top of page

UNMASKING TRADEMARK INFRINGEMENT AND PASSING OFF IN THE REALM OF ONLINE ADVERTISING

BY: ISHETA T BATRA


In the modern digital landscape, where the seamless flow of information merges with our daily existence, a novel frontier for safeguarding intellectual property rights has materialized: the realm of online advertising. As businesses endeavor to etch their digital presence, the collision between creative expression and commercial pursuits has given rise to an upsurge in cases involving trademark infringement and passing off within this dynamic domain. In an era characterized by the allure of clickable engagements and virtual market spaces, the demarcation between authentic brand portrayal and shrewd impersonation becomes increasingly intriguing.


There are three rational bases for trademark: (i) product identification; (ii) product communication; and (iii) advertising & intrinsic reputation.(https://ir.lawnet.fordham.edu/cgi/viewcontent.cgi?article=1643&context=iplj) Hence, when companies develop and register trademarks for their products and services, they ensure that such trademarks satisfy the above-mentioned rational bases. As such, trademarks help consumers in effectively identifying products thereby reducing the search cost for the consumers, it helps companies to communicate product-related information to the consumers, and it helps companies to distinguish their product and services from competitors and establish an intrinsic reputation for their products and services in the market.


As per section 2(r) of the Trademarks Act, 1999 (“Act”), upon a trademark being registered, only the registered user of a trademark and authorized parties are permitted to use such trademark. Usage of the trademark, or any identical or deceptively similar mark by any other person constitutes trademark infringement under the Act.


While section 2(2) of the Act provides that ‘use’ of a trademark means the use of printed or other visual representation of the mark, section 29, in laying down the instances of trademark infringement, broadens the scope of the term ‘use’ with respect to a trademark.


Online advertising is a powerful tool for businesses to reach their target audience. The main purpose of online advertising is to show the most relevant ads to the right people at the right time. This can help businesses to increase brand awareness, generate leads, and drive sales. Tools like Google Ads platform come in handy. However, it can also be a source of legal liability. In particular, businesses need to be aware of the risks of trademark infringement and passing off when using online advertising.


The Delhi High Court, in the case of DRS Logistics Pvt Ltd & Others vs Google India Pvt Ltd & Others (CS (Comm) 1/2017), delved deep into the question of whether the term ‘use’ of the trademark is only restricted to printed or other visual representation of the mark and the issue of trademark infringement and passing off in the context of online advertising.


Facts of the Case

The plaintiff, DRS Logistics, had registered its trademark “Agarwal Packers & Movers” and other similar marks in 2009. The plaintiff claimed that several third parties use Google, the defendant’s services for inserting their advertisements when a user on the internet looks for the plaintiff by typing “Agarwal Packers & Movers”. The plaintiff further claimed that several third parties were using the trademarks of the plaintiff and using it as keywords to get their advertisements listed on the search page of the defendant when a person searches for the plaintiff’s website on the defendant’s platform.


The plaintiff had moved against such third parties separately, however, despite obtaining orders against such third parties, the defendant refused to block the usage of the plaintiff’s trademarks as keywords on its platform. Subsequently, the plaintiff filed a suit, claiming trademark infringement by Google, the defendant. However, the defendant inter alia contended that it never ‘used’ the trademark of the plaintiff in printed or any other visual representation and therefore, it cannot be said that the defendant has infringed the trademark of the plaintiff. Subsequently, the Court had to decide the primary issue as mentioned hereinbelow:


Issue

Whether providing a trademark of an owner as a keyword to a third party would amount to infringement of a trademark?


Judgment

The Court delved deep into the question of whether ‘use’ of trademark was restricted only to printed or other visual representations of a trademark as provided under section 2(2)(b) and 2(2)(c) of the Act. The Court held that “unless the context otherwise provides the use of the mark shall be construed as a reference to the use of printed or other visual representation of the mark in relation to the goods or services, but the reading of Sections 29(6), 29(7) and 29(8) of the TM Act, it is seen that the legislature has expressly departed from the ordinary construction of the expression “use” under this Act to include instances to construe “use” under Section 29 of the Act. Sections 2(2)(b) and 2(2)(c) have to be read in addition to Section 29(6), 29(7), 29(8) and 29(9). Having said that a perusal of Section 29(9) makes it clear that an infringement of a trademark can be by way of spoken use which is different from printed or visual representations of the mark. That is invisible use of the mark can also infringe a trademark. It follows, that invisible use of trademark to divert the traffic from proprietors’ website to the advertisers’ / infringers’ website shall amount to use of mark for the purpose of Section 29, which includes Section 29 (6) and 29(8), related to advertising.”


Accordingly, the Court ordered the defendant to block any advertisements that contain the plaintiff’s trademark(s) and its variations as keywords and/or overall effect of the advertisement has the effect of infringing/passing off the trademark of the plaintiff.


Takeaways

The DRS Logistics case is an important precedent that has clarified the law on trademark infringement and passing off in the context of online advertising. The case establishes that search engines can be liable for trademark infringement and passing off if they allow third parties to use trademarks as keywords in their search results.


The case also has implications for businesses that use online advertising. Businesses should be aware that they can be liable for trademark infringement and passing off if they use the trademarks of other businesses as keywords in their online advertisements.


Here are some of the key takeaways from the DRS Logistics case:

  • Search engines can be liable for trademark infringement and passing off if they allow third parties to use trademarks as keywords in their search results.

  • Businesses should be aware that they can be liable for trademark infringement and passing off if they use the trademarks of other businesses as keywords in their online advertisements.

  • Businesses should take steps to prevent trademark infringement and passing off, such as registering their trademarks and monitoring their online reputation.

Analysis

As mentioned above, one of the most important bases for developing a trademark is the advertising & intrinsic reputation that it provides to the trademark owner’s products and services. Therefore, any usage of such trademark by any other person to advertise other products invariably strikes at one of the fundamental bases of trademark.


In today’s tech-driven era, advertising has substantially moved online, and the online presence of a brand is an important determinant of a brand’s success in the market. In such light, it becomes important to adequately track the contemporary developments in online advertising, and effectively extend the basic principles of trademark law to such contemporary developments. One such contemporary advertising practice is search engine advertisements using keywords.


The unauthorized usage of a party’s trademark to advertise one’s own product strikes at the very heart of trademark infringement under section 29 of the Act. This has been the stand taken by the judiciary in India in other instances as well. For example, the Delhi High Court, in the cases of Christian Louboutin SAS vs. Nakul Bajaj & Ors., (2018) 253 DLT 728 and Kapil Wadhwa v. Samsung Electronics Co. Ltd., 194 (2012) DLT 23, had already dealt with a similar practice of meta-tagging and held that the unauthorized invisible usage of a person’s trademark in meta-tagging constituted trademark infringement.


In such light, the decision of the Delhi High Court in the instant case is well within the fundamental principles of trademark law, and in fact, this judgment has extended such principles to the contemporary advertising practices of today.


39 views0 comments

Recent Posts

See All

コメント


bottom of page