Navigating the Legal Conundrum of Google AdWords and Trademarks in India
Aiswarya YK, Associate, Dispute Resolution Practice
Divishyaa T, Intern, Dispute Resolution Practice
Introduction:
In the digital age, online advertising has become a ubiquitous and essential tool for businesses to reach their target audience. Google AdWords, a prominent platform in the online advertising landscape, allows businesses to bid on keywords to display their ads prominently in search results. While AdWords offers significant benefits, it has also sparked legal debates, particularly in the context of trademark infringement. This article explores the legal complexities surrounding Google AdWords and trademarks in India.
Understanding Google AdWords:
Google AdWords is an advertising service offered by Google, allowing businesses to create and display ads on Google’s search engine and partner websites. Advertisers bid on specific keywords, and when users search for those terms, relevant ads are displayed. This Pay-Per-Click (PPC) model is highly effective for businesses to target potential customers actively searching for their products or services.
Trademark Basics:
Trademarks are crucial intellectual property assets that protect a brand’s distinct identity. They can include names, logos, slogans, or any distinctive sign that identifies a product or service. Trademark owners have exclusive rights to use their marks in commerce, preventing others from causing confusion or diluting the brand’s value.
The Legal Conundrum:
The legal conundrum arises when businesses bid on a competitor’s trademark as a keyword in their AdWords campaigns. This practice can lead to several legal issues:
1. Trademark Infringement: Using a competitor’s trademark as a keyword might be viewed as trademark infringement if it confuses consumers about the source of goods or services.
2. Unfair Competition: It may be considered unfair competition if a business tries to capitalize on a competitor’s reputation or goodwill.
3. Keyword Advertising Policies: Google has policies in place to address trademark-related concerns, but they vary by jurisdiction. In some cases, Google may allow the use of trademarks as keywords, while in others, they may restrict it. A simple example to understand the said conundrum is a third party trying to bid on a registered trademark as a Google Ad word so that their website pops up when the user uses the trademark as a search word.
Legal Precedents in India:
In India, legal battles over the use of trademarks in Google AdWords have yielded varying outcomes. Courts have considered factors like the intent to deceive consumers, actual confusion, and the nature of the goods or services involved.
One notable case involved the trademark “Adidas” and its variants. The Delhi High Court ruled in favour of Adidas, stating that competitors using these marks as keywords could cause confusion among consumers. However, other cases have been decided differently, depending on the specific facts and circumstances. In M/s DRS Logistics Pvt. Ltd and Anr v. Google India Pvt Ltd & Ors[1] Google contends that it doesn’t meet the criteria for infringement or passing off. According to the company, its Ads program functions solely as an advertising platform, offering an interface for creating and presenting ads on Google Search. The keyword provided by the advertiser is never employed in a trademark-related context. For which the Court clarified that the term “use” in Sections 2(2)(b)[2] and (c)[3] of the Act is applicable unless the context dictates otherwise. This is due to Section 29(6)[4] of the Act, which outlines four instances of trademark “use” for infringement, thus negating the necessity to meet the visibility condition in Section 2(2)(b). Moreover, the Court emphasized that Section 29(8)[5] underscores that infringement can occur even in the absence of a sale, as long as any advertising unfairly exploits or harms the distinctiveness of the mark.
So far, Google’s protection being an intermediary under section 79 of the Information Technology act[6], shielded them from liability for third-party content. They argued they only provided the platform, and advertisers chose all ad aspects including the keywords. However, the High Court dismissed this, citing Google’s Keyword Planner tool, which actively suggests keywords, potentially infringing on competitors’ trademarks. This active involvement and financial gain from keyword sales has negated their intermediary status.
In a recent case involving Indian EdTech company Upgrad and Scaler, the Delhi High Court prevented Scaler from bidding on Upgrad’s trademarks through the Google Ads Program[7]. Similarly, in the case of Policybazaar Insurance Web Aggregator & Anr. v. Acko General Insurance Ltd. & Ors., the Delhi High Court ruled that the defendant’s use of the plaintiff’s mark “POLICY BAZAAR” as keywords constituted infringement[8].
