Booking.com using MakeMyTrip trademarks in Google Ads does not amount to infringement: Delhi High Court

The Delhi High Court recently held that mere use of trademarks on the Google Ads programme does not amount to infringement or passing off under the Trade Marks Act,1999 [Google LLC v MakeMyTrip (India) Private Limited and Ors]. .A Division Bench of Justices Vibhu Bakhru and Amit Mahajan referred to its earlier decision in the case of Google LLC v DRS Logistics (P) Ltd & Ors and said that the use of trademarks as key words by competitors, absent any confusion or deceit, does not per se amount to infringing use.The Bench rejected the contention that in the virtual world, use of keywords would be akin to applying the trademark in the software used to power the Google Ad Program.“The said contention is unmerited and insubstantial. The trade mark is not applied to any material when it is used as a keyword. Neither Google nor the advertiser applies the trade mark on any material. Neither of them do so to any material intended to be used for labelling or packaging of goods or as a business paper. There is no application to any material for advertising goods or services,” the Court held..The Court came to this conclusion while dealing with appeals filed by Google against an interim order of a single-judge which had restrained Booking.com from conducting the Google ad-word bidding on MakeMyTrip’s trademark..The Division Bench set aside the said order and held that Booking.com using MakeMyTrip’s trademarks as keywords does not amount to unfair advantage.It noted that a search for Make My Trip India Private Limited (MIPL) name or its trademarks using Google search engine would show MIPL’s web address in organic search results on the Search Engine Results Page (SERP) and MIPL essentially claims that Booking.com’s advertisements or links should not be visible as sponsored link on the same.“Prima facie, we are unable to accept that MIPL can claim any such right on the basis of its rights under the Trademark Act,” the Court said. .It stated that Booking.com is a well-known and popular platform offering travel services and prima facie, it cannot be accepted that an internet user is likely to be misled into believing that the services offered by Booking.com are those of MakeMyTrip.“The learned Single Judge’s view that use of trademark ‘MakeMyTrip’ as a keyword by Booking.com, which is one of its major competitors, would amount to infringing use under Section 29(4)(c) of the Trade Marks Act, is erroneous. This is because the services offered by Booking.com are similar to the services covered by MIPL’s trademarks. In these circumstances Section 29(4) of the Trade Marks Act would have no application.”The Court, therefore, set aside the single-judge’s order and allowed the appeals..Senior Advocate Sandeep Sethi along with advocates Neel Mason, Ankit Rastogi, Vihan Dang, Aditi Umapathy and Varsha Jhavar appeared for Google LLC.Senior Advocate Arun Kathpalia along with advocates Aditya Gupta, Raunaq Kamath, Rahul Bajaj, Sauhard Alung and Diksha Gupta appeared for Google India.Senior Advocate Amit Sibal with advocates Mohit Goel, Sidhant Goel, Deepankar Mishra, Abhishek Kotnala, Karmanya Dev Sharma, Risabh Sharma, Saksham Dhingra and Mouli Rajput represented MakeMyTrip.Booking.com was represented by Ankur Sangal, Partner along with Pragya Mishra, Principal Associate and Shashwat Rakshit, Associate, from Khaitan & Co..[Read Judgement]