TaxTMI 
TaxTMI 
2010 (9) TMI 1223
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....BACKGROUND OF THE LITIGATION ON HAND 2. The case of the plaintiff, as reflected in the plaint, is that it is a company rendering online matrimonial services, using internet as a vehicle/platform. The plaintiff has several matrimonial web portals including 15 regional portals, catering to the needs of millions of Indians living in India and outside. Mr.Janakiraman Murugavel, promotor/ founder Director of the plaintiff adopted a host of trademarks and obtained registration thereof. The plaintiff-company also adopted a few trademarks and obtained registration thereof in its own name. By virtue of a Deed of Assignment dated 16.6.2006, the trademarks registered in the name of Mr.J.Murugavel were assigned in favour of the company by name Bharat Matrimony.Com Pvt. Ltd. In the year 2008, the name of the company was changed to Consim Info Pvt. Ltd., which is the plaintiff herein. 3. Therefore, by virtue of the Deed of Assignment and by virtue of the registrations made in its own name, the plaintiff-company has become the Proprietor of the registered trademarks, listed in column No.3 of the following table, with the registration numbers given against them each in column No.2 thereof, i....
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....ers, franchisees, licensees and/or all other persons acting on their behalf from in any manner diverting the plaintiff's business to its competitor's by using first defendant's search engine in which the plaintiff's trademarks and domain names BHARATMATRIMONY.COM, TAMILMATRIMONY .COM, etc., a list whereof is annexed hereto and marked as Annexure-A and/or its variants, by using as Adwords, Keyword Suggestion Tool, as a keyword for the internet search and/or as meta tags and thereby passing off and enabling others to pass off the business and services of the plaintiff's competitors including defendants 2 to 4 as that of the plaintiff or in any other manner whatsoever; (c) A direction to the defendants to surrender to the plaintiff for destruction, of all compact discs, master copy, advertising materials, pamphlets, brochures, etc., which bears the plaintiff's registered trademarks and/or any other variants which are phonetically and/or deceptively identical and/or similar to the plaintiff's registered trademarks or in any other form whatsoever; (d) Award damages of Rs. 10,05,000/- for infringing and/or for passing off and/or for enabling ....
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....on of the said interim orders, the plaintiff moved an application in A.No.6001 of 2009 under Order XXXIX, Rule 2-A CPC, for punishing the first defendant by attaching its properties. 8. While opposing the applications for injunction, the defendants 2 to 4 raised preliminary objections that the plaint contained incorrect and misleading statements. The plaint as it was originally filed, proceeded on the basis that the plaintiff is the registered Proprietor of all the trademarks mentioned in the above table. But actually, it was Mr.Janakiraman Murugavel who was the registered Proprietor of a majority of those trademarks. The plaintiff was the registered Proprietor of only a few marks. Therefore, the second defendant People Interactive (I) Pvt. Ltd., came up with two applications in A.Nos.6382 and 6383 of 2009, seeking a stay of further proceedings in the suit and also seeking a rejection of the plaint under Order VII, Rule 11, CPC. Similarly, the fourth defendant Times Business Solutions Ltd., also came up with an application in A.No.6380 of 2009, seeking rejection of the plaint under Order VII, Rule 11, CPC. 9. In the meantime, realising the mistake committed in the pleadings, ....
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....d Google Inc, as the 5th defendant in the suit, on the ground that the first defendant claimed in their counter affidavit to be just a wholly owned subsidiary of Google Inc., USA and that therefore, it is a necessary and proper party, for the purpose of a binding adjudication. 13. Thus, there are actually 7 applications on hand viz., (i) O.A.Nos.977 and 978 of 2009 filed by the plaintiff for interim orders of injunction, (ii) A.No.6001 of 2009 filed by the plaintiff for punishing the first defendant for violating the interim orders. (iii) A.No.6380 of 2009 filed by the fourth defendant seeking rejection of the plaint. (iv) A.Nos.6382 and 6383 of 2009 filed by the second defendant seeking rejection of the plaint and stay of further proceedings and (v) A.No.247 of 2010 filed by the plaintiff for impleading Google Inc., USA as the 5th defendant in the suit. 14. All the above applications were taken up together and I have heard Mr.T.V.Ramanujun, learned Senior Counsel appearing on behalf of Mr.A.A.Mohan, counsel for the plaintiff, Mr.P.S.Raman, learned Senior Counsel appearing for the first defendant, Mr.V....
