ADWORDS
trade”, in terms of section 28 of the Trademarks Act. Te use of the marks by the defendants, which were estimated by the court to be descriptive in nature, were held by the court to not take unfair advantage of or fall within the meaning of honest practices [in industrial or commercial matters] as allowed by section 30 of the act
• As to the claim of estoppel raised by the defendants, while the court noted that the plaintiff itself made use of Google’s Adwords program, it refrained from entering a conclusive opinion in this issue on the basis of the fact that the plaintiff ’s use of equally descriptive words comprising the marks of the defendants number 2 to 4 would affect any case put forward by the defendants
• The court rejected the defence put forward by Google, analogising a search engine to a directory on the following basis: in a directory, the name of a person would normally appear only in one or two locations due to constraint of space and for reasons of utility (as listings in a directory in various locations unconnected with the advertisers’ products or services would not be of any ‘utility value’). In the context of search engines operating in the ‘virtual world’, there is no issue of ‘constraint of space’ and, accordingly, search results are prone to appear innumerable times on the organic search results irrespective of whether or not the location has any relevance to the name, product or service.
Importantly, the court took notice of Google’s Advertising Program Terms, Advertising Policy and Editorial Guidelines, and its Adwords and Adsense Trademark Policy. Te court noted that, “the search engine appears to have shown concern about the possible infringement of trademarks by potential advertisers” and also provided a redressal mechanism.
Te court also noted the territorial nature of Google’s Adsense/Adwords program and its policy of investigating the use of trademarks according to the region in which trademark rights are asserted: (a) in ad text only; and (b) in ad text and key words. Te court noted that India was listed as a place where Google’s investigation is confined to ad text only. Te court held that, in view of Google’s statement that in accordance with its trademark policy the plaintiff’s registered trademark would not appear in the ad text, if Google enforced its trademark policy, there would be sufficient safeguard for the rights conferred on the plaintiff by its registered trademarks.
Te court finally held that Google’s offering of words in its keyword suggestion tool “may
“ IN REACHING THIS PREMISE, THE COURT RELIED UPON THE FACT THAT WHILE THE SEARCH ENGINE MAY HAVE CONTROL OVER THE SELECTION OF KEYWORDS BY THE ADVERTISER, IT DOES NOT CONTROL THE SURFER’S CHOICE OF SEARCH TERM. IT IS ALSO NOT POSSIBLE FOR A SEARCH ENGINE TO BE AWARE OF ALL TRADEMARKS REGISTERED IN ALL JURISDICTIONS.”
While dismissing the plaintiff’s application for injunction, the court also held that the order could not be construed to mean that Google need not adhere to its Adwords and Adsense policy and, furthermore, the fact that the plaintiffs were also advertisers on Google themselves meant that the policy would also benefit the plaintiff.
not per se amount to an infringing use of a registered trademark, though it may amount to a use in the course of their own trade”. In reaching this premise, the court relied upon the fact that while the search engine may have control over the selection of keywords by the advertiser, it does not control the surfer’s choice of search term. It is also not possible for a search engine to be aware of all trademarks registered in all jurisdictions. Te court also cautioned that, “[t]here cannot be a presumption that the inclusion of those names in the keyword suggestion tool happened with the knowledge of the search engine about the registration of those words as trademarks”.
Te court also drew a distinction between use of descriptive words and arbitrary and distinctive words, and held that in case of use of a “completely arbitrary or fanciful name, which has no nexus or connection with the nature of the goods or services, [which] is adopted as a trademark, the offer by a search engine of that trademark in their keyword suggestion tool, to the competitors of the proprietor of the mark, could be considered as amounting to vicarious or contributory infringement”.
Te court also observed that while in the instant case, the use of the words Tamil and Matrimony would not amount to infringement, “Google has a duty to explain in the course of the main proceedings (suit), the rationale behind the difference in policy adopted by them in different regions”.
68 World Intellectual Property Review November/December 2010
In assessing the impact of this case on Google’s Adwords and Adsense programs, it is immediately clear that while the programs remain untouched, the issue is likely to continue to be assessed on a case-by-case basis. While the Madras High Court has held that the use of marks in Google’s advertising programs would be use in the sense mandated by the Trademarks Act, this case has also determined that any claim of trademark infringement would depend on the strength of the mark involved as well as Google offering the mark to advertisers in its keyword suggestion tool. Clearly, as long as trademark owners perceive the program as taking or transferring undue benefit on the back of their trademarks to competitors, Google will continue to have to defend it. But then that is nothing new for the company that has consistently sought to change the way business is conducted on the Internet.
Monica Datta is a senior associate at Luthra & Luthra Law Offices. She can be contacted at:
mdatta@luthra.com
Monica Datta is a senior associate with Luthra & Luthra. She focuses on prosecution, advisory and transactional assistance in the field of trademarks, copyright, domain names and designs, and also has a specialist role in the media and entertainment sector. Datta has since the past six years successfully enforced client IP rights in relation to a diverse range of industries, including pharmaceuticals, food and beverages, and banking, as well as the media and entertainment sector, specifically broadcasting, print publishing and new media.
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108