on certain keywords, which are words that are entered by the users on the browser. Keywords pertaining to the brand, products, services, and industry can be chosen for the advertiser’s AdWords account. Once the relevant keyword is entered by the user, the advertiser with the highest bid on the said keyword has his advertisement as the first ad position. AdWords works on a pay-per-click basis, implying that Google generates revenue when a user clicks on the ad and visits the website of the advertiser.
Google’s Trademark Policy
As a part of its Ads policy1 , Google claims to abide by local trademark laws and requires that Google Ads don’t infringe third party trademarks. Google allows trademark owners to submit a complaint to Google in case they feel their trademark is being infringed, and the said complaint is reviewed by Google and if found to be legitimate, Google may enforce restrictions on the use of the trademark. However, Google only restricts the use of trademarks in the actual text of the Ad or in the URLs being displayed and as a matter of policy, does not investigate or restrict the use of trademarks as keywords.
However, as a way of an exception, in the European Union and European Free Trade Association Countries, in case of a complaint of trademark infringement, Google conducts a limited investigation as to whether a combination of keyword and ad featuring a trademark is confusing as to the origin of the advertised goods and services and if it finds that the combination of keyword and ad is confusing, the same is restricted by Google.
Litigation in India
In India, one of the first cases to raise the issue with respect to bidding on someone else’s trademark in the Google Ads program was the case of Consim Info Private Limited v Google India Private Limited & Ors.2 The said case was filed by an online matrimonial service platform operating under registered trademarks such as ‘bharat matrimony’, ‘tamil matrimony’, ‘telugu matrimony’ etc. The Plaintiff was aggrieved by its competitors such as www.shaadi.com, www.jeevansathi.com etc., bidding on its trademarks as keywords under the Google Ads programme and therefore filed a suit against Google as well as its competitors with respect to the same.
After analysing the law as it stood, the Hon’ble Court noted that as the keywords on which the competitors of the Plaintiff therein were bidding were generic words such as “Bharat”, “Tamil”, “Telugu” etc., the competitors of the Plaintiff could not be restrained from bidding on the same as keywords. However, the Hon’ble Madras High Court also noted that if the registered trademarks of the Plaintiff were not descriptive in nature, the bidding on the same could at times amount to “use” of the trademark amounting to infringement, as it would be considered use in the course of trade. The Hon’ble Court, with respect to Google, also noted that its policies provided sufficient safeguards to the rights of trademark owners. The said judgement was challenged before the Division Bench of the Hon’ble High Court of Madras3 , which concurred with the judgement passed by the Learned Single Judge, however added that even though the bidding on the generic words such as “matrimony”, “Bharat”, “Tamil”, “Telugu” did not constitute trademark infringement, when used conjunctively, the same may show mala fides of the competitors of the Plaintiff and would have to be examined at trial.
The aforesaid judgements held the field with respect to the issue of bidding on someone else’s registered trademark in the Google Ads programmed for almost a decade. Even though multiple suits were filed by parties alleging trademark infringement due to bidding on the party’s registered trademarks, most of the said suits were settled between the parties by giving cross undertakings regarding not bidding on each other’s trademarks.4 In view of the same, the jurisprudence in India in relation to the legality of bidding on registered trademarks in the Google Ads programme remained for the past decade remained limited to the findings given in the Consim judgements.
Recent Case Law
Recently, on 30 October 2021, a Learned Single Judge of the Hon’ble Delhi High Court in the case of DRS Logistics Private Limited & Ors. v Google India Private Limited & Ors. 5 passed a detailed judgement analysing the relevant legal provisions as well as Indian and international jurisprudence in relation to the legality of bidding on registered trademarks in the Google Ads programme. The suit was filed by the company DRS Logistics which was operating under the trademark “Agarwal Packers & Movers” and providing transport and logistics services against Google, claiming that by allowing third parties to bid of the said trademark as a keyword, Google was infringing its trademark rights.
After hearing detailed arguments by the parties and perusing similar cases filed in other jurisdictions, the Hon’ble Court held that bidding on registered trademarks of a third party would amount to “use”, under the Trade Marks Act, 1999. In order to come to the said conclusion, the Hon’ble Court noted that as per previous judgements, infringement was not only visual use of a trademark, but also included spoken use and use in source code or “meta-tagging”, which led to the conclusion that even invisible use of a trademark would amount to “use”. The Hon’ble Court undertook an analysis of the similarities between meta-tags and keywords and finally held that even though the same may be conceptually different, both are used to show relevancy and appear on the top of the search engine result page, whether in organic or sponsored result. The Hon’ble Court also held that had the AdWords program of Google not existed, the only option available to a prospective advertiser to achieve the same result would be to change their meta tags, which highlighted that the same result was sought to be achieved through different means.
However, the Hon’ble Court held that in order to determine whether a particular advertisement would cause confusion, the overall effect of the advertisement has to be seen and all three, (Ad-title, Ad-text and URL) have to be taken into consideration. The Hon’ble Court also noted that prior to 2009, Google did not allow bidding on keywords which were registered trademarks and in EU and EFTA, Google continues to look at the overall effect of the advertisement including the keyword in order to determine infringement, which indicated that Google itself believes that a trademark cannot be used as a keyword by anyone other than the trademark owner. While dealing with the judgements in foreign jurisdictions, the Hon’ble Court held that the customers in India would not be as informed and attentive as the customers in the other countries. In view of the aforesaid findings, the Hon’ble Court disposed off the injunction application in the suit by giving the following directions: -
“(I) The Defendant Nos. 1 and 3 shall investigate any complaint to be made by the Plaintiff to them alleging use of its trademark and its variations as keywords resulting in the diversion of traffic from the website of the Plaintiff to that of the advertiser.
(II) The Defendant Nos. 1 and 3 shall also investigate and review the overall effect of an Ad to ascertain that the same is not infringing / passing off the trademark of the Plaintiff.
(III) If it is found that the usage of trademark(s) and its variations as keywords and / or overall effect of the Ad has the effect of infringing / passing off the trademark of the Plaintiff then the defendant Nos. 1 and 3 shall restrain the advertiser from using the same and remove / block such advertisements.”
Keeping in view the place internet has in our lives presently, online advertising is an extremely important tool in the hand of businesses to increase their reach to consumers. It is always important to encourage competition in the market, so that the customers are made aware of all the options available to them. However, a balance has to be created between advertisers wanting the best possible mechanism to reach their consumers and trademark owners seeking to protect their rights. The interests of the consumer should be held to be paramount.