The Delhi High Court has ruled that the use of a competitor’s trademark as a keyword to promote one’s own business is a violation of the trademark owner’s rights, as per an order by Justice Prathiba M. Singh. The suit was filed by Head Digital Works Private Limited (A23.com) against one of their competitors— Tictok Skill Games Pvt Ltd (Winzo Games).
“Considering the history of litigation between the parties as also the order in MakeMyTrip (supra), the invisible use of the Plaintiff’s mark as an ‘adword’ or ‘keyword’ on any online platforms by the Defendant would be violative of the Plaintiff’s rights in the marks,” read the order which was reviewed by Medianama.
The suit was filed by A23.com to seek a permanent injunction to protect its registered trademarks ‘Ace2three’ and ‘A23’. It alleged that Winzo Games was using its marks ‘A23’ and ‘Ace2three’ as keywords on the Apple App Store to promote its own product.
The order revealed that both parties are looking to resolve their disputes amicably and had been directed to appear before the Delhi High Court Mediation and Conciliation Centre on May 23. The matter has been listed for August 22, 2022.
The order, as well the case, may set a precedent for companies to steer clear of using their competitors’ trademarks as keywords for ads in either Apple or Google ecosystems. The outcome of this case is likely to be used by many companies looking to protect their trademarks.
Understanding the Delhi High Court’s order in detail
Justice Prathiba Singh cited the observations in the case of MakeMyTrip vs Booking.com in which the Court said that it was “…now well settled in India that use of a registered mark by competitors even as metatags would be infringement, though the same may be invisible to a user“.
“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.” as cited in the order.
Justice Singh said that there is no difference in the use of trademarks as a keyword on search engines as opposed to use as a keyword on App Store searches.
“So long as the key words are being used for promoting a business, using a competitor’s trademark, the same would be violative of the rights of the trade mark owner,” she concluded.
She went on to add that Winzo Games stated that it has not used and does not intend to use the said marks as ‘adword’ or ‘keyword’.
“…it is directed that the Defendant shall abide by the said stand and not use the marks ‘A23’ and ‘Ace2three’ or any other variants/formative mark thereof as an adword, keyword, meta tag, or domain name, with or without space on any of the online search engines or application-based search platforms including Apple Application Store etc.,” read the order.
History of litigation between WinZO and A23
The Delhi High Court’s order* also talks about the case filed by Winzo Games against A23.com in November 2021 which charged that the latter used marks, such as “WinZO” and “WinZO Games”, as meta tags. Winzo had first sent a cease and desist notice which did not elicit a response.
Winzo was able to attain a temporary injunction from the Delhi High Court which restrained A23.com from using the aforementioned marks, or its variants, on their website and web advertisements. The order was passed by Justice Asha Menon.
Summary of the MakeMyTrip’s case against Booking.com
One of the cases that Justice Singh relied upon in her order was the case filed by MakeMyTrip against Booking.com and Google. The Delhi High Court had temporarily restrained Booking.com and Google from using the name MakeMyTrip and associated trademarks as keywords on Google Ads in India in April this year. The Court noted that the use by Booking.com amounted to trademark infringement and was detrimental to MakeMyTrip’s “monetary interest and brand equity.”
“To allow competitors such as www.booking.com and even Google to encash upon the reputation of the Plaintiff’s mark for their own monetary advantage is not permissible in the opinion of the Court,” read the order.
It is this order which has formed the basis upon which Justice Pratibha Singh passed the order in the case against Winzo Games. The injunction is, however, temporary, until July 27, 2022, when the next hearing is scheduled to take place.
Here are some of the observations made by the Delhi High Court:
- Using trademarks for advertising purposes is an infringement: The order said that there is no doubt that the use of MMT’s trademark by Booking.com in Google Ads is for the purpose of advertising. This is infringing use in view of Section 29(6)(d) of the Trade Marks Act, which squarely covers the use of a registered trademark in advertising, the order stated.
- Multiple infringements under Section 29 of the Act: “A perusal of Section 29 of the Act shows that there are various situations where the use of a registered mark would be infringing,” the order had stated then. Booking.com is infringing use under Sections 2(2)(b), 29(4)(c), 29(6)(d), 29(7) and 29(8)(a) of the Act, the order said.
*Disclaimer: The post was updated to elaborate on the history of litigation between A23.com and WinZO Games.