In yet another decision on this point, the Delhi High Court (‘DHC’) has reiterated that use of a competitor’s registered trademark as part of the Google Ads program, is violative of the registered proprietor’s rights and would amount to trademark infringement. In the case of Makemytrip India Private Limited v. Booking.com B.V. and Ors., the DHC granted an interim injunction in favour of the plaintiff, Makemytrip India Private Limited (‘MakeMyTrip’) and restrained the defendants from using plaintiff’s registered trademarks as ‘keywords’ on the Google Ads Program, as this would amount to trademark infringement.
In the present matter, the defendant, Booking.com B.V (‘Booking.com’) was using and bidding for the plaintiff’s registered trademark ‘MakeMyTrip’ as a keyword on the Google Ads Programme such that, upon carrying out a search for the term ‘MakeMyTrip’ on the Google search engine, quite often the first advertisement displayed was that of Booking.com. MakeMyTrip argued that this allowed Booking.com to freeride upon its reputation and goodwill and cause diversion of business. MakeMyTrip also argued that such use was especially problematic as it was done by one of its major competitors and because this forced the plaintiff to bid for its own trademarks. Booking.com based its defence on the decision of the European Commission in Case AT. 40428-GUESS dated December 17, 2018, which held that restrictions cannot be imposed on the use of a trademark on the Google Ads Program, even by competitors. Booking.com also argued that any restrictions on such use would be violative of competition law.
The DHC rejected the arguments advanced by Booking.com, choosing instead to rely upon the existing jurisprudence in India, especially in the case of DRS Logistics (P) Ltd & Ors. v. Google India Pvt. Ltd. and held that there is practically no difference between use of trademark as a ‘meta-tag’ or as a ‘keyword’ in Google Ads Program, in as much as even if a trademark is being used in a hidden manner, it still constitutes ‘use’ of the trademark for the purpose of advertisement and therefore is violative of Sections 29(6)(d) and 29(7) of the Trade Marks Act, 1999 (‘TMA’). The DHC further held that use of the trademark ‘MakeMyTrip’ by Booking.com also takes unfair advantage of the distinctive character and repute of the plaintiff’s registered trademark which further constitutes infringement.