Companies that register trademarks sometimes find that they lose their distinctive identity as a result of being used to refer to other similar products or services. That’s genericide.
Xerox – which has almost become a generic term for photocopying – and others have faced this problem for a very long time. However, that is in the offline world, where there is no question of trademark infringement if customers looking for a certain product are also offered the offerings of rivals.
In the digital space, though, some companies use the trademarks of others to increase their discoverability on the search engine results page (SERP).
That’s the million-dollar question here: Is that okay?
DRS Logistics had complained that searches by users using its trademark ‘Agarwal Packers and Movers’ led to the websites of competitors. DRS claimed that Google’s advertising mechanism utilised its trademark to redirect users to rival sites.
In the DRS order, Delhi High Court has provided clarity by stating that the mere use of a trademarked term as a keyword does not amount to an infringement of trademark rights.
The court holds that ‘likelihood of confusion’ is a sine qua non for establishing infringement.
However, the court has required Google to, consistent with the EU position, review a complaint of use of a trademarked term as a KW in combination with the overall effect of the ad to see if there is likelihood of confusion being caused to the user. Only in this limited context are such keywords and the ads required to be disabled.
Here is all that you need to know about Google’s Ads programme and what counts as trademark infringement.
Trademark infringement
The court also said it is flawed to assume that the proprietor of a trademark registered under the Trade Marks Act has a monopoly on search engine results generated by a query containing the trademark. The search engine is not a directory service, the court said.
“The assumption that an internet user is merely searching the address of the proprietor of the trademark when he feeds in a search query that may contain a trademark, is erroneous,” it said. “An internet user may be looking for information that may be relevant to the trademark. He may be looking at reviews relating to the products or services covered by the trademark. He may also be looking at competitors or other persons who provide or deal with similar goods or services.”
Infringement of a trademark under Section 29 (2) of the Trade Marks Act rests on the likelihood of confusion, the court said.
“A trademark is also infringed under Section 29 (4) of the TM Act if the use of a mark identical or similar to the registered trademark is used in respect of goods not covered under the registered trademark and its use takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark,” the court said in its ruling.
Thus, the use of a registered trademark as a keyword, absent any confusion, dilution, or compromise of the trademark, would not amount to infringement of the trademark.
“Use of a trademark as a keyword is, essentially, to seek the attention of the internet users who may find information relating to goods and services covered under the said trademark as relevant. We find nothing illegal in seeking out such internet users as targets for advertisements that they may find relevant,” the court said.
What are keywords?
Keywords are words or phrases that are used to match ads with the terms that people are searching for. The keywords used by advertisers can be selected with the help of the ‘keyword planner’ tool provided by Google.
Google allows commercial entities to bid for individual search terms and, subject to certain factors, the ‘winner’ of the bid appears at the top of a relevant search for those terms.
What are the Google Ads policies?
To keep ads safe and appropriate for everyone, ads also undergo the Google Ad Review process, which also assesses their compliance with Google Ads policies.
The Google Ads policy applies globally without any exception.
What are the key features of the Google Ads policies?
They do not permit the use of trademarks in the text or title of an ad (AdText), except in a limited set of cases such as resellers and informational sites, and they permit advertisers to bid on trademarked terms as keywords to trigger ads on Google Search.
In India, the Ads Trademarks policy is in compliance with the Trade Marks Act and does not amount to infringement of trademarks.
As directed by the Delhi High Court and as per Google’s existing policy, when complaints are made it assesses a trademarked term’s use as a keyword alongside the ad’s overall impact and determines if it creates potential user confusion. Only within this specific scenario are these keywords and ads subject to removal.
What is Google’s take on the matter?
“Google has long invested substantial resources in developing policies and removing ads that may be harmful to users, including ads that are confusing or misleading. The Delhi High Court decision aligns with and ratifies those policies, as the court recognised that there’s no legal obligation to remove an ad unless consumers are confused by the ad or its landing page,” said a Google spokesperson. “The court has, by holding that the ultimate test is whether an ad is confusing to users, brought primacy to the issue of safeguarding the interest of the user. That is at the heart of Google’s policies as well, i.e. protecting the interest of the user, so they have access to relevant and honest ads.”