The Delhi High Court on April 27 temporarily restrained Booking.com and Google from using the name MakeMyTrip and associated trademarks as keywords on Google Ads in India, noting that this use would amount to trademark infringement and be 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,” the order read.
The MakeMyTrip (MMT) vs. Booking.com case is one among the many cases where companies have argued that Google should not allow competitors to use registered trademarks as keywords for ads. The outcome of this case will be closely watched by companies as it will set precedent for future trademark cases.
This injunction has been granted until July 27, the next date of hearing, but MakeMyTrip is seeking a permanent injunction not just for the mark MakeMyTrip, but also for MMT and other trademarks owned by the company. The court is also expected to hear two other similar cases on the next date.
“It’s a welcome order, but only thing is that it is an interim injunction. Hope that it goes to Supreme Court and becomes final so that Google doesn’t allow this practise anymore,” Murugavel Janakiraman, founder-CEO of Matrimony.com, told MediaNama. Matrimony.com has also been fighting a similar copyright infringement case for over a decade before the Madras High Court.
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Why did MakeMyTrip file a lawsuit against Booking.com and Google?
- MakeMyTrip trademark is registered under various clauses for over 20 years: MakeMyTrip stated that it owns the trademark for its name in classes 9, 35, 39, and 43 and that it has been using the trademark for the last 22 years in various variants and logo forms. The company also pointed out that it owns the trademark for ‘MakeMy’, ‘MyTrip’, ‘MMT’ etc, and that it has registered trademarks in several other countries of the world including Australia, Bhutan, Canada, Indonesia, etc.
- Booking.com is misusing MMT’s trademarks for promoting its own services: MMT complained that Booking.com is using MakeMyTrip and other trademarks of the company as keywords on Google Ads for promoting its own services through advertisements on search results. The way Google Ads works is by allowing companies to bid for keywords that match the terms or phrases that internet users are most likely to search for. Ads matching the keywords are shown above the organic search results. MMT pointed out that when a user searches for MakeMyTrip on Google, quite often Booking.com is the first advertisement shown. MMT placed on record the screenshots of the search results as well as auction insight of its own account on Google Ads to show that Booking.com has made bids for the keyword “makemytrip” on the Google Ads Program in order to ensure that its website is shown as one of top three search results in the advertisement category when someone searches for MakeMyTrip.
- Booking.com’s actions constitute infringement: MMT alleged that such use of its registered mark would constitute infringement, especially when done by its competitor such as booking.com. MMT submitted that Booking.com’s actions are in violation of Sections 29(6)(d), 29(7), 29(8), and 29(9) of the Trade Marks Act, 1999.
- Multiple cease-and-desist notices sent to Booking.com: MMT submitted that it sent notices to Booking.com in October 2019 and August 2020 asking it to cease bidding on the keyword “makemytrip.” While Booking.com stopped bidding for a brief time in both instances, the company subsequently resumed its use of MMT’s trademarks as keywords.
What was Booking.com’s response to MakeMyTrip’s allegations?
- Contrary to competition law: Any restriction which may be put on the use of the MMT’s mark as a keyword would be contrary to competition law, Booking.com said.
- EU Guess Judgement: Booking.com cited the judgment of the European Commission made in the Guess case in 2018 to argue that there cannot be any restriction on the use of a trademark on the Google Ads Program as a keyword.
- MMT concealed and suppressed material facts: Booking.com argued that there has been concealment and suppression of material facts by MMT as the latter did not reveal the existence of two documents relevant to the case.
- In contravention of foreign laws: Booking.com argued that it is a global company and an injunction restraining it from bidding on the trademark of MMT, would put it in contravention of the law of other foreign jurisdictions. “The use of the trademark as a keyword is not an infringement of trademark and this is the position internationally including in the UK, US, European Union, Australia, New Zealand, Russia, South Africa, Canada, Spain, Italy, Japan, and China,” Booking.com argued.
- Booking.com should be allowed to file a reply: The company asked that it be permitted to file a reply in this matter before the final order is passed and that no interim injunction should be issued.
What does the Delhi High Court order say?
- Invisible use of a trademark is also infringement: On Booking.com’s argument that “MakeMyTrip” is not reflected either in the ad title, meta tags, or in the ad text, the Court cited the judgement dealt in a previous case: “It is now well settled in India that use of a registered mark by competitors even as meta-tags would be infringement, though the same may be invisible to a user as held in DRS Logistics (Agarwal Packers and Movers case),” the court said.
- Booking.com is encashing on the goodwill created by MakeMyTrip: “The goodwill in a mark is created by the proprietor of the mark. The reason why the user may be searching for a particular mark is due to the investment made by the trademark owner in the said mark in promotion, advertisement, merchandising and other promotional activities. […] When a user, therefore, searches for a well-known mark or a mark, which he or she has heard about in the past, on a search engine, it is due to the goodwill and reputation which is associated with the mark. It has nothing to do either with the search engine or with the competitor,” the order stated. Because Booking.com is encashing on the goodwill of MMT when it is bidding on its marks in Google Ads, “in the prima facie opinion of the Court, this practice amounts to taking unfair advantage of the Plaintiff’s mark and also falls foul of section 29(8) of the Act,” the order stated.