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.... charge the first defendant with indirect or contributory infringement. 18. There is no dispute about the fact that whenever any of the registered trademarks of the plaintiff such as BHARATMATRIMONY, TAMIL MATRIMONY etc., or the words constituting these trademarks such as BHARAT, TAMIL, MATRIMONY etc., are typed by a surfer searching for results, the search engine google displays information about the plaintiff's websites, on the left hand side, as natural/organic results. But simultaneously the search engine also displays the advertisements of the respondents 2 to 4 on the right hand side, as "sponsored links". The objection of the plaintiff is not per se to the very display of advertisements of its competitors as sponsored links. Their objection is that the words used by the respondents 2 to 4 in the ad title and ad text of the advertisements in the sponsored links, happen to be either the registered trademarks of the plaintiff or deceptively similar versions thereof. 19. For instance, when a websurfer types the word BHARAT MATRIMONY in the box appearing on the home page of the search engine, the links to the sites of the defendants 2 to 4 also appear on the right hand ....
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.... trademarks of the plaintiff or deceptively similar variations thereof. This, according to the plaintiff, amounted to infringement and hence the suit. STAND TAKEN BY FIRST DEFENDANT 22. The response of the first defendant to the grievance of the plaintiff is that it has an "adwords program" which allows advertisers to create and run advertisements through a simple process. The advertisements comprise of short commercial messages with an indication of the link to the advertiser's site. These links are presented under the heading "sponsored links" either at the top of the page against a yellow background or on the right hand side separated by a line from the organic results. Apart from these links, banner advertisements or pop-up advertisements also appear. However, the adwords program of the first defendant fixes responsibility upon the advertiser, under clause 4 of an Agreement normally entered into with the search engine, not to advertise anything illegal nor violate or encourage violation of any applicable laws or third party rights including intellectual property rights. 23. According to the first defendant, the advertisements on their website are governed by a defi....
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....nded in its counter affidavit that even when a search is made for the websites of the defendants 2, 3 or 4, the link to the plaintiff's website appears as a sponsored link, showing thereby that what the plaintiff seeks to injunct, is something which the plaintiff himself is guilty of. Therefore, the plaintiff cannot be allowed to injunct others from doing what they themselves are doing in the same search engine. The second defendant has also given details of the prior litigations between them and the plaintiff, to highlight the trade rivalry and to show that similar issues form the subject matter of an earlier suit, about which no whisper is made in the plaint. It is the further contention of the second defendant that since 18 out of the 22 trademarks claimed to have been registered are in relation to goods in Class 16 and also since Class 16 relates to paper, cardboard, printed matter etc., with which the second defendant is not concerned, there was no question of infringement or passing off. Moreover, the plaintiff has not obtained registration of the words "tamil", "telugu", "matrimony" etc., individually and hence the use of these generic or descriptive words would not amou....
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....sing, which is nothing but a right of free commercial speech. CONTENTIONS OF THE FOURTH DEFENDANT 28. In their counter affidavit, the fourth defendant has resisted the plea for injunction, on similar grounds as the other defendants have done. In addition, they have also contended that a search engine is like a directory which displays the links to different websites that contain words which are typed in by the websurfer and hence the use of the words contained in such directory cannot be prohibited. The very registration of the trademarks in question in favour of the plaintiff by the Trademark Registry is contrary to law under Section 9(1)(b) of the Trade Marks Act, 1999. There is also no concept, according to the fourth defendant, of "secondary meaning" in the case of domain name protection. Moreover, the level of consumer sophistication is different in so far as internet is concerned and hence the likelihood of confusion cannot be treated as the same. According to the fourth defendant, the expression "use of a mark" is defined in Section 2(2)(b) and 2(2)(c) of the Trade Marks Act, 1999 and coupled with the provisions of Section 29(6), the Act does not confer protection agai....
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.... stand taken by the first defendant that they follow a policy for protection of trade marks. The defendants 2 to 4 have also made it clear that they do not and would not use in their advertisements, the registered trade marks of the plaintiffs such as BHARATMATRIMONY etc., though the defendants claim a right to use the independent words BHARAT, MATRIMONY etc., separately. Therefore, two things are very clear viz., (i) that the defendants do not claim a right to use the registered trade marks of the plaintiffs as such in their advertisements and (ii) that in so far as the usage of the independent words (which constitute the registered trade marks of the plaintiffs) are concerned, the defendants assert that the plaintiffs have no right to injunct them. 30. In view of the above, there is fortunately less dispute on facts and more dispute on questions of law, pure and simple and is perhaps raised in an Indian Court for the first time in the history of the internet age. Hence, it may be useful to have a prelude about the manner in which the internet operates and the search engines function. The prelude has become necessary more for the purpose of distinguishing routine trade mark ....
