Trademark

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.

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

11 comments.

  1. Anonymous

    hi, good post. I have one question…use of expressions like ‘welcom to commonwealth games, 2010, delhi’ by different outlets in delhi can be termed as ‘advertisement of the mark’ or can it be covered under exception of section 29 (8) of the Act.

    Secondly if you can kindly provide the copy or link to the judgment…

    thanks…

    Reply
  2. Prashant Reddy

    Anon (11:38AM) – well my answer to that would depend on whether ‘Welcome to commonwealth Games, 2010’ is a registered trademark. I heard that Parliament was going to pass a special bill to protect all the IP related to the Commonwealth Games, 2010. Do you have any idea whether the Bill was passed?

    Prashant

    Reply
  3. Anonymous

    The applications for the expression ‘XIX commonwealth games, delhi’ and other realted logos, symbols and artistic work/s have been filed in different calsses. Most of them have even been advertised and perhaps some of them have been registered as well.

    The question is that although they remain to be the IP of Indian govt. or oc or whosoever the applicant is, the common man in spree of welcoming the delegates to the city can use these expressions or not.

    In case the said tradeamrk applicatoins are yet to be registered can an action for passing-off be initiated?

    Bill I really dont know.

    Reply
  4. Prashant Reddy

    Hi Anon,

    Tough question. I’m tempted to say that only authorized persons can use the mark. In this case authorized people would be the ‘official sponsors’. However on the other hand the Commonwealth Games are fundamentally different from other sporting events like the World Cup since the Commonwealth Games are funded by the taxpayer to a large extent.

    I’ll leave it at that. What do you think?

    Regards,
    Prashant

    Reply
  5. austrotrabant

    Dear Prashant,

    Thank you for your great post! Just one short question; what do you mean by “…while it would investigate trademark complaints for both the adwords text and the keyword suggestion tool in countries like France…” keyword suggestion tool? Is it possible that you meant “use as a keyword”?

    If no, could you maybe please also supply citations as to the relevant paragraphs? I fully agree with you…a “Encyclopedia” is the right word!

    Austrotrabant

    Reply
  6. Prashant Reddy

    Hello Austrotrabant,

    Congrats on being cited by the Madras High Court in its Google order!!!

    You are right, I meant to use the word ‘keyword’ and not ‘keyword suggestion tool’. The relevant paragraph is no. 195.

    Cheers,
    Prashant

    Reply
  7. austrotrabant

    Thank you! I have to say it came as a real surprise and I can’t image an Austrian court being so eh, ‘web2.0‘ 😉

    I agree with you, it might be a solid victory for Google but let’s see how the courts decide in the case of a strong & well reputed / famous trademark.
    As far as I know the ECJ hasn’t answered this question yet in respect to AdWords… but maybe the Interflora-case might bring some clarity in this respect…

    Keep up the excellent work & thank you for the fast reply!

    Kind regards,

    Austrotrabant

    Reply

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