MAKEMYTRIP INDIA PRIVATE LIMITED V. BOOKING.COM B. V. & ORS
Facts
Brief facts of the matter are such that the Plaintiff is a registered owner of the trademark 'MakeMyTrip' (hereinafter referred to as the Trademark). The Plaintiff is a pioneer amongst the online traveling portals in India and abroad and has registered trademarks for 'MakeMyTrip', 'MakeMy', 'MyTrip', 'MMT' and the domain name www.makemytrip.com since the year 2000.
The Defendant No. 1 is an online travel agency called the Booking.com and is a one of the biggest competitors of the Plaintiff.
Issues
The present case pertains to a legal complexity in determining:
a) Whether a trademark infringement occurs when someone's trademark is used as a keyword on Google Ads Program?
b) Whether the use of a trademark as keyword amounts to misrepresentation and passing off as a matter of principle?
Rules
Section 2(2)(b), Trademarks Act, 1999
Section 29(4)(c), Trademarks Act, 1999
Section 29(6)(d), Trademarks Act, 1999
Section 29(7), Trademarks Act, 1999
Section 29 (8), Trademarks Act, 1999
Contentions of the Plaintiff
The contention of the Plaintiff is that when a search for 'MakeMyTrip' is conducted on Google's search box, then the first advertisement that appears in the search results in the advertisement category is that of Defendant No. 1, Booking.com. To substantiate their contention, the Plaintiff placed several screenshots of the search results on record. In addition to that, the Plaintiff also submitted auction insights of their own account on the Google Ads Program which show that the Defendant No. 1 has made bids for the keyword 'MakeMyTrip'. The Plaintiff had served various notices upon the Defendant No. 1 to ask them to stop bidding on the Plaintiff's trademark but the Defendant No. 1 complied with their requisitions only for a short while.
The Counsel for the Plaintiff submitted that the unauthorized use of the Plaintiff's trademark by the Defendant No. 1 is an infringement under Section 29 (6) (d), Section 29 (7), Section 29 (8) and Section 29 (9) of the Trademarks Act, 1999.
Contentions of the Defendant
The Counsel for Defendant No. 1 argued that no restrictions can be imposed on the usage of the Plaintiff's trademark as a keyword on the Google Ads Program. In this regard, the Defendant No. 1 stopped complying with the notices of the Plaintiff since 2022 in view of the judgment of the European Commission dated 17 December 2018 in Case AT.40428-GUESS wherein it was held that there can be no restrictions on the use of a trademark as a keyword in the Google Ads Program even by the competitors.
The Counsel for Defendant No. 1 first submitted that the Plaintiff and the Defendant No. 1 entered into a Strategic Partnership Agreement as on 27th May, 2016 by way of which the Defendant No. 1 gave permission to the Plaintiff to conduct paid searches under the trademark 'booking.com'. According to the Defendant No. 1, such an agreement is not required post the judgement of the European Commission in order to curtail bidding restrictions.
In addition to that, it was argued by the Counsel for the Defendant No. 1 that Booking.com has an international presence in several countries across the globe and if a bidding restriction is imposed, it would be tantamount to a contravention of foreign laws such as the judgment of the European Union. Moreover, the contention of the Counsel for the Defendant No. 1 was that such a restriction would be against the competition law.
Furthermore, the Counsel for the Defendant No. 1 argued that the words 'make', 'my' and 'trip' can be used in a generalized way, which should not be prohibited under Section 34 and Section 35 of the Trademarks Act, 1999.
Similarly, the Counsel for Google argued that the use of a trademark as a keyword does not amount to trademark infringement as held in DRS Logistics (P) Ltd. & Ors. v. Google India Pvt. Ltd. (2021).
Further, it was submitted by them that a similar view is shared by various countries across the world.
The Counsel for Google pointed out that the Plaintiff claimed that the cause of action arose in October, 2019 but another plaint of the same nature was filed by the Plaintiff against one M/s Easy Trip Planners Pvt. Ltd. in the year 2018. They argued that such non-disclosure of the other plaint amounts to suppression and concealment of facts.
Findings of the Court
According to the Hon'ble court in the judgement of DRS Logistics (P) Ltd. & Ors. v. Google India Pvt. Ltd., it was observed and categorically laid down that the invisible use of a trademark constitutes trademark infringement. It is a settled view in India that the use a trademark, by the competitors, as a metatag, amounts to trademark infringement. In view of the Hon'ble Court there is not much difference between using a trademark as a metatag and using it as a keyword on the Google Ads Platform. Thus, it is clear that the usage of a trademark as a keyword does in fact amount to trademark infringement. The Hon'ble Court also placed reliance on another case of People Interactive (I) Pvt. Ltd. v. Gaurav Jerry & Ors. wherein the Hon'ble Bombay High Court held that the invisible use of a trademark by a competitor dilutes and compromises the distinctive character of the trademark.
In the context of the present case, the Hon'ble Court observed that the usage of the Plaintiff's trademark by the Defendant No. 1 is not visible but it is evident that the Defendant No.1, for advertising purposes, was engaging in unfair business practices by intending to lure customers away from the Plaintiff's website towards their own. Such a behaviour amounts to the unfair exploitation of the Plaintiff's trademark and violates section 29(6)(d) and section 29(8) of the Trademarks Act, 1999. Furthermore, Google was capitalizing on the Plaintiff's trademark by permitting Defendant No. 1, a competitor of the Plaintiff, to use the trademark 'MakeMyTrip' as a keyword for advertising purposes. This practice is considered unfair by the Hon'ble Court, as it takes advantage of the Plaintiff's investment in creating goodwill and reputation associated with their trademark. The reason consumers search for a particular trademark is due to the investment made by the trademark owner in promotion and marketing activities. The distinctiveness of the trademark is a result of the proprietor's use and promotion of the mark, rather than any involvement from competitors or search engines. This uniqueness is what sets the trademark apart from its competitors.
With regard to the judgement passed by the European Commission, the Hon'ble Court was of a view that the factual matrix of the said matter was different in comparison to the present case due to which the judgement would not be applicable in the present case.
In so far as the question of misrepresentation in the present matter is concerned, the Hon'ble Court quoted a text from a book, Kerly's Law of Trade Marks and Trade Names and held that the invisible use of a trademark a keyword can amount to misrepresentation as a matter of principle in certain circumstances if the public is misled or deceived. The Hon'ble Court went on to add that this does not mean that the owner of a trademark would not be permitted to make bids for and use their own trademark as a keyword for the purpose of advertising.
Conclusion
The Hon'ble High Court held that the balance of convenience lies in favour of the Plaintiff and the use of Plaintiff's trademark 'MakeMyTrip' by The Defendant No. 1 who is one of the major competitors of the Plaintiff, prima facie amounts to trademark infringement under Section 2(2)(b), Section 29(4)(c), Section 29(6)(d), Section 29(7) and Section 29(8)(a) of the Trademarks Act, 1999. Thus, inunction was granted to the Plaintiff so as to restrain the defendants from using the trademark 'MakeMyTrip" and its variants as a keyword on the Google Ads Platform.
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