Author: Former Intern - Tanya Kanchan Soni
In the matter of Makemytrip India Private Limited v. Booking.Com B. V & Ors. [CS(COMM) 268/2022], a Single Judge [Prathiba M. Singh J.] of the High Court of Delhi, vide order dated April 27, 2022, held that the invisible use of a trademark as a keyword that tends to mislead consumers can constitute as passing off.
Section 27(2) of the Trade Marks Act, 1999, reserves a proprietor’s right to initiate action against “passing off goods or services as the goods of another person or as services provided by another person.” The question is whether ‘passing off’ would include the adoption of a deceptively similar mark as a keyword in the Google Ads Program by third parties or would that adoption be permissible?
The Plaintiff argued that Booking.Com [Defendant No. 1], has put bid on the keyword ‘makemytrip’ on the Google Ads Program in order to ensure that their website is shown in one of the top three search results, thereby causing misrepresentation through an invisible use. The Plaintiff further asserted that such unauthorized search result by the Defendants causes harm to the goodwill and reputation associated with their alleged trademark ‘MakeMyTrip’.
The Defendants contended that there cannot be any restriction on the use of a trademark on the Google Ads Program as a keyword even by the competitors. The Defendant also contended that monopoly cannot be claimed for generic words ‘make’, ‘my’, ‘trip’, and hence such use is permitted under the Trade Marks Act, 1999.
The Court while acknowledging the technological advancement held that “The traditional concept of ‘misrepresentation’ and ‘passing off’ consists of the Defendant adopting for his own goods or business some material such as a name or a mark which is deceptively similar to the claimant’s mark. In the opinion of this Court, restricting an action of passing off to such an ‘adoption’ might be obsolete in view of the technological advances in today’s digital world… impact of Google Ads Program can be best described by way of an illustration: If a person is looking to buy an air ticket and types `MakeMyTrip’ in the search bar, and the first result in the Ad section is of Booking.com, the user may simply visit the latter’s website by clicking on the link and book the ticket…the user has been directed to a competing website and a direct business loss has been caused to the trade mark owner’s business…Thus the “invisible” use of a mark as a keyword can constitute passing off as a matter of principle.”
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