Google can’t claim safe harbour if use of trademarks in Ads Programme violates trade mark: HC

Use of trademarks as keywords by Google in its Ads Programme does amount to “use” under the intellectual property law and, in case of infringement, it cannot claim benefit of “safe harbour” from liability under the law, the Delhi High Court has said.

The court’s observations came on an appeal by Google against the order of a single judge bench on a lawsuit by Agarwal Packers and Movers Ltd alleging that the use of its trademark and its variations as keywords on Ads Programme resulted in the diversion of traffic from the website of the plaintiff to that of the advertiser.

A bench headed by Justice Vibhu Bakhru said prima facie, Google is an “active participant” in use of the trademarks of proprietors and it was difficult to accept that the search engine would be exempted under Section 79 of the Information Technology (IT) Act from the liability of infringement of trademarks by its use of the trademarks as keywords in the Ads Programme.

“Google is not a passive intermediary but runs an advertisement business, of which it has pervasive control. Merely because the said business is run online and is dovetailed with its service as an intermediary, does not entitle Google to the benefit of Section 79(1) of the IT (Information Technology) Act, in so far as the Ads Programme is concerned,” the bench, also comprising Justice Amit Mahajan, said in a recent order.

“Prima facie, we are unable to accept the view that use of trademarks as keywords in the Ads Programme is use only by the advertisers and not Google… It is difficult to accept that whilst Google, in a manner of speaking, sells keywords for use in its proprietary software; it does not use it,” the court said.

Google argued that being an intermediary in relation to the Ads Programme, it was entitled to safe harbour and if an advertisement was violative of the trade marks Act, the advertiser should be held liable.

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“We find no infirmity with conclusion (of single judge) and hold that Google’s use of the trademarks as keywords does amount to use in advertising under the TM (trade mark) Act. We also find no infirmity with the conclusion of the learned Single Judge that if it is found that Google has infringed plaintiff’s trademark or is contributorily liable for the same, the benefit of safe harbour under Section 79(1) of the IT Act would not be available to it,” the court said.

The court observed that Ads Programme is Google’s commercial venture and the use of a trademark as keywords for display of advertisements in respect of goods or services clearly amounts to use of the trademark in advertising within the meaning of Section 29(6) of the trade mark Act.

It nonetheless said there was “nothing illegal in Google using trademarks as keywords for display of advertisements if there is no confusion that the links or Ads displayed are not associated or related” to the plaintiff.

The facts of each case are required to be considered in determining whether in a given case use of a trademark as a keyword amounts to infringement under the trade mark Act, the court said.

It also said its views are “prima facie and solely for considering the present appeals”.

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