Intellectual Property: Tagging Liability In Using Third Parties’ Marks As Keywords And Metatags:

Our associate, Anand Kumar discusses “Intellectual Property: Tagging Liability In Using Third Parties’ Marks As Keywords And Metatags:“

With the advent of the Internet era, the cyberspace has become a vital part of life, so much so, that our daily lives, whether personal, social or professional, are conducted through the Internet. In fact, to meet the consumer demands in the virtual world, businesses worldwide, have also made a parallel shift. For businesses to remain relevant in the minds of consumers, tools of advertisement and marketing through the Internet, have become extremely relevant.

In the past decade or so, online advertising has become the most convenient method for businesses to advertise and market their products and services. Of course, the Internet’s ability to locate, engage and target customers is unmatchable. In this direction, Keyword advertising, such as, Google Ads[1] and Meta-Tags, Hyper- Linking, Deep- Linking, etc. are some of the significant virtual tools that a lot of companies have been using to expand their Internet presence and attract customers towards their websites. Search advertising is uniquely valuable to advertisers because it puts an advertisement in front of a consumer at the precise moment the consumer is signalling his/her interest or intent by telling the search engine what he/she is seeking: it is literally the right ad, for the right user, at the right time.

Keywords are used in programs such as Google’s Ads program, where advertisers are allowed to buy certain search terms, giving them the right to a “sponsored link” – in other words, when someone searches that keyword, Google not only provides links to the relevant sites, but also provides direct links to the “sponsoring” advertisers.[2] Metatags, on the other hand, are an element of the HTML that describe the contents of a Web page, placed near the beginning of page’s source code, and used by search engines to index pages by subject.[3] In other words, metatags are non-visible text inserted into the “head” section of HTML [HTML coding is used to construct a website] or XHTML web pages, typically to describe the content of a page, and are used by certain search engines to determine if the page is relevant to a search term. These metatags control the behaviour of search engine crawling and indexing.

Dispute Surrounding Use of Third Parties’ Marks As Keywords/Metatags:

While it is not illegal for businesses to use generic terms to expand their online presence through the above-noted tools, it is illegal/objectionable to use third parties’ trademarks as keywords/ metatags in the pursuit of higher search engine ranking or a large online customer base. However, courts around the world, are divided on this aspect. While courts in some countries view such use as illegal, courts in other countries have held that use of a mark as keywords/metatags does not amount to “use” as a trade mark and/or falls in the category of “fair use”.

In India, courts have been more inclined towards protection of rights of trademark owners against advertisers using the third parties’ marks as part of keywords and/or metatags.

For instance, in M/s DRS Logistics(P) Ltd & Anr. v/s Google India Pvt. Ltd & Ors. CS(COMM) 1/2017, the Delhi High Court held that the Indian trademarks law make it clear that infringement of a trade mark can be by way of spoken use of mark, which is different from printed or visual representation of the mark. In fact, invisible use of a mark i.e., as a metatag, will also amount to use of the mark as a trademark.

In so far as the position regarding use of a mark as a “Keyword” in the Google’s AdWord program/ similar programs is concerned, the court held that both keywords and metatags are used to show relevancy and appear on top of search engine results, causing diversion of traffic from one website to other. Thus, use of a mark as a keyword also amounts to “Use” under the Indian trade marks law. Moreover, a keyword is visible part of advertising.

Further, in the landmark case of Kapil Wadhwa v. Samsung Electronics Co. Ltd. [194 (2012) DLT 23], a Division Bench of the Delhi High Court upheld the Single Judge Bench’s decision which held that use of third-party marks as a metatag is illegal as it enables the defendant to ride on the reputation of the plaintiff.

Use of Third Parties’ Marks As Keywords and Metatags Amounts to Trademark Infringement/Passing-off:

In People Interactive (I) Pvt. Ltd. v. Gaurav Jerry, the Bombay High Court equated copying of domain names as part of meta tags to online piracy, which not only diverts internet traffic away from the plaintiff but also hijacks plaintiffs’ reputation and valuable intellectual property and amounts to passing off. The defendants in this case had, inter-alia, used the plaintiffs’ SHAADI.COM mark and its domain name www.shaadi.com, as part of the metatag in its website, www.ShaadiHiShaadi.com. While highlighting the role of metatags, the Court observed, “Dishonesty is writ large on the actions of the 1st Defendant. He has used the Plaintiffs’ mark shaadi.com as a suffix to another expression. He has attempted to misappropriate the Plaintiffs’ mark…He has, plainly, hijacked Internet traffic from the Plaintiffs’ site by a thoroughly dishonest and mala fide use of the Plaintiffs’ mark and name in the meta tags of his own rival website. The distinctive character of the Plaintiffs’ mark is thus diluted and compromised by the actions of the Defendant. The 1st Defendant’s action is nothing but online piracy. It cannot be permitted to continue.”

Recently, in the case of Upgrad Education Pvt. Ltd. Vs. Interviewbit Technologies Pvt. Ltd. & Anr.[4], the Delhi High Court granted an ad interim ex-parte injunction in favour of plaintiff restraining defendants from using the plaintiff’s mark UPGRAD, inter alia, as a keyword through the Google Ads Word Program.

The plaintiff, a registered proprietor upGrad formative marks, had its grievance related to defendants’ subscription on the Google Ads Program (as discussed above, a program which enables interested parties in redirecting traffic to their websites when searches are made by potential consumers). The plaintiff alleged that the defendants had availed the Google Ads services by biding for the Keyword “upGrad”, which is a clear infringement of the registered trade mark of the plaintiff under the Act. The court held that defendants’ use clearly amount to trade mark infringement and passed an order restraining the defendants from bidding for, adopting and using the plaintiff’s upGrad mark in any manner, as a Keyword through Google Ads or any other ad word/keyword program.

Conclusion 

From the above analysis and case law, it is clear that, in India, use of a third-party’s mark as a metatag and/or keyword, amounts to trademark infringement and/or passing off, and the Indian courts have restrained such use. The courts have also noted that such use will be mala fide and lead to consumer confusion. However, it will be interesting to see, how courts determine the intermediary liability of search engines, such as, Google, while deciding trademark infringement/passing-off cases regarding unauthorized use of trademarks as keywords/metatags.

[1] https://support.google.com/google-ads/answer/9028765

[2] https://ads.google.com/home/resources/advanced/

https://ads.google.com/intl/en_in/home/

[3] From Collins Dictionary.

[4] CS No. 610/2021

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