The Delhi HC in M/s DRS Logistics Pvt. Ltd. and Anr. v. Google India Pvt. Ltd. and Ors., held that an invisible use of third-party trademarks as ‘keywords’ offered by Google as part of its ‘AdWords Program’ to advertisers, constituted trademark infringement.
The plaintiff in this case approached the Delhi HC seeking protection of its rights in the trademark ‘Agarwal Packers & Movers’ and sought an injunction against the defendants from offering the plaintiff’s trademark as a keyword to advertisers (including its competitors), as well as removing all references to its sponsored links to third party websites when the plaintiff’s trademark is used as a search term on the defendants’ websites.
The key contention of the plaintiff was that the use of its registered trademark ‘Agarwal Packers & Movers’ as an ‘AdWord’ led to diversion of target customers from the plaintiff’s website to that of its competitors, and, thus, resulted in misleading the customers, which in turn caused consumer confusion. The key defense relied upon by the defendants was that ‘keywords’ are merely back-end triggers and invisible and imperceptible to the consumers and, hence, use of a trademark as a ‘key word’ does not constitute ‘use’ under the Trade Marks Act, 1999, and consequently does not constitute infringement. The defendants further contended inter alia that use of the plaintiff’s trademark as a ‘keyword’ falls within the ambit of ‘fair use’ and, hence, cannot constitute infringement.
The Delhi HC rejected all the arguments raised by the defendants, and relied upon the existing jurisprudence in India on use of trademarks as meta-tags, equating the same with use as ‘keywords’ and, therefore, held that even invisible use of trademarks constitutes infringement under Indian law.
The Delhi HC, while holding in favour of the plaintiff, refused to grant injunction against the defendants and instead directed the defendants to (i) investigate any complaints made by the plaintiffs to them against third party use of the plaintiff’s trademark as ‘keywords’; (ii) review the overall effect of an advertisement in order to assess whether the same infringes plaintiff’s trademarks; and (iii) remove or block third party advertisements if such advertisements have the effect of infringing plaintiff’s trademark rights.
 CS (COMM) 1/ 2017.