Online advertising should not overstep the bounds

That innocuous online search for your next golf vacation leading to a pop-up ad reminding you that you need new polo shirts confirms that the algorithmic magic of keyword advertising has worked.

Essenais Obhan
Managing partner
Obhan & Associates

The exponential growth of online markets has made search engine optimization (SEO) a standard weapon in business marketing plans. A business that wants to rank high in search results without improving its SEO organically may choose to buy keywords from search engines such as Google. These keywords or phrases help businesses get more exposure for their ads to specific audiences. Search engines are the typical vehicles for keyword advertising, and many, like Google Ads, have monetized this market. Businesses can bid on or buy particular words or phrases, including trademarks, that direct people to their products or services. Entering any of these keywords into a search engine will then trigger ads from the company that selected the specific keyword for targeted advertising.

However, the use of a keyword which is identical or deceptively similar to a registered trade mark borders on trade mark infringement, as prohibited by section 29 of the Trade Marks Act 1999 (Act). It can also create confusion about the source of the goods or services being offered, or even mislead consumers into believing that there is an association. This disregards the very objective of trademark protection, which is to avoid unfair competition likely to dilute its distinctive character, its goodwill and its reputation.

Taarika Pillai, Obhan & Associates
Taarika Pillai
Partner
Obhan & Associates

Recently, the Delhi High Court in MakeMyTrip India Pvt Ltd v Booking.com BV & Ors, ruled that the use of a registered trademark, in particular by competitors, as a keyword constitutes infringement. Defendants were barred from using “MakeMyTrip”, with or without spaces, as a keyword in Google Ads. Noting that such use would be detrimental to plaintiffs’ monetary interests and the value of the mark, the court said that competitors cannot exploit the reputation of a registered mark for their own monetary benefit, and that if an injunction was not granted, irreparable harm would be caused to the plaintiff, its brand, its brand image and its business.

An early judgment on this issue was the Madras High Court case Consim Info Pv Ltd v Google India. It has been alleged that infringement occurs when a competitor uses a trademark in a title or ad text, and since the advertiser has chosen keywords using the keyword suggestion tool of Google, the search engine was also guilty of complicity. The court accepted that the combination of two generic words, neither of which could be registered, could constitute a trademark and that Google had favored the alleged infringers at the expense of the trademark holder. However, he did not grant an injunction because Google had made a commitment to the same effect.

However, since then, several orders have been granted, preventing competitors from bidding on identical keywords or misleading variations of trademarks. In DRS Logistics Pvt Ltd & Ors v Google India Pvt Ltd & Orsthe court held that the use of a trademark as a keyword would amount to trademark infringement, pointing out that section 29(9) of the law also recognizes infringement by spoken use, as opposed to printed or visual representation, even invisible.

Shubhanshi Pohani, Obhan & Associates
Shubhanshi Pohani
Associated
Obhan & Associates

The court cited with approval the case of People Interactive (I) Pvt Ltd v Gaurav Jerry considering that the invisible use of registered marks by non-holders dilutes the mark and benefits the reputation of the holder. The use of the owner’s trademark and domain name in the meta tags of an infringer’s own website can divert a significant amount of Internet traffic. The court agreed that this led to the misappropriation of the owner’s reputation and goodwill by relying on his intellectual property.

An online presence is essential and non-negotiable for most businesses today. Marketing and advertising strategies now incorporate the potential of technology. However, the high-level principles of honest business practices remain sacrosanct, even online. Trademark law may not specifically address the use of trademarks in keyword advertising, but the sanctity of the basics means courts will most likely rule against trademark use. counterfeit as keywords in online advertising.

Essenais Obhan is the managing partner, Taarika Pillai is a partner and Shubhanshi Pohani is associated with Obhan & Associates.

Obhan & Associates

Obhan & Associates

Lawyers and patent agents

N – 94, second floor

PanchSheel Park

New Delhi 110017, India

Contact details:
Ashima Obhan
Such. : +91-9811043532
Email: [email protected]

[email protected]

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