INTRODUCTION
Is your company's trademarked name being used as a keyword search for your competitors?
In today's technologically advanced business world, a company's website becomes an essential tool to reach out to its customers. A website allows a company to establish an online presence and reach a global audience, regardless of its physical location. However, such advanced technological connections globally have their own set of challenges that are not sufficiently governed. One such challenge is invisible trademark infringement. Throughout the years, trademark owners have sought injunctions and restraining orders from courts against competitors that engage in trademark infringement against their registered marks to drive traffic to their websites.
In this form of invisible trademark infringement, where a trademark is misused by utilizing it as 'meta-tags', which form a part of a website's HTML code. It is commonly understood as advertising trademark infringement. Through this, competitors usually try to take benefit of a well-known brand's reputation to drive internet traffic to their website. This article elaborates upon
- What is a Trademark?
India's judicial position- Case Analysis of DRS Logistics v. Google
India
WHAT IS A TRADEMARK?
As under Section 2(1) (zb)1 of the Trademarks Act, 1999, a trademark is a mark that is capable of graphical representation and one that distinguishes the goods and services of one entity from others. It may consist of goods, packaging, a combination of colors, symbols, names, etc. A specific individual has the right as proprietor to use a registered trademark or a trademark that is used particularly in relation to specific goods or services to indicate a connection between such goods or services in the course of trade. However, there is no specification on whether non-physical or invisible use by an entity other than the one registered or misuse of a trademark constitutes trademark infringement.
There have been several cases in
However, at that time, this case did not impact the jurisprudence concerning trademark infringement.
In the case of
The most recent case is that of
CASE ANALYSIS: M/S DRS LOGISTICS PVT. LTD. AND ANR. v.
This case involved a similar contention of the invisible use of third-party trademarks as keywords by Google's AdWords Program. The plaintiff sought the protection of its trademark '
Contentions of the Parties:
The plaintiffs' primary contention was that their registered trademark was being used as an AdWord by Google. This caused confusion in the minds of consumers, while also diverting the traffic on the website to the competitors' websites. Therefore, the plaintiffs' contended a loss to their financial capacity as well as reputation due to the same.
The defendants' primary contention was that using keywords in such an invisible manner did not constitute trademark infringement. This is because the use of a trademark as a keyword does not amount to 'use' under the Trademarks Act, 1999. They further maintained the stand that in their AdWords program, the usage of keywords and meta-tags not only show sponsored results for money but that they also show organic results. Furthermore, they contended that as an intermediary, they are not obligated to confirm the status of a keyword as a trademark.
The Court's Decision:
- Investigate all the complaints of the plaintiffs that alleged the use of their trademark to divert traffic.
- Review the overall effect of such an Ad to determine if it infringes the plaintiff's trademarks.
- And if they discover such use to have an effect of infringing the plaintiff's trademarks, they will remove or block them.
CONCLUSION
Given the pervasiveness of the Internet and the significant implications of the practice of using competitors' trademarks as meta-tags to divert Internet traffic to a specific website in the legal and business environments, the need to accelerate the legal reform process to address such issues arises. Indian jurisprudence has come a long way from not recognizing keyword advertisement trademark infringement to holding entities like Google liable for Trademark Infringement. This shift in the Courts' opinion is, among others, a result of the popularity of using the internet for conducting business and the several security requirements it poses.
Footnotes
1. Section 2 (1) (zb), Trademarks Act, 1999.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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