THE BATTLE OVER KEYWORDS: TRADEMARK INFRINGEMENT IN ONLINE ADVERTISING

Kashish Kochar,

Vivekananda Institute of Professional Studies

INTRODUCTION

Enterprises have moved into cyberspace in sync with technology's advancements and people's growing reliance on the web. It is now one of the strongest advertising platforms out there nowadays since internet advertising has become progressively strong. It is necessary for making you show up in applicable search results and the ideals of individuality, distinctiveness, and brand awareness are elevated as a result. Nevertheless, there are various legal hurdles to keyword advertising, including trademark infringement. While it takes an immense amount of attention, this issue is vastly unsettled because there is no adequate and precise legal or judicial knowledge.

WHAT IS KEYWORD ADVERTISING?[i]

"Keyword Advertising" is a type of online advertising where ads show up based on certain "keywords" typed by the user while searching. This method entails finding out the most relevant keywords pertaining to your business, or your content to come up in such searches.  For a beverage company, for example, it is guaranteed that keywords like "F&B," "Bartending," "Drink" and the likes push the searcher to the site of the company.

On the Results Page, the ads are then displayed with those keywords. Engaging the prospective clients who have expressed an interest in a certain good or service is the primary goal of contextual keyword advertising.

KEYWORD ADVERTISING AND TRADEMARK INFRINGEMENT[ii]

Keyword should ideally be words that describe the product. However, it has been observed that companies have bid on a trademark that incorporates a keyword that is common among their well-known competitors. This is undertaken to game search engine results by utilizing a competitor's trademark to enhance their web presence and reap unfair benefits in business from their competitors by bidding on it as a keyword that is relevant to their well-known competitors.

For instance, in the first example, a drink company purchases the keyword "Cola," and whenever someone types in "Cola," the ad for that drink company might show up. Since the popular keyword Cola would get more impressions than the keywords for its new brand that it recently rolled out, it seems like the advertisers made a good decision. This way, the very purpose of a trademark, to remove doubt or uncertainty from likely buyers, is defeated when this leads to consumers being confused about the source, or owner, of the product or service. Consequently, the trademark owner is forced to bid on and purchase it on these search engines.

Trademark infringement in India is regulated by the Trade Mark Act 1999. Since the Act was drafted in the initial stages of the practice of keyword-linked advertising, the Indian Trade Mark law does not cover the issue of trademark infringement by employing a trademark as a keyword. Section 29 of the Indian Trademarks Act of 1999, however, is applicable in this regard. It states that when a person who is not a registered proprietor applies a mark that is confusingly similar or identical to one that is registered for goods or services, such a person is infringing on the provisions of the trademark.

KEY LEGAL CASES

Trademark infringement caused by use of certain keywords has been a topic of legal debate for some time. Different Courts have presented diverse opinions on this issue. A few notable cases are hereby discussed.

1.Consim Info vs. Google India[iii]: This case was the first time, where Indian courts had considered trademark infringement via keyword advertising. The appellant, owner of registered trademarks like Bharatmatrimony, Tamilmatrimony, and Telugumatrimony, wanted a permanent injunction to stop the defendants from using these trademarks.

The court sided with the respondent, concurring with their assertion that the utilization of the appellant's trademark in the advertising program was not "use in the course of trade". The court determined that the trademarks were more descriptive of the services provided and did not behave like conventional trademarks. The case was dismissed as a result of the absence of likelihood of confusion, with the court concentrating on this aspect over examining contributory infringement by intermediaries engaged in keyword advertising.

2.DRS Logistics vs Google India[iv]: Delhi High Court resolved the issue of competing companies using the trademark name "Agarwal Movers and Packers" as a term on search engines, which directed ads of competing companies when one searched for the plaintiff's name.

The Court held that employing a trademark as a keyword for the purposes of ads is "use in advertising" as per Section 29(6) of the Trademark Act. The Court, however, made clear that although such acts amount to use in advertisements, they don't constitute applying the trademark as a "trade mark." It therefore doesn't violate the trademark. In addition, the Court held that the mere use of a trademark as a keyword does not result in infringement unless it creates confusion, unfair advantage, dilution, or damage to the trademark. Where these are absent, keyword use is not infringement.

3.MakeMyTrip vs. Google LLC[v]: The Delhi High Court looked into whether employing a registered trademark as a term in Google Ads is illegal. In this scenario, MakeMyTrip alleged that Google was utilizing its trademarks "MakeMyTrip" and "MMT" as keywords to display Booking.com advertisements.

The Court held that using trademarks as keywords does not necessarily amount to infringement in situations where there is no confusion or fraud. It explained that using keywords does not imply that the trademark should be used on goods marked, packed, or advertised. Thus, neither Google nor the advertiser infringed the trademark by using it as a keyword.

CONCLUSION

To summarise, Keyword advertising has certainly emerged as a key business tool for increasing online visibility, linking businesses with potential clients in a productive and focused way. It raises serious legal concerns, especially trademark infringement. The lack of clear-cut legal rules governing the use of trademarks as keywords complicates it for companies and the legal framework. Although there are some rulings that are favorable to advertisers, others emphasize the risk of confusion and harm to trademark owners. As online advertising continues to change, there must be clearer legal direction, and companies must remain vigilant about guarding their intellectual property. Until then, the law will be intricate and debated.

REFERENCES

[i] What is Keyword Advertising, CRITERION GLOBAL (last accessed Feb 7, 2025) https://criterionglobal.com/faq/keyword-advertising/

[ii] Chitwandeep Kaur & Mansi Mishra, Keyword Advertising- Trademark Infringement and its Liability, UPSCALE LEGAL, https://upscalelegal.com/keyword-advertising-trademark-infringement-and-its-liability/

[iii] Consim Info Pvt. Ltd. v. Google India Pvt. Ltd. and Ors, 2010 (6) CTC 813

[iv] DRS Logistics Pvt. Ltd & Others vs Google India Pvt Ltd & Others, CS (COMM) 1/2017

[v] MakeMyTrip vs. Google LLC, 2023 SCC OnLine Del 7965