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....ta Vista, Northern Light, Yahoo etc. Google, the first defendant herein, is one such search engine which has a large database and which uses a system of ranking hits by relevancy (popularity). The search engines find out the popularity of a site through the "cookies" planted in the computers. These cookies actually indicate the sites visited by a person and they map the areas of interest of a person browsing the net. As a matter of fact, whether one leaves footprints on the sands of time or not, a websurfer, without even realising what is happening behind him, leaves a trail behind, whenever he visits a site. This enables the operators even to profile the surfing habits of browsers. So far, this profiling has been used predominantly for the purpose of advertising. It is also possible to block the installation of cookies or clean up the surfing history, in order to protect privacy. Each search engine has its own quirks, which, if not properly learnt, would lead to a lot of time being wasted, by weeding through poor results. The search through these search engines prove to be fruitful, only when one learns how to create a phrase, how to search on multiple phrases and how to exclude c....
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.... the sponsored links. The plaintiff as well as the respondents 2 to 4 advertise their services on the sponsored links by paying necessary charges to google. METHOD OF ADVERTISING IN THE SPONSORED LINKS: 37. The Internet Search Engine "Google" was estimated to index about 8 billion web pages and process over 200 million searches per day (statistics as of 2007). Due to the enormity of the number of visitors to their site, what was originally developed as a huge store house of information, slowly turned into a huge warehouse/supermarket of products and services that could be bought and sold or hired. The moment it was found that the Search Engine provided a huge meeting place, like a supermarket or mall or a Trade Fair Centre, of unimaginable size and proportion, in a virtual world, connecting the world of trade and commerce with the world of consumers, its potential as an online advertising agency was realised. This led to all Search Engines, selling space for those who wished to market their products and services, so that they could host advertisements in the space so sold or let on hire by the Search Engine. Recent newspaper reports suggested that the revenue from advertising....
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....specific words or expressions, called "keywords", the advertisers use a host of keywords, as their adwords, so that the link to their own site would appear as a sponsored link, whenever a search is made by the user, using the very same word or a variation thereof. 41. In order to enable the advertisers to select appropriate adwords, so that the links to their sites are advertised in appropriate locations, search engines themselves guide the advertisers, in the selection of adwords. While doing so, search engines provide an unlimited choice to the advertisers, to choose from millions and millions of words. If the keyword selected by the advertiser is not selected by anybody else, the search engine makes it available to the advertiser at a fixed rate. However, if the keyword selected by the advertiser is already in use by others, the advertisers who vie with one another are asked to bid upon a basic price fixed by the search engine. Though all the advertisers are allowed to use the same keyword as their adword, the highest bidder is given the top slot in the list of sponsored links. Therefore, in essence, an advertiser is entitled to choose any number of keywords for advertising h....
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....ed in terms of decimal numbers, impossible of memorising, a system of labelling the IP addresses with names known as domain names was developed. This is how the Domain Name System (DNS) got developed. In simple terms, the Domain Name System serves to translate an address expressed in numerals into an address expressed in words. The Interim Report of WIPO Internet Domain Name Process on "The Management of Internet Names and Addresses: Intellectual Property Issues" issued in 1998, points out that DNS serves the central function of facilitating users' ability to navigate the internet. A domain name is the human-friendly address of a computer that is usually in a form which is easy to remember or identify. When an internet user types a domain name into a software application such as a browser program, the software sends the name to one of a number of Domain Name Server Computers. It searches its data base for the IP address that matches the domain name and then returns the IP address to the requesting software application. Upon receipt of the IP address, a communication is established with the server. 43. Therefore, domain names are selected by the servers in such a manner as to....
