Written by Shaurya Mahajan
The Delhi High Court in the case of MakeMyTrip India Pvt Ltd v. Booking.com BV and Ors expressed a prima facie view that the use of a registered mark like ‘MakeMyTrip’ as a keyword on Google Ads by a competitor in this case Booking.com would amount to trademark infringement under intellectual property law.
The bench comprised Justice Prathiba M Singh. It was noted that it is now a well-settled law in India that the use of a registered mark by competitors, even as metatags, would be an infringement even though the same may be invisible to a user.
The Court was dealing with a suit filed by MakeMyTrip seeking protection from misuse of its trademark by its competitor, Booking.com, which was using the mark to get greater visibility of its advertisements on Google searches.
It was argued by MakeMyTrip that Booking.com was using ‘MakeMyTrip’ as a keyword on Google Ads, as a result of which when a search is carried out for Make My Trip, quite often, the first advertisement that is displayed as a search result is of Booking.com.
MakeMyTrip also stated that Booking.com had made bids for the keyword ‘MakeMyTrip’ on the Google Ads program to ensure that its website is shown as one of the top three search results in the advertisement category when someone searches for ‘MakeMyTrip’ on Google.
Such use of a registered trademark would constitute infringement, especially when done by a competitor like Booking.com, it was claimed.
However, Google argued that the use of the trademark as a keyword is not an infringement and this is the position internationally, including in the UK, US, European Union, China and several other countries.
The Court said that by using a registered trademark as a keyword, Google Ads seeks to create a platform for two competitors to bid against each other for their respective marks for better visibility of their goods and services on the search engine.
Therefore, in effect, a trademark proprietor is being forced to bid for its trademark for the advertisement of its goods and services to be reflected in the advertisement section of the search results so that it is not hijacked by a competitor, the Court said.
It was held that goodwill in a mark is created by the proprietor of the mark and the reason why the user may be searching for a particular mark is due to the investment made by the trademark owner in its promotion, advertisement, merchandising and other promotional activities.
The judge noted that in the present case, MakeMyTrip was being forced to bid for his mark on a daily and monthly basis, because Google allows even non-proprietors to bid for a registered trademark as a keyword.
Dealing with the issue of passing off, the Court said that the essence of passing off is a misrepresentation, which is calculated to cause damage to business or goodwill. The traditional concept of ‘misrepresentation’ and ‘passing off’, Justice Singh said, consists of a defendant adopting for his goods or business, material like a name or a mark which is deceptively similar to the claimant.The order said that the ‘invisible’ use of a mark as a keyword can constitute passing off as a matter of principle.
On these grounds, the Court passed an interim order restraining both Booking.com and Google from using the MakeMyTrip mark on the ads platform till the next date of hearing.
The judge said that at this stage, the injunction will be restricted to the territory of India.
The matter will now be heard on July 27 along with other similar matters.