Madras High Court hands Google ‘Adwords’ its first interim victory

In a significant decision the Madras High Court, on the 30th September, 2010 passed an interim ruling in Google’s favour in the the year old trademark infringement suit filed by Bharat Matrimony.com against Google and other matrimonial websites such Jeevansathi.com etc. The trademark suit was filed approximately a year ago on the 22nd of September, 2009 when the Madras High Court passed an ex-parte order restraining Google and the other matrimonial websites from infringing the plaintiff’s trademarks. Subsequently, less than a month after the initial ex-parte injunction was passed, the Madras High Court vacated the same and began hearing arguments from both parties on the question of whether an interim injunction should be granted.

A. Facts: The facts of the case at hand are quite simple. The Plaintiffs, BharatMatrimony.com, had registered in their name a series of trademarks such as ‘Telugu Matrimony’, ‘Urdu Matrimony’, ‘Tamil Matrimony’ etc. The terms ‘Telugu’, ‘Urdu’ etc. are the names of languages and are their use in the trademark is descriptive and not arbitrary. The same stands true for the second standard component which is ‘Matrimony’. Defendant No. 1, Google India Pvt. Ltd., was being sued for trademark infringement because of its ‘Keywords Suggestion Tool’, which was suggesting the use of the Plaintiff’s registered trademark for Google’s ‘Ad-words’ program. Defendants No. 2 to 4, all of them running competing matrimonial websites, were using the Plaintiff’s registered trademarks as keywords thereby displaying their advertisements as sponsored links on the Google searchpage whenever a user keyed in the Plaintiff’s trademarks into the Google search engine. The text of the ‘Ad-words’ advertisement while providing a link to defendants’ website would also display the text of the Plaintiff’s registered trademarks i.e. ‘Telugu Matrimony’, ‘Urdu Matrimony’ etc.

B. The main ‘questions of law’ before the Court: The three burning issues, apart from a host of other issues, before the Madras High Court were as follows:

(i) Whether the Plaintiff’s trademarks were descriptive or generic thereby diluting the strength of such a trademark?

(ii) Whether the Defendants were ‘using’ the trademark as understood in Sections 2(2)(b) & (c) and Section 29 of the Trade Marks Act, 1999?

(iii) Whether Google was liable for contributory trademark infringement for including the Plaintiff’s trademarks in its ‘Keyword Suggestion Tool’?

C. The Judgment: To put it mildly, Justice V. Ramasubramanian’s judgment is the Encylcopedia of all the internet related trademark litigation that has taken place in every major jurisdiction on this planet. The judgment deals with all such cases from the U.S.A. to France to the E.C.J. to China to Netherlands to Germany to Australia. Several of these cases are Google’s own cases. The judgment answers the above questions in the following manner:

(i) On the question of descriptive trademarks the Court found in favour of the defendants i.e. it found that the plaintiff’s trademarks were descriptive and that the defendants would be severely affected if they were restrained from using the same. Since some of the words like Tamil, Telugu etc. did not have any synonyms, granting the Plaintiffs an absolute monopoly over the use of these words would make it impossible for the defendants to advertise their services. On the question of whether the Plaintiff’s trademarks had acquired a distinctive secondary meaning the Court preferred to wait until evidence could be led on that aspect during trial.

(ii) On the question of whether the Defendants were ‘using’ the Plaintiff’s trademarks as understood in Section 2(2)(b) & (c) and Section 29 the Court found in favour of the defendants. Section 2(2) is a definitional provision which states when a mark may said to be used in the context of goods or services. Section 29 defines when exactly a trademark is infringed. The judgment draws a fine distinction between the various provisions of Section 29 which individually deal with situations of ‘use in the course of trade’, ‘application of the mark’ and ‘advertisement of the mark’. In this case the Court held that the defendant’s actions would be classified as ‘advertisement of the mark’. The Court however also clarified that the same would qualify under the exception of Section 29(8) which excludes those advertisements that were rendered according to ‘honest practices’ in industrial or commercial matters. The Court also pointed out that Section 30 of the Trademark Act, allows ‘honest practices in commercial matters’ as a valid defence. In the case at hand the Court held that the defendants’ use of the marks was honest since there were no possible synonyms that the defendants could have used to honestly describe their services.

(iii) On the question of whether Google was liable for contributory infringement the Court found in favour of Google. The Court ruled that contributory infringement required intention and that in the present case since the trademarks were basically descriptive it could not be proved that Google had intentionally suggested these marks with a view to infringe the Plaintiff’s trademarks. The Court however held that if the keyword suggestion tool were to suggest an arbitrary, fanciful trademark then in that case it would possibly be held for contributory infringement. Very interestingly the Court also seem to take issue with Google’s differing trademark policy for different jurisdictions i.e. while it would investigate trademark complaints for both the adwords text and the keyword suggestion tool in countries like France where it has been successfully sued, in countries like India, U.S.A. and U.K. it limits the trademark complaints to only the adwords text.

Conclusion: All in all the Madras High Court rendered a well reasoned judgment. The judgment is of little value to Google in terms of sheer preedential value since the trademarks in question were remarkably weak given their descriptive nature. Google’s true test will lie when it is sued for using a strong trademark.