- Booking.com is riding piggyback on MMT’s valuable intellectual property: The order also referred to the shaadi.com vs. ShaadiHiShaadi.com case in which the Bombay High Court ruled that the invisible use of registered trademarks by non-proprietors dilutes the mark. “Meta-tags are routinely used by the search engines and search engine robots to assess webpage contents and other relevant material relating to a webpage in the building of search engine indices. This is where an illicit use of meta tags can be severely damaging. […] A search for the latter (the original, the victim) is very likely to yield results for the former, the one that has pirated the identifying marks or name. Now if any individual was to run up a website and use this Court’s ‘keywords’ or ‘description’ meta tag contents, a search engine robot would identify that illicit website as being the official website of the Bombay High Court,” the ruling stated. The Delhi High Court said the MMT’s case is of similar circumstances because Booking.com succeeded in diverting as much as 10.33% and 4.67% of the Internet traffic away from MMT to itself in this way. “There could be no better evidence of passing off, confusion and deception. This is, plainly, hijacking the Plaintiffs’ reputation and goodwill and riding piggyback on the Plaintiffs’ valuable intellectual property,” the order read.
- 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 Act, which squarely covers the use of a registered trademark in advertising, the order stated.
- Multiple situations of infringements under Section 29 of the Trade Marks 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 stated. For example, Section 29(4) states that infringement occurs when “the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.” 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.
- A trademark proprietor is being forced to bid for its own trademark: Because Google Ads seeks to create a platform for two competitors to bid against each other for the marks belonging to each other for better visibility of their goods and services on the search engine, a trademark proprietor is forced to bid for its own trademark in order for the advertisements of its goods and services to be reflected in the advertisement section above the organic search results, the order explained. “This entails the trademark owner to make investments in the Google Ads Program on a daily basis, failing which its competitors could use the trademark for advertising their own goods and services and have listings higher on the Google search results,” the order said. As per MMT’s submission, it spends around Rs. 6 crores monthly on ads. “The Court has to consider as to whether such an act could be justified, especially when it amounts to taking advantage of the distinctive character and reputation of the Plaintiff’s trademark,” the order said.
- Booking.com’s actions can be seen as passing off: “The essence of passing off is a misrepresentation made by the Defendant which is calculated to cause damage to the business or goodwill of the claimant,” the Court explained. In the case of MMT, the impact of Booking.com’s actions can be described by way of an illustration: “If a person is looking to buy an air ticket and types “MakeMyTrip” in the search bar, and the first result in the Ad section is of Booking.com, the user may simply visit the latter’s website by clicking on the link and book the ticket. In effect, therefore, the user has been directed to a competing website and a direct business loss has been caused to the trademark owner’s business,” the order stated. “Thus, the invisible use of a mark as a keyword can constitute passing off as a matter of principle,” the Court said.
- Orders passed in other similar cases in favour of MMT: The Court cited multiple other cases that are similar to this one: MMT vs Happy Easy Go, MMT vs Easy Trip Planners, MMT vs Wing In Travel Advisory, MMT vs Travelogy, in which the orders were issued in favour of MakeMyTrip and competitors were restrained from bidding on any keyword on Google Ads that are identical or deceptive variants of MMT’s trademark.
- Factual background in EU’s Guess judgement is completely different: In that case, the European Commission was dealing with a case where authorised distributors and retailers of ‘GUESS’ products were contractually being prevented from using ‘GUESS’ brand names and trademarks as keywords or bidding therefore on Google Ads. Therefore, it is clear that the Commission was dealing with ‘intra-brand’ competition, while in the case at hand, MMT seeks to restrict a competitor, the order stated.
Google’s double standards in where its policies are enforced
The Alliance of Digital India Foundation (ADIF), an industry body for India’s digital startups, welcomed the court’s decision but also called out Google’s double standards and duplicity in its policies.
“In the European Union, Google investigates the use of trademarks as keywords in published ads, but in India, it refuses to do so. Credible Indian brands are being put in harm’s way as a result of competitors – both global and domestic – taking advantage of Google’s lax policies. All the while, Google is profiteering from the resulting situation,” ADIF said.
“Google’s argument that keywords are chosen by advertisers and that being an intermediary, the tech giant cannot be held liable for violations is untenable – it is only aimed at shirking accountability in order to continue to engage in profiteering,” ADIF added.
“Companies and individuals spend a considerable amount of time, effort, and resources on building a brand – an intangible asset for any business. It is unethical of Google to encash upon the goodwill and reputation of brands by allowing their competitors to use their registered trademarks as keywords in Google Ads. The tech giant is profiteering from this practice, all the while hurting credible Indian brands, misleading their consumers, and at times even endangering them by exposing them to scam links. There needs to be accountability.” – Sijo Kuruvilla George, the Executive Director of the Alliance of Digital India Foundation (ADIF)
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