Author: Sunidhi Bansal
In the Internet era, it is usual to browse through search engines to look for particular goods and services. The term ‘keyword advertising’ has not been defined under the Trade Marks Act, 1999 (“Act”) or any other Indian statute. However, Google help center defines the term Keyword as, “Words or phrases describing your product or service that you choose to help determine when and where your ad can appear.” The question that arises here is that does use of third-party trademark as keywords amount to trademark infringement?
Trademark Infringement Under the Statute
Section 29 (1) of the Act, provides that a registered trademark is infringed when a third-party uses identical or deceptively similar mark in the course of trade. Further, Section 29 (6) of the Act clarifies that a person uses registered mark if –
“…(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under. the registered trade mark, or offers or supplies services under the registered trade mark;
…(d) uses the registered trade mark on business papers or in advertising.”
It is unclear if the use of a keyword, amounts to the use of the mark in course of trade and as advertisement under Section 29 of the Act.
The issue of keyword advertising came up before the Madras High Court in the case of Consim Info Pvt. Ltd. v. Google India Pvt. Ltd. and Ors. [2010 (6) CTC 813], wherein the plaintiff claimed to be registered proprietor of twenty-two trademarks such as Bhartmatrimony, Tamilmatrimony, Telegumatrimony, etc. The plaintiff was aggrieved that the respondent no. 1 (Google India Pvt. Ltd.) was using its trademarks as keywords for advertising the websites of respondent no. 2 and 4 (proprietors of the matrimonial service web portals). The plaintiff contended that the use of its registered marks in the advertisement title or text of such sponsored links, amounts to trademark infringement.
A Single Judge Bench (V. Ramasubramanian, J.), of the High Court of Madras, held that “…use in the adtitle and adtext of their advertisements in the ‘sponsored link’ column, the words which form part of the registered trade marks of the plaintiff, then it would certainly be an use in advertising and an use in the course of trade”.
On the issue of likelihood of confusion, it held that “…the use by the defendants…of the very same combination of words, namely ‘Tamil Matrimony’…even if they leave a space in-between the two words, certainly provides a likelihood of confusion. Therefore, under normal circumstances, the plaintiff will be entitled to an injunction, for the simple reason that the others are not entitled to use the very same combination of words with just a space in-between and claim that both these words are just generic or descriptive…. the same cannot take them to the desired destination. defendants 2 to 4 would be left with any other choice, to advertise their services, if the use of the combination of the above words is prohibited.”
The Single Judge Bench did not hold the respondents liable for trademark infringement due to the descriptive nature of the words but made an important clarification that if the registered trademarks of the plaintiff were not descriptive of the nature of its services, then it would have ruled differently. Thereafter, a Division Judge Bench [P. Jyothimani and M. Duraiswamy, JJ.] of the Madras High court in the appeal filed by the plaintiff concurred with the Single Judge Bench ruling.
Further, the similar issue came up in the High Court of Delhi in the case of Policybazaar Insurance Web Aggregator & Anr. v. Acko General Insurance Ltd. & Ors. [CS(Comm) 260/2019, order dated May 16, 2019], wherein a Single Judge Bench [Sanjeev Narula, J.] ruled that use of the plaintiff’s marks POLICY BAZAAR as keywords by the defendant amount to infringement under the Section 29 of the Act and accordingly, granted an ex-parte ad-interim injunction restraining the defendant from using the plaintiff’s marks as keywords. However, the ad-interim injunction was lifted by High Court of Delhi (by the order dated May 28, 2019) on the separate grounds.
It is clear from the above discussed cases that use of a trademark as keywords will qualify as use of the mark in the course of trade and as advertising under Section 29 of the Act. Therefore, use of trademark as keywords by search engines or third-parties will amount to trademark infringement under the Act.
 https://support.google.com/google-ads/answer/1704371?hl=en, last accessed on January 14, 2021.
 Consim Info Pvt. Ltd. v. Google India Pvt. Ltd. and Ors., [2013 (54) PTC 578 (Mad)].
 Consim Info Pvt. Ltd. v. Google India Pvt. Ltd. and Ors. [2010 (6) CTC 813].
 Policybazaar Insurance Web Aggregator & Anr. v. Acko General Insurance Ltd. & Ors., [CS(Comm) 260/2019, order dated May 16, 2019 and May 28, 2019].
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