Google Ads trademark infringement The somewhat settled issue in the United Kingdom and the United States is now being litigated before the courts in India The focus of law, across jurisdictions, is coxswaining towards computers, more specifically, the Internet. Is the law keeping pace with the ever-growing technology? The demand for expansive data protection laws concerning search...
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Google Ads trademark infringement
The somewhat settled issue in the United Kingdom and the United States is now being litigated before the courts in India
The focus of law, across jurisdictions, is coxswaining towards computers, more specifically, the Internet. Is the law keeping pace with the ever-growing technology?
The demand for expansive data protection laws concerning search engine indexing coupled with the right to erasure under the General Data Protection Regulation (GDPR) and other regimes tends to answer the question in the affirmative.
The intellectual property law regime, specifically, the trademark law, is no different.
An issue that is claimed to be somewhat settled (at least in the United Kingdom and the United States), is now being litigated before the courts in India.
This enigma, in simple words, concerns the use of 'keywords' on the Google Ads program. Actions are being instituted on behalf of the proprietors of the trademarks, which seek to restrain the alleged infringer as also the service/platform Google, from making "use" of the plaintiff's registered trademarks in the "ad-title, ad-text, URL and meta-tag or keyword."
Succinctly put, the averment on behalf of the plaintiffs in these matters is that when a "user" on the Internet keys in his registered trademark, the alleged infringers, while using the services/platform of Google, insert their "infringing advertisements" (which constitutes the 'use' of the registered trademark).
Hence, Google, following a bidding process, allows indexing of those "infringing advertisements" on its search engine in a manner that is prejudicial to the plaintiffs and results in the likelihood of deception.
I have deconstructed the issue into two parts. The first - the "use" by the alleged infringers now seems fairly settled by virtue of the judgments of the Delhi High Court. It is the second part of the issue - allowing the "use" of the (registered) trademarks by Google on its platform, which is the main thrust of this piece.
I make a humble attempt to advance the arguments on behalf of Google and play the devil's advocate to the arguments advanced by the plaintiffs against the infringement action qua Google.
While the use on a publicly accessible website (by the infringers) would amount to the use within Section 29(6) of The Trademark Act, 1999 and other provisions, as there is an offer of goods 'under the sign' or use 'in advertising', would the act of the search engine/Google (merely being an advertising service provider) attract liability?
I respectfully submit that it would not. Why?
To my mind, the "use", at the very least, would mean that the third party uses the sign in its own "commercial communication". This element is absent in the role played by Google in these situations.
In a judgment rendered in 2010, the Court of Justice of the European Union (CJEU), in the Louis Vuitton vs Google held that "a referencing service provider allows its clients to use signs, which are identical with, or similar to, trademarks, without itself, using those signs."
The Court did not stop here. It further held, "The fact of creating the technical conditions necessary for the use of a sign and being paid for that service does not mean that the party offering the service itself uses the sign."
Hence, borrowing the reasoning of the CJEU, the referencing service provider is not involved in use during trade within the meaning of Section 29(6) of the Act, which is drafted in a similar fashion in Section 10(4) of the (United Kingdom) Trademark Act, 1994.
McCarthy on Trademarks opines that there is no sale of the trademarks by the service provider in these circumstances. What happens is only limited to, the sale of advertising space Victor Andrew Wilson v. Yahoo! UK Ltd & Anr. In my opinion, this back-end advertising service only promotes competition in the market [Private Career Training vs. Vancouver Career College (Burnaby) Inc]. More importantly, the desired result on the search engine is based on the algorithm of Google.
Furthermore, even in cases concerning the Internet market service providers such as eBay, the approach of the CJEU has been that when these platforms provide a service that allows its customers to offer goods for sales under the signs corresponding to the trademarks, it does not itself use those signs. [L'Oréal SA v. eBay International AG].
The Delhi High Court, in DRS Logistics, held that the definition of an average consumer in Europe would differ from that in India. As noted above, the Court also held that the use of a registered trademark as a keyword would constitute infringement. This view has been followed by a coordinate bench in MakeMyTrip India v. Booking.com BV & Ors, as also in the catena of other judgments.
Internationally, an academic scholarship is available as also empirical evidence, that the freedom granted to the providers of search engines to offer "sponsored links" by reference to third party trademarks has not significantly altered the consumer search behavior. Hence, even the argument on misrepresentation, or "riding piggyback"/passing off claim (by Google Ads), is, in my opinion, not made out.
Bechtold argues the following in terms of (alleged) confusion caused by Google Ads: "The great variety of ways in which the consumers are using trademarks in their search behavior indicates that a legal analysis that focuses on consumer confusion may not capture all dimensions of trademark use in search engines (Goldman 2005). This has led the US Court of Appeals for the Fourth Circuit to note that keyword advertising involves many trademarks use that is "referential or nominative in nature" and that a "robotic application" of traditional likelihood-of-confusion tests is ill-suited to capture the real meaning of consumer behavior in Internet search."
It is not disputed that such intermediaries will need to act when they know about the unlawful uses of marks by advertisers and sellers. However, in my opinion, they ought not to face the ire of infringement actions under the Trademark Law.
The crux of the matter is, as regards the Internet advertisers, the purchasers of keywords, which consist of or contain a trademark - are considered to make appropriate use of a mark for the purposes of infringement. They consequently remain (potentially) liable for creating a likelihood of confusion where the use risks harming the origin indicating the function of a trademark. It goes for one of three categories of "dilution" where the use risks harming other functions such as the investment or advertising functions. To foster liability on Google, in such cases, under the Trademark Law regime, is not suitable.
I may only note that the judgment of the Single Judge in DRS Logistics has been challenged before the Division Bench. There is, however, no stay in the matter and the proceedings are fixed for May 19, 2022. An authoritative ruling from the Division Bench would lend greater clarity to the matter.
Karan Khetani is an LL.M. Candidate at the University of Cambridge.