Google Ads trademark infringement: Playing the devil’s advocate

The focus of law, across jurisdictions, is coxswaining towards computers, more specifically, the internet. Is law keeping pace with the ever-growing technology?

The demand for expansive data protection laws concerning search engine indexing coupled with the right to erasure under the General Data Protection Regulation (GDPR) and other regimes tends to answer the question in affirmative.

The intellectual property law regime, more specifically, trademark law, is no different.

An issue that is claimed to be somewhat settled (at least in the United Kingdom and the United States), is now being litigated before the courts in India.

This enigma, in simple words, concerns the use of ‘keywords’ on the Google Ads programme. Actions are being instituted on behalf of the proprietors of trademarks which seek to restrain the alleged infringer as also the service/platform provide, Google, from making “use” of the plaintiff’s registered trademarks in the “ad-title, ad-text, URL and meta-tag or keyword”.

Succinctly put, the averment on behalf of the plaintiffs in these matters is that when a “user” on the internet keys in their registered trademark, the alleged infringers, while using the services/platform of Google, insert their “infringing advertisements” [which constitutes ‘use’ of the registered trade mark]. Hence, Google, following a bidding process, allows indexing of those “infringing advertisements” on its search engine in a manner that is prejudicial to the plaintiffs and results in likelihood of deception.

I have deconstructed the issue in two parts. The first part - “use” by alleged infringers - now seems fairly settled by virtue of judgments of the Delhi High Court. It is the second part of the issue - allowing ‘‘use’’ of the (registered) trade marks by Google on its platform - which is the main thrust of this piece. I make a humble attempt to advance arguments on behalf of Google and play devil’s advocate to the arguments advanced by the plaintiffs against infringement action qua Google.

While use on a publicly accessible website (by the infringers) would amount to use within Section 29(6) of The Trade Marks Act, 1999, and other provisions, as there is an offer of goods ‘under the sign’ or use ‘in advertising’, would the act of the search engine/Google [merely being an advertising service provider] attract liability? I respectfully submit that it would not. Why?

To my mind, “use”, in the very least, would mean that the third party uses the sign in its own “commercial communication”. This element is absent in the role played by Google in these situations.

In a judgment rendered in 2010, the Court of Justice of the European Union (CJEU), in Louis Vuitton v. Google, held that “a referencing service provider allows its clients to use signs which are identical with, or similar to, trade marks, without itself using those signs.” The Court did not stop here. It went further to hold that.

“The fact of creating the technical conditions necessary for the use of a sign and being paid for that service does not mean that the party offering the service itself uses the sign.”

Hence, borrowing the reasoning of the CJEU, the referencing service provider is not involved in use in the course of trade within the meaning of Section 29(6) of the Act, which is drafted in a similar fashion in Section 10(4) of the (United Kingdom) Trade Marks Act, 1994.

McCarthy on Trademarks opines that there is no sale of the trademarks by the service provider in these circumstances. What happens is only limited to, sale of advertising space [Victor Andrew Wilson v. Yahoo! UK Ltd & Anr]. In my opinion, this back end advertising service only promotes competition in the market [Private Career Training vs. Vancouver Career College (Burnaby) Inc]. More importantly, the desired result on the search engine is based on the algorithm of Google.

Furthermore, even in cases concerning internet market service providers such as eBay, the approach of the CJEU has been that when these platforms provide a service that allow its customers to offer goods for sales under signs corresponding to trademarks, it does not itself use those signs. [L’Oréal SA v. eBay International AG]

The Delhi High Court, in DRS Logistics, held that the definition of an average consumer in Europe would differ from that in India. As noted above, the Court also held that use of a registered trademark as keyword would constitute infringement. This view has been followed by a coordinate bench in MakeMyTrip India v. Booking.com BV & Ors, as also in catena of other judgments.

There is academic scholarship available as also empirical evidence, internationally, that freedom granted to providers of search engines to offer “sponsored links” by reference to third party trade marks has not altered consumer search behaviour significantly. Hence, even the argument on misrepresentation, or “riding piggyback”/passing off claim (by Google Ads), is, in my opinion, not made out.

Bechtold argues the following in terms of (alleged) confusion caused by Google Ads:

“The great variety of ways consumers are using trademarks in their search behavior indicates that a legal analysis that focuses on consumer confusion may not capture all dimensions of trademark use in search engines (Goldman 2005). This has led the U.S. Court of Appeals for the Fourth Circuit to note that keyword advertising involves many trademark uses that are “referential or nominative in nature” and that a “robotic application” of traditional likelihood-of-confusion tests is ill-suited to capture the real meaning of consumer behavior in Internet search.”

It is not disputed that such intermediaries will need to take action when they know about unlawful uses of marks by advertisers and sellers. However, in my opinion, they ought not face the ire of infringement actions under the Trade Mark Law.

The crux of the matter is, as regards internet advertisers, the purchasers of keywords which consist of or contain a trademark - they are considered to make relevant use of a mark for the purposes of infringement. They consequently remain (potentially) liable for creating a likelihood of confusion where the use risks harming the origin indicating function of a trademark, as well as for one of three categories of “dilution” where the use risks harming other functions such as the investment or advertising functions. To foster liability on Google, in such cases, under the Trade Marks law regime, is not suitable.

I may only note that the judgment of the Single Judge in DRS Logistics has been challenged before the Division Bench. There is, however, no stay in the matter and the proceedings are fixed for May 19, 2022. An authoritative ruling from the Division Bench would lend greater clarity to the matter.

Karan Khetani is an LL.M. Candidate at the University of Cambridge.