ISSUE XX : IP INFRINGEMENT IN THE COURSE OF ADVERTISING ON THE INTERNET

Introduction

The High Court of Madras (“Court”) passed a significant judgment on 30^th September, 2011, in the case of Consim Info Pvt. Ltd v. Google India Pvt. Ltd.¹ The Court elaborately discussed the extent to which protection can be offered to trademarks containing generic and descriptive terms apart from looking at what constitutes the concept of “fair use” of such trademarks. The present bulletin discusses the aforementioned case in view of such protection and also analyses the extent to which such an intermediary, in the present case the first Defendant (“Google”) can be held liable for such infringement.

1. Factual Matrix

1. The Plaintiff, Consim Info Pvt. Ltd. (“Consim”) is a company involved in rendering online matrimonial services, having more than 15 regional web portals. Consim had obtained registration for multiple trademarks such as “TAMILMATRIMONY” “KERALAMATRIMONY” “TELUGUMATRIMONY”, etc. People Interactive (I) Pvt. Ltd (“Defendant 2”), Info Edge India Ltd. (“Defendant 3”) and Times Business Solutions Ltd. (“Defendant 4”), (collective referred to as “Defendants”) are also in the same lines of business as Consim and are proprietors of web portals such as “Shaadi.com”, “Jeevansaathi.com” and “Simplymarry.com” respectively. The cause of action for the present suit arose when advertisements of Defendants 2 to 4 were found to be appearing under “sponsored links”² of Google.

1. Consim alleged that the Defendants had used ad words and ad texts in the keyword suggestion tool which were identical or deceptively similar to Consim’s registered trademarks. Consim alleged that this was done in order to make the Defendant’s advertisements appear whenever a web user would enter any of the 22 registered trademarks of Consim as “keywords”³ in the Google search engine.

2. Contentions

• Pursuant to the allegations made by Consim, Google defended itself by stating that as per its “adwords program”, any kind of trademark infringement was expressly prohibited and it fixed liability on the advertiser in the event any infringement took place. Google further stated that it takes all cases of infringement extremely seriously and conducts inquiries into all such allegations raised by trademark holders. Hence, it was Google’s contention that it did not allow the Defendants or anyone else, to per se use the registered trademarks of Consim.

• The Defendants contended that even when a web user searches for any of their websites, the websites of Consim come up under “sponsored links” of Google. This meant that Consim had knowingly and willingly submitted to the business model of Google and the Defendants, and effectively was attempting to seek an injunction against the Defendants and Google for something it too was guilty for. It was further submitted by the Defendants that they were not concerned with 18 out of the 22 trademarks of Consim as they were registered under a different class of goods outside the scope of the Defendant’s business activity.

• It was also put forth by the Defendants that Consim had only obtained registration of a “combination” of words and accordingly, they cannot claim monopoly over each of the constituent words of the trademark such as “tamil”, “telugu” and “matrimony”, as these are generic terms and part of the public domain. Consim however, objected that the injunction they were seeking was only to prevent the Defendant’s from using the words in the same combination, whether with a space in the middle or not, in such a manner that would create confusion and mislead prospective customers.

• It was added by the Defendants that the use of the trademarks by the Defendants was not in a trademark sense but in a descriptive sense and hence did not qualify as “use of the mark” as defined under the Trademarks Act, 1999 (“Act”). “Use of the mark” is defined under Section 2(2)(b) and 2(2)(c) of the Act. The Act specifies that “use of a mark”, shall be construed as a reference to the use of printed or other visual representation of the mark.

3. Findings of the Court

3.1 Generic or descriptive nature of the Trademarks

• The Court held that even though trademarks containing descriptive terms are generally not given protection, the courts in the past have held that if the descriptive terms have by prolonged usage, developed a “secondary meaning” then they are entitled to protection⁴ as held in. Specifically with respect to the facts of the present case, the Court held that if protection is granted to the trademarks of “TAMILMATRIMONY” “TELUGUMATRIMONY” etc, then the Defendants would be left with a very limited choice of words to advertise their products. This is because a word like “matrimony” has very few synonyms and a word like “tamil” or “telugu” has none. Hence, the court allowed the contention of the Defendants to this effect.

• However the contention of the Defendants that Consim cannot claim monopoly over each one of the constituted words was dismissed by the Court on the ground that Consim had only prayed for an injunction where the words were used in “combination” with each other and not independently.

4 Reddaway vs Banhan(1896 AC 199). In this case, the court ruled that in spite of the fact that the term “camel hair belting” was made up of descriptive terms, the same was entitled to protection

3.2. Use of the mark

• With respect to the other contention that their use of words was not in the trademark sense but in a descriptive sense and hence did not qualify as “use of the mark”, two questions came up for consideration-

• Whether the Defendants were using the trademarks in the course of ordinary trade, by using them in advertisements, and

• Whether, the use of such a generic term would constitute an infringement under the act.