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....ue to this unique problem, persons with the same name in several jurisdictions may stake competing claims over the same name chosen as a trademark or as a domain name by a server. The resolution of such conflicts has thrown serious challenges to the legal systems all over the globe, in view of the fact that even if there is no actual infringement, there is always the danger of trademark dilution. However, serious attempts have been made in the form of legislations such as US Federal Trademark Dilution Act, 1995 and Anti-Cybersquatting Consumer Protection Act, 1999, to protect famous marks from getting diluted. 46. Interestingly, the cases which appeared in the early stages of the internet age, related to the ordinary household names, getting registered as domain names and the individuals bearing such names and registering them, staking claims of infringement against leading multinationals. One of the earliest cases that came up before the German Supreme Court of Justice was in Deutsche Shell Gmbh vs. Andreas Shell. Though the individual by name Andreas Shell had obtained registration of his name, the Court decided in favour of the company on the ground that Deutsche Shell was fa....
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.... the said paper, the SCT took note of the fact that practices such as unauthorised use of trade marks as key words by search engine operators constituted clear challenges to the traditional application of trade mark law. Annexure I to the document contains a summary of challenges regarding the use of trade marks on the internet as shown in a selective sample of cases across different jurisdictions, such as USA, UK, Argentina, China, India, Israel etc., Interestingly, the report refers to the contradictory views prevailing in China with regard to the legality of key word advertisement in the following words: "In China, two key word advertising law suits, one initiated against Google China and the other against Baidu, had yielded different outcomes. In Google vs. Guang Dong Ganyi Electrical Appliances Co. Limited, the plaintiff's registered trade mark NEPFON was sold by Google as a key word to a competitor. The Court rules that the competitor in question had committed trade mark infringement. However, Google itself was not held jointly liable for trade mark infringement. The Court determined that although the use of a key word to trigger sponsored links was a form of adv....
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....ismissed the suit. 53. However, other European courts have reached different conclusions. In Nemetschek AG vs. Google, LG Munich, No.33 O 21461/03 (Feb. 12, 2003), the Court held that an Internet search engine was not liable for direct or indirect trademark infringement when an advertiser placed ads based on trademarked keywords. And in Intershop comms. vs. Tietz, LG Hamburg, No.315 O 646/03 (Feb. 25, 2004), the same Court that decided Metaspinner found that the advertiser had not engaged in trademark use by selecting a trademarked keyword. 54. In DaimlerChrysler AG vs. Bloon {315 F.3d 932-2003}, the 8th Circuit held that a Tele Communications Company did not use the term "Mercedes" in a trademark sense merely by licensing a vanity phone number that spelled "1-800-Mercedes" to Mercedes dealers. The Court reasoned that the dealers themselves might engage in trademark use by advertising the phone number or otherwise presenting it as a brand to the public, but the company selling the phone number did not. 55. In Interactive Prods.Corp. vs. A2Z Mobile Office Solutions Inc. {326 F.3d 687-2003}, the 6th Circuit also took the same view, holding that if the defendants were using t....
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....39;s trademark in front of one's store. Elaborating this illustration, the 9th Circuit Court said, "Using another's trademark in one's meta-tags is much like posting a sign with another's trademark in front of one's store. Suppose West Coast's competitor (say 'Blockbuster') puts up a billboard on a highway reading 'West Coast Video: 2 miles ahead at Exit 7' where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast's store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by West Coast. Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappro....
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....phor used in Brookfield, the Court held in Playboy that in that case, the scenario was more akin to a driver pulling off the freeway in response to a sign that reads "fast food burgers" to find a well known fast food burger restaurant, next to which stands a bill board reading "better burgers: 1 block further". The Court also expressed concern that a finding of infringement might result in the loss of otherwise generic words from the English language at the expense of competitor need. The Court further pointed out that by seeking a prohibition on all advertisements that appear in response to the search words "playboy" and "playmate", the plaintiff would effectively monopolise the use of these words on the internet and that the same violated the First Amendment Rights of (a) Excite and Netscape (b) other trademark holders of Playboy and Playmate, and also (c) the members of the public who conduct internet searches. The Court pointed out that "internet is a unique and wholly new medium of worldwide human communication and Courts should be mindful of the difficulty of applying well established doctrines to electronic commerce". 63. Three defences were asserted in Playboy Enterprise....
