In a recent appeal filed by GOOGLE LLC against MAKEMYTRIP (INDIA) PRIVATE LIMITED AND ORS [FAO(OS) (COMM) 147/2022 & CAV 155/2022 & CM Nos. 27148/2022 & 27149/2022] before the Division Bench of the Delhi High Court, the Division Bench vide its order dated 14th December 2023, set aside the order of the Single Bench and held that the use of trademarks as keywords would not amount to ‘use’ as trademarks and thus the same cannot be said to be infringement under the Trademarks Act, 1999.
The Respondent No. 1 herein namely, MakeMy Trip Private Limited had earlier filed a trademark infringement suit against Booking.com and sought a permanent injunction restraining them from using or adopting its registered word marks ‘MakeMyTrip’, ‘MMT’ and ‘MakeMyTrip Hotels Ltd.’) or any variant thereof as keywords or using the same in any manner whatsoever amounting to infringement of its trademarks. Relief was also sought against Google LLC, who manages and operates an advertisement program (Google Ads Program) in conjunction with the search engine for displaying sponsored links and advertisements (hereafter ‘Google Ads’) by way of permanent injunction from allowing Booking.com to use its trademarks as keywords in the Google Ads Program.
The Learned Single Judge had passed ad interim reliefs and restrained the defendants namely Google, Google India, Booking Netherlands, and Booking India, from using the mark ‘MakeMyTrip’ together/in conjunction, with or without spaces as a keyword on the Google Ads Program.
Google LLC filed the present appeal against the order.
The pertinent issue before the Division Bench was whether the use of keywords similar to trademarks, would constitute as infringing use under the provisions of the Trade Marks Act, 1999.
In an earlier matter before the Division Bench of the Delhi High Court, [Google LLC v DRS Logistics (P) Ltd & Ors 2023:DHC:5615-DB ] the Division Bench had held that Google's use of trademarks as keywords for its ‘Ads Programme amounts to ‘use’ of trademarks in advertising within the meaning of Section 29(6) of the Trademarks Act (TM Act) and that the benefit of safe harbor available to an intermediary would not be available to Google if such keywords infringes on the impugned trademark. Furthermore, the Bench held that the use of these trademarks as keywords would not amount to infringement if there was no confusion, dilution, or compromise of the trademark.
In the present appeal, the Division Bench relied heavily on the aforementioned matter and held that there was no trademark infringement under Section 29 of the Trade Marks Act, 1999.
The Bench opined that Section 29(4) would not apply because even though the services offered by Booking.com are similar to those of MakeMy Trip, the trademarks are different. Additionally, the Bench pointed out that a search for the MakeMy Trip name or its trademarks using Google’s search engine would show MakeMy Trip’s web address in organic search results on the search engine result pages. The Bench dismissed the contention of MakeMy Trip that Booking.com’s advertisements or links should not be visible as a sponsored link. The Bench held that MakeMy Trip cannot claim such right under the Trademark Act.
The Division Bench also held that the provisions of Section 29  would not be applicable as the trademark was not used on any packaging material or for labelling purposes etc but was used as keywords in a search engine.
The Bench also took into consideration the provision of Section 29 (8) and held that the use of the keyword MakeMy Trip, by a competitor, if absent of any confusion or deceit, does not per se amount to infringing use.
In the present matter, it does not appear that the Respondent No.1 sought any remedy by way of ‘passing off’ action in the original suit. It is probable that the outcome could have been different if they had.
While it may appear that the Court has passed differing judgements on similar facts, it is clear that the Bench has noticed intricate details and differences while passing judgments and has discussed the provisions of the Trade Marks Act, 1999 in depth and given a concise understanding on the topic of ‘key words’.