• In order to determine the aforementioned issues, the Court relied on the case of Shell Company Australia Ltd. v. Esso Standard Oil (Australia) Ltd.,⁵ where the issue was whether the use of an animated oil-drop in an advertisement of the defendant, which was a registered trademark of the plaintiff, amounted to an infringement. The High Court of Australia held that “the use of a mark in an advertisement of goods is a use in the course of trade and is of course a use in relation to the goods advertised”.

• To determine whether an unauthorized use by itself is illegal, the Court concluded that the use of a mark can be a permitted fair use if the product in question cannot be identifiable without use of the mark. To explain the concept of fair use, the Court considered the case of J.K. Harris & Co. v. Kassel⁶ where Kassel had put up a lot of negative information about Harris on his website. As a result, whenever a web user would search for Harris’ name, Kassel’s website came up. The website was designed in such a way that it would prominently feature in the search engine results of those seeking information on Harris. In this case, the United States District Court of Northern California held that the use could not be fair since there was increased “keyword” density of the name Harris, larger font size than necessary was used and tags were created on every sentence to increase the possibility of Kassel’s website appearing as a search result.

• However, in the present case, the only way the Defendants could target their audience for the advertisements was by adding the nature of services or the community of the consumers of the product to the adtext or adwords. As seen above, the marks using the description of the nature of services (i.e. matrimony) and using the description of the community (i.e. telegu, tamil, etc), have very few alternatives. The Court recognized that a web user would also be naturally inclined to narrow his search by mentioning the type of service he was looking for and may further narrow his search within a specific community. The larger issue in the Court’s opinion was that if such trademarks are granted protection, one cannot critique the product or service in a bonafide manner. This is because even a person who wants to read genuine reviews of such a product would be inclined to type the product’s name in the online search engine Accordingly, if the critic is not allowed to use the

name of the product as “meta-tags”⁷ by virtue of it being a registered trademark, then the web user would have a very difficult time finding online reviews about numerous products. In light of the above, the Court concluded that there was no infringement under the Act. The Court also put a caveat that if the trademarks in question were not descriptive, the use of the words by the Defendants would amount to an infringement.

• Additionally, the Court relied on a number of cases to conclude that an unauthorized use of a trademark can be held to be in fair use where:

• The mark was used in a descriptive sense,
• The defendant’s website was critical of the plaintiff’s product or services,
• The defendant had a legitimate business relationship with the plaintiff, or
• The defendant’s fame or notoriety was due to its affiliation with the plaintiff.

3.3. Remedy under Internet Corporation for Assigned Names and Numbers (“ICANN”)

• The Defendants contended that Consim ought to have sought the remedy provided under the Uniform Domain Names Dispute Resolution Policy of the ICANN and that this Court does not have jurisdiction over the matter. ICANN is an organization designated to carry on the administration of Internet Protocol and issues of space allocation and domain name management on the internet.

• The Court looked into the Uniform Dispute Resolution Procedure (“UDRP”) which specifically stated that all disputes which are not brought pursuant to the mandatory administrative proceeding provisions shall be resolved through courts, arbitrations or other proceedings. Based on this, the Court concluded that the forum referred to under the UDRP was a non-exclusive forum and hence there was no bar on jurisdiction. Accordingly, the Court held that it will have jurisdiction with respect to any dispute under the UDRP, even if the court was approached by bypassing ICANN.

Conclusion

In light of the above mentioned arguments, the Court held that Consim was not eligible for any injunctive relief since it did not pass the triple test of (i) prima facie case (ii) balance of convenience and (iii) irreparable hardship. The decision of the Court was greatly influenced by the fact that the trademarks in dispute were generic in nature. The Court also observed that an intermediary, Google, cannot be made liable for infringement arising out of a third party’s actions since it is not possible to always check every advertisement posted online. However, this observation will be subject to section 3(4) of the Information Technology (Intermediaries Guidelines) Rules, 2011. This section mandates intermediaries, who receive a complaint of infringement, to act upon it within thirty six hours of receipt, failing which they may be held liable.

To conclude, the Court has highlighted some key aspects with respect to trademarks used on a virtual platform and the extent to which protection can be accorded to them in view of the number and diverse range of users that access the internet.

This bulletin is prepared by Anu Karthik (under the supervision of Dhruv Suri, Associate), a 5^th year law student at Christ University, Bangalore who interned at PSA Chennai.

1 2011(45)PTC575(Mad)

2 Sponsored links contain advertisements which Google will display adjacent to or above the organic results, when a keyword query matches an advertisers keyword list

3 A word used by a search engine in its search for relevant web pages

5 (1961) 1 BIPR 523

6 253 F.Supp.2d 1120 (N.D. Cal. 2003)

7 Meta-tags provide information such as keywords relevant to the page, a description of the page, etc., which search engines use when they index web pages