In the case of Matrimony.com Limited vs Kalyan Jewellers India Limited & Ors (2019)[9], the Madras High Court refused to grant an injunction to Matrimony.com, stating that their trademark was too generic and descriptive. The court found that Kalyan Jewellers had used AdWords to gain access to a platform, allowing customers to choose which websites to visit.
Competition law perspective:
Earlier in 2009, The Madras High Court determined that using Bharat Matrimony’s trademarks as keyword searches was part of normal trade practices[10]. However, it did not find the defendants in violation of trademark law. The Court viewed the use of ‘Bharat Matrimony’ as descriptive, not an attempt to divert business or infringe on the trademark. The judge noted that when seeking a matrimonial service in India, one would naturally use terms like ‘India Matrimony’ or ‘Bharat Matrimony’ for a list of relevant websites. In an appeal to the order, the division bench had agreed with its arguments and the Court held, the defendants’ actions amounted to trademark infringement. Pending trial proceedings, Bharat Matrimony appealed to the Supreme Court where the court ordered the defendants to refrain from featuring their names on the petitioner’s website through Google’s “AdWords” program.
However, they filed a complaint before the Competition Commission of India, in 2012, against Google, accusing it of unfair trade practices tied to the AdWords program. The complaint asserts that Google, in a dominant market position, engaged in discriminatory and retaliatory practices with AdWords. Additionally, it claimed that Google was selling keywords related to its website to competitors like Shaadi.com and Jeevansaathi.com.
The Competition Commission of India (CCI) examined allegations. However, after a comprehensive review of Google’s responses and the informants’ rebuttals, the CCI determined that Google’s keyword bidding policy was universal and did not prohibit advertisers from bidding on trademarked keywords, including Google’s own trademarks. Prohibiting such bids could hinder the relevance of ads for competitive or complementary products. Additionally, the CCI found that Google did not impose unfair conditions on users or hinder competitors of trademark owners from bidding on trademarked keywords. Regarding Google’s ad word policy, the CCI dismissed claims that Google had failed to enforce it properly in relation to Consim’s trademarks. Instead, it concluded that Consim had not followed the correct procedure for notifying complaints under the ad text policy, failing to direct such complaints to the designated trademark operations team.
The Way Forward:
Navigating the legal conundrum of Google AdWords and trademarks in India requires a case-by-case analysis. Businesses should consider the nature of their industry, their competitors, and the potential for consumer confusion. Seeking legal advice and adhering to Google’s advertising policies is crucial to avoid legal disputes.The intersection of Google AdWords and trademark law in India presents a complex legal landscape. Businesses must exercise caution and consider the potential legal implications when incorporating trademarks into their online advertising campaigns. While there is no one-size-fits-all solution, a combination of legal adherence and striving through best practices can help companies navigate this challenging terrain while protecting their brand’s integrity and value.
[1] M/s DRS Logistics Pvt. Ltd. and Anr. v. Google India Pvt. Ltd. and Ors., CS (COMM) 1/ 2017.
[2] Information Technology Act, 2000, §, 2(2)(b) No.27, Acts of Parliament, 2000 (India).
[3] Information Technology Act, 2000, §, 2(2)(c) No.27, Acts of Parliament, 2000 (India).
[4] Information Technology Act, 2000, §,29(6) No.27, Acts of Parliament, 2000 (India).
[5] Information Technology Act, 2000, §, 29(8) No.27, Acts of Parliament, 2000 (India).
[6] Information Technology Act, 2000, §, 79 No.27, Acts of Parliament, 2000 (India).
[7] 2022 SCC OnLine Del 644
[8] 2019 SCC OnLine Del 8901
[9] Original Side Appeal Nos. 4 to 12 of 2020
[10] Consim Info Pvt. Ltd. v. Google India Pvt. Ltd. & Ors., 2013 (54) PTC 578 (Mad).