ADWORDS
It was perhaps inevitable that the growing battle over Google’s Adwords and Adsense advertisement program would be debated before an Indian court. Monica Datta looks at recent developments.
Against the backdrop of the increasing importance of Internet advertising, the Madras High Court, on September 30, 2010, found in favour of Google and other advertisers, dismissing applications seeking to restrain the use of trademarks on Google’s contextual advertising programs, Adwords and Adsense.
Te case of Consim Info Pvt. Ltd v. Google India Pvt. Limited and Others was filed before the High Court of Madras at Chennai in September 2009. On September 17, 2009, a single judge restrained Google and the defendants (granted ex parte) from using the plaintiff’s trademarks as a part of the Adwords and Adsense program. Subsequently, on October 10, 2009, the interim injunction was vacated and directions issued to Google “to adhere to their business policy of protecting the registered trademarks, by ensuring that others do not use such registered trademarks in their Adwords”.
Te plaintiff (Consim) claimed to be the registered proprietor of various trademarks including Bharatmatrimony, Tamilmatrimony and Telugumatrimony, and also claimed to operate popular online matrimonial services such as
bharatmatrimony.com, tamilmatrimony. com and
telugumatrimony.com.
Google India and Google Inc were arrayed as defendants numbers 1 and 5, while the other defendants, namely People Interactive Pvt Ltd, Jeevansathi Internet Services Ltd and Times Business Solutions Ltd, are matrimonial services operating online services similar to the plaintiffs.
Consim complained that the use of its registered trademarks as a part of Google’s contextual advertising programs infringed Consim’s trademarks. Apart from Google, which Consim accused of contributory or ‘ancillary’ infringement, it also complained that the other defendants infringed Consim’s trademarks. It claimed that Adwords (which were actually Consim’s registered trademarks, such as Bharat Matrimony, etc.) were registered by the defendants so as to trigger their own advertisements (in the ‘sponsored links’ part of the Google search results page) when the Google search engine returned the ‘organic results’ arising out of a search query submitted by users.
Te defence put forward the following:
• The registrations obtained by the plaintiff were limited to combinations of generic or descriptive words such as Tamil and Matrimony, and Bharat and Matrimony, which could not give a monopoly to either parts of or even the said combinations
• The use of the words Matrimony, Tamil and Telegu in the ad text and/or ad title of their advertisements in the search engine was not in the trademark sense, but only in the descriptive sense. Importantly, the use of words constituting a trademark or trademarks themselves in the Adwords program would not amount to ‘use of a mark’ within the meaning of section 2 of the Trademarks Act 1999
• The plaintiff is estopped from questioning the use of Adwords by the defendants since it too uses the very function it seeks to injunct
• The registrations secured by the plaintiff are invalid, and
• A search engine is like a directory wherein reference to some words cannot be termed as infringement and the use of words constituting registered trademarks of the plaintiff in the keyword suggestion tool is not use in the course of trade.
In a very well-researched and reasoned judgment, the Single Judge V. Ramasubramanian disposed with the plaintiff’s application for injunction:
• Accepting the first defence, the court held that the plaintiff could not claim monopoly over the individual words Tamil, Malyalam, Telegu, Punjabi, Assamese, Matrimony, Bharat, etc., which are descriptive terms. Accordingly, it could not complain if these words were used individually in the context of Adwords by the defendants. For combinations of what it had held were descriptive words registered as trademarks, since any question of a monopoly over such combinations would mean that the defendants had no means of referring to words such as Tamil and Telegu, as well as limited options to the word matrimony, the court held that use of the combination would be inevitable and in view of the descriptive nature of the words would not injunct their use
• The court held that the use of trademarks by the defendants “would be use in the course of trade and use in advertising, such use [by the defendants] does not amount to an infringing use...”. Significantly, the court clarified that if it had not held that the use of the plaintiff’s marks were descriptive, it would not have accepted the defendants’ claim of “no trademark use”, since the “application of [a] registered trademark in advertisements would be a use on the course of
www.worldipreview.com
World Intellectual Property Review November/December 2010
67
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