"Use of another's trademark or metatag to promote own business violative of trademark owner's right": Delhi High Court
The Delhi High Court in a recent order held that the use of another's trademark to promote one's own business is violative of the rights of the trademark owner and hence infringing.
The present case was filed by Head Digital Works Pvt Ltd which is engaged in the business of designing and developing software related to games of skills, deploying and maintaining an online gaming website and a mobile application via the internet.
The Plaintiff had registered the marks 'Ace2three' and 'A23' under various classes since 2006 and 2020 respectively.
It has been alleged that the Defendant, Tictok Skill Games Pvt Ltd, has been using the Plaintiff's trademarks as keywords on Apple Application Store. It further stated that when a user searches for the keywords 'A23' or 'Ace2three' on the App Store the first result in the advertisement section of the search result is that of the Defendant's app 'WinZO Games.'
It was brought to the notice of the Court that a case was filed by the present Defendant against the Present plaintiff (Tictok Skill Games Private Limited. v. Head Digital Works Private Limited) with respect to the use of the marks 'WinZO', 'WinZO Games' as a meta tag/title tag by the Plaintiff herein. In the said case the Court granted a permanent injunction restraining the Plaintiff herein from using the mark/name 'WinZO'/'WinZO Games' or its variants on its website and web advertisements.
In the present case, the Defendant contended that it does not intend to use the Plaintiff's trademarks as 'keywords' or 'adword'.
Considering the submissions and arguments in the present case, the Court was of the opinion that:
"So long as the keywords are being used for promoting a business, using a competitor's trademark, the same would be violative of the rights of the trademark owner"
Additionally, relying on the case of MakeMyTrip India Private Limited v. Booking.com B.V, the Court opined that,"Considering the history of litigation between the parties as also the order in MakeMyTrip (supra), the invisible use of the Plaintiff's mark as an 'adword' or 'keyword' on any online platforms by the Defendant would be violative of the Plaintiff's rights in the marks."
It was directed that since the Defendant does not intend to use the Plaintiff's marks as keywords, it should abide by the said stand and not use the marks 'A23' and 'Ace2three' or any other variants/formative mark thereof as an adword, keyword, meta tag, or domain name, with or without space on any of the online search engines or application-based search platforms including Apple Application Store, etc.
Given the suit and countersuit filed, the parties have decided to explore an amicable resolution of disputes.
The matter is listed before the court on 22 August 2022.