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....each. Once visitors reached the page, there is no way they could have been confused given the very different title and the obviously parodic message of the page. Nonetheless, the Court found the instant of confusion created before visitors saw the content of the website to be actionable. 66. But, in Bihari vs. Gross {119 F.Supp.2d 309}, the Court said that the use of the highway bill board metaphor is not the best analogy to a metatag on the internet and that the harm caused by a misleading bill board on the highway is difficult to correct, while on the information super highway, resuming one's search for the correct website is relatively simple involving only one click of the mouse and a few seconds delay. In Bihari, the Court noted that the operator of internet website using the plaintiff's mark is merely providing a means of cataloging the plaintiff's site. 67. In Reed Executive plc and Another vs. Reed Business Information Ltd and Others {(2004) EWCA (Civ) 159}, a dispute arose between a large publishing house and an employment agency. The employment agency had its mark "Reed" registered as a trademark in 1986 and it also started advertising job vacancies on i....
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....use of the word "Reed" by Yahoo at the instance of RBI properly amounted to a "use in the course of trade" as to which, as I say, I reserve my opinion. It may be that an invisible use of this sort is not use at all for the purposes of this trade mark legislation the computers who "read" sets of letters merely "look for" patterns of 0s and 1s there is no meaning being conveyed to anyone no "sign". I can conveniently deal with passing off here too. The Judge held that there was passing off by substitution. I cannot agree. Passing off by substitution is where a trader having accepted an order for brand X supplies brand Y in such circumstances that the customer is unlikelly to notice the substitution and is thus misled, see e.g., Lever Bros vs. Mabro (1912) 29 RPC 225. That is a hundred miles from a consumer conducting a search under the name Reed and finding a banner which on its face has no connection with his search term. Again, if he clicks through and finds misleading material on the site, there could be passing off but that would be as result of what is on the site, not the Yahoo use." 68. In SOCIETE DES HOTELS MERIDIEN vs. SARL GOOGLE FRANCE {No.R.G....
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....on, unfair competition and tortious interference with prospective business advantage. The defendants to the counter claim (Google and others) brought motions to dismiss American Blind's counter claims and third party claims. By an order dated 30.3.2005, the United States District Court for the Northern District of California, San Jose Division, allowed the motion only in so far as American Blind's claim of tortious interference with prospective business advantage, but disallowed the motion as to the other claims made by American Blind. It was found by the Court in that case that through adwords, Google had sold to American Blind's competitors, certain keywords, comprised in whole or in part, of the American Blind's marks. Moreover, through its adwords keyword suggestion feature, Google was found to have actively and deliberately encouraged American Blind's competitors to purchase as keywords, American Blind's marks as well as every conceivable iteration of those marks. Two things were brought to the notice of the Court in that case viz., (i) that Google has the technological capacity to block the purchase of keywords and (ii) that as a matter of fact, Google....
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....ble for the resulting acts of infringement by third parties using the device, regardless of the device's lawful uses". 73. The Court distinguished the decision in Sony, on the basis of patent law's traditional staple article of commerce doctrine, which absolved the equivocal conduct of selling an item with lawful and unlawful uses and limited liability to instances of more acute fault. The Court held that when a widely shared service or product is used to commit infringement, it may be impossible to enforce rights in the protected work effectively against all direct infringers, the only practical alternative being to go against the distributor of the copying device for secondary liability on a theory of contributory or vicarious infringement. The Court also pointed out that contributory infringement arises when a direct infringement is induced or encouraged intentionally. A vicarious infringement arises by profiting from direct infringement while declining to exercise a right to stop or limit it. 74. Pointing out that the rule on inducement of infringement in early cases is no different today, the Court held that evidence of active steps taken to encourage direct infr....
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....s not communicate it to the public, is analogous to a individual's private thoughts about a trademark. Such conduct simply does not violate the Lanham Act, which is concerned with the use of trademarks in connection with the sale of goods or services in a manner likely to lead to consumer confusion as to the source of such goods or services. A fortiori, a defendant who does not sell, but merely uses internally within his own company, the trademarked product of another, is not a trademark infringer or unfair competitor by virtue of such use. 77. In EDINA REALTY, INC. vs. THE MLSONLINE.COM {0:04-cv-04371-JRT-FLN}, the plaintiff was the largest real estate brokerage firm. The defendant was also a full service real estate brokerage firm, directly competing with the plaintiff. The plaintiff had obtained registration of the trademark "EDINA REALTY" and also established their presence in the internet with the website address as "www.edinarealty.com". The grievance of the plaintiff was that the defendant purchased the keywords Edina Realty, Edina Reality, EdinaReality.com, EdinaRealty, etc., from the search engines google and yahoo. By purchasing these search terms, the defendant ma....
