MakeMyTrip vs Booking.com – Looking at the Delhi High Court Injunction on Usage of Ad words.

Introduction and Backdrop of the case: -

Before going into the case firstly we will discuss what this website does so basically Booking.com seems to be scheduling holdings' online reservation agency for lodging reservations and other travel items in the Netherlands. Amsterdam is where the company's headquarters are located.
 

On the platform, there are about 1.2 billion listings. This website is accessible in forty three multiple dialects.

MakeMyTrip is a 2000-founded Indian internet tour operator. The company, located in Gurugram, Haryana, the company offers online booking services such as airline tickets, domestic and international vacation packages, hotel accommodations, bus and train tickets.

On its website, MakeMyTrip includes aircraft reservations to a wide range of places, as well as mansions and apartments, public transport tickets, taxi services, and hotel accommodations.

Moving towards the background of the case Make my trip herein referred as plaintiff The plaintiff brought the lawsuit to defend its different registered trademarks that - Booking.com B.V herein referred as Defendant  exploited as terms on the Google Ads Program to promote its services as adverts when Google search results were presented.

Because Booking.com utilized Makemytrip's trademarks as keywords, the plaintiff argues that incase any person finds for "MakeMyTrip" on Google, the first advertisement that appears is frequently that of Booking.com.

As a result of their use of the plaintiff's registered trademark, the defendants have committed trademark infringement. The website belonging to Defendant No. 1 is an online travel portal, comparable to the plaintiff. The booking .com cited on a European Commission case ("Guess judgement") to argue that there can be no restrictions on competing company’s utilization of a trademark as a term on the Google Ads Program.

It argued that restricting the use of the keyword 'MakeMyTrip' would be illegal under competition law. It was further argued that, under Sections 34 and 35 of the Act, the use of generic phrases like'make,"my,' and 'journey' is permissible.

In a similar vein, the other defendant here in referred as Google maintained that using the trademark as a keyword does not constitute trademark infringement, which is a widely held belief.

Main Issues involved in the present case:- Delhi High Court dealt with the following issues:

• Is it fair to enable non-owners to bid for a registered trademark as a keyword when it amounts to taking advantage of the registered proprietor's trademark's distinctive character and reputation?

• Whether or not third parties cashing in on a registered trademark's goodwill and reputation by bidding on it as a keyword through the Google Ads Program constitutes infringement and passing off?

• Does it count as misrepresentation if a registered trademark is used as a keyword in the Google Ads Program?

Judgement-

The Internet Ads programme, according to the Court, permits any business to bid for terms that may include anyone's trademark. Firms compete for each other's trademarks in order to improve the exposure of their goods and services on the search engine.
 

As a result, the Court believes that a trademark owner must bid for its own property, or else its competitors will be able to use the registered name to advertise their own goods and services. As a result, the owner is compelled to spend in the Google Ads Program.

According to the Court's reasoning, Google is squandering the trademark owner's goodwill by not restricting a  other competitor to occupy the name as a keyword.

The Court relied on the expansive interpretation of Section 2(2) (b) ('use' requires visual representation) read with Section 29(9) (spoken use of word marks can also be infringement) in DRS Logistics (P) Ltd & Ors. v. Google India Pvt. Ltd. ("DRS Logistics") to conclude that invisible marks can constitute use and thus infringement.

The Delhi High Court further found that booking.com (defendant) is violating Sections 29(6)(d) and 29(7) by utilising the plaintiff's mark for the purpose of advertising.

It also looked to the case of People Interactive (I) Pvt. Ltd. v. Gaurav Jerry (Jerry case) It also found that defendant no. 1 is directing customer from the main website of plaintiff  to its own through the advertisement, so gaining enormous advantage of the plaintiff's mark under section 29(8)(a) of the Act.

Para44 describes with the help of illustration: When an user inserts 'MakeMyTrip' into the search window and the first result in the Ad section is Booking.com, the customers can freely click on the link to visit the somewhat website and booked the ticket.

As a result, the user has been routed to a competitor's website, resulting in a business loss for the trade mark holder. Although the reasoning of the scenario appears to be straightforward, it is based on the premise that the user was not seeking for MakeMyTrip directly (for discounts, memberships, or reputational reasons, for example).

A non-usage proprietor's of the mark invisibly might as well just deflect / divert attention away from the mark. It might not cause ambiguity or result in a loss of business. If knowing this, real evidence from consumer surveys or other approaches would have been excellent. The Court appears to have made its decision primarily on the basis of a net loss assumption. In addition to the rights of traders, Indian trademark infringement legislation focuses on consumer misunderstanding.

As a result, the Court's reasoning should have ideally taken both of these considerations into account and elaborated on the reasoning surrounding them when reaching its judgement.

The Court further observed a breach of Section 29(4)(c), that stipulates that "any registered trademark has a reputation in India, and the use of the mark without due reason takes unfair advantage of or is damaging to the registered trademark's unique character or repute."

In section 29(4), the word "&" is used to indicate that all three sub-clauses must be satisfied in order for this provision to be violated. Unlike Sections 29(2), 29(6), and 29(8) (where "or" is used), Section 29 cannot be violated just by one of its sub-sections (4). It's important to remember that Section 29(4) only applies to trademarks with a good reputation in India.

Because there is no evident use of a mark as a keyword, the Court rejected the customary notion that there is no passing off. Kerly's Law of Trade Marks and Trade Names (15th Ed., p.628 & 629) was used to get to the conclusion that the "invisible" use of a mark as a keyword can be considered passing off.

There can be no passing off, according to the author, if "nobody is misinformed or likely to be misled." As a result, passing off cannot be established only on the basis of deception.

To be considered passing-off, the misrepresentation must result in deception. This adds to the case for why a data-driven approach to drawing judgments in this area would be advantageous.

Since there is no evident use of a mark as a keyword, the Court rejected the customary notion that there is no passing off. Kerly's Law of Trade Marks and Trade Names (15th Ed., p.628 & 629) was used to get to the conclusion that the "invisible" use of a mark as a keyword can be considered passing off. There can be no passing off, according to the author, if "nobody is misinformed or likely to be misled." As a result, passing off cannot be established only on the basis of deception. To be considered passing-off, the misinformation must result in deception. This adds to the case for why a data-driven approach to drawing judgments in this area would be advantageous.

The Court noted that, while the "invisible" use of a mark as a keyword can be considered passing off in general, the owner of the mark has the freedom to use its own trademark for advertising purposes. In view of technological advancements in the contemporary digital world and cases involving the use of keywords and meta-tags, it appears that including invisible use within the scope of passing off is necessary.

Conclusion derived:

Equivalent lawsuits have been registered by plaintiffs in which the defendants were barred from bidding on any 'keywords' on the Digital Advertising Program that are exactly equal or misleading variants of the Plaintiff's mark ' claiming that the defendants' activities formed trademark infringement and passing off.

That order comes at a convenient moment, as trademark infringement lawsuits on Google Ad Programs are on the rise. Furthermore, more clarification on some of the arguments described above, including more data usage, would have made this order a more solid precedent for disputes involving similar facts.

Bibliography: -

• https://indiankanoon.org/doc/145378965/

• https://spicyip.com/2022/05/makemytrip-vs-booking-com-looking-at-the-delhi-high-court-injunction-on-usage-of-adwords.html

• https://www.ndtv.com/india-news/delhi-high-court-restrains-makemytrip-keyword-use-on-google-ads-program-2933141

Written by:

Kaushiki Kesari