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....urce or sponsorship. Rather, the ZOCOR mark is "used" only in the sense that a computer user's search of the keyword "Zocor" will trigger the display of sponsored links to defendants' websites. This internal use of the mark "Zocor" as a keyword to trigger the display of sponsored links is not use of the mark in a trademark sense." 82. In Rescuecom Corp. vs. Google Inc. {Docket No.06-4881-cv}, Rescuecom, sued Google for trademark infringement, false designation of origin and dilution under the Lanham Act. The District Court for the Northern District of New York dismissed the action invoking Rule 12(b)(6) of the Federal Rules of Civil Procedure (equivalent to the provision for rejection of plaint under Order VII, Rule 11, CPC 1908) on the ground that Google did not use Rescuecom's trademark in commerce within the meaning of the Lanham Act. On appeal, the Second Circuit vacated the order of the District Judge and remanded the matter for further proceedings. 83. In that case, the plaintiff was a national computer service franchising company that offered on-site computer services and sales. The name "Rescuecom" was a registered federal trademark ever since 1998 and the....
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.... generic or not, was spelt out by the Court in the following lines:- "In determining whether a term is generic, we have often relied upon the "who-are-you/what-are-you" test: "A mark answers the buyer's questions "Who are you?' 'Where do you come from?' 'Who vouches for you?' But the generic name of the product answers the question 'What are you?' ". Under this test, "if the primary significance of the trademark is to describe the type of product rather than the producer, the trademark is a generic term and cannot be a valid trademark." 86. Holding that though at times generic terms are also referred to as "common descriptive" names, the Court held that if it is so feeble as to be perilously close to the generic line, it cannot be a valid trademark, unless it had acquired strong secondary meaning. 87. In Victor Andrew Wilson vs. Yahoo U.K. and Another {(2008) EWHC 361 (Ch.)}, a person who carried on business as a mobile caterer in the name and style of "Mr.Spicy", selling Afro-Caribbean and Halal South Asian Snacks from a van and a trailer, sued the search engine "Yahoo U.K." and another company which provided sponsored search en....
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....s proprietor of the Community Trade Mark. The same comments apply to the reference to Pricegrabber." 91. After pointing out that the search engine yahoo can make available any word, probably in any language, the Court considered the issue of use of the mark in relation to the goods or services rendered by Yahoo and held as follows:- "It seems to me that this is a million miles away from Yahoo using Mr.Wilson's mark in relation to goods or services which are identical to those protected by the mark or which are similar to those protected by the mark. What Yahoo are saying is they are offering services of their own which are of a radically different character and they are saying to the public generally, who see the screen on conducting a search, that the public generally can place any advertisement for anything the public likes on the Yahoo page and that advertisement will come up and it will come up in particular when the words "Mr.Spicy" are put in. But that does not appear to me to be even arguably an infringement of anything in Article 9." 92. In L' Oreal S.A and others vs. e-Bay International AG and others {2009 EWHC 1094 (Ch.)}, a dispute arose between L&....
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....t the consent of the proprietor of the trademark; (iv) it must be of a sign which is identical to the trademark; (v) it must be in relation to goods or services which are identical to those for which the trademark is registered; and (vi) it must affect or be liable to affect the functions of the trademark, in particular its essential function of guaranteeing to consumers the origin of the goods or services." 96. On the question as to whether the online service provider e-Bay was jointly liable for the infringement committed by the others, Justice Arnold held (in para 344 of the judgment) that since Articles 5 to 7 of the Trade Marks Directive embody only the rules relating to infringement of the rights conferred by registration of a mark within the Community, the question of accessory liability was only a matter of national law. However, he pointed out that in England and Wales, accessory liability even for statutory torts such as trademark infringement is governed by the common law and in particular, the law relating to joint tortfeasorship. 97. e-Bay Europe were alleged to have become joint tortfeasors, in two ways viz., (i) by procurement and/or ....
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....dy under Article 11 of the Enforcement Directive. 101. While considering this question, the attention of the learned Judge was invited to three decisions of the Bundesgerichtshof (Federal Court of Justice of Germany known by its acronym "BGH"). Those decisions are popularly known as Internet Auction I, Internet Auction II and Internet Auction III cases. The first case related to a complaint by Rolex SA (manufacturers of Rolex watches) against another company which provided an online auction sale service, in which imitation Rolex watches were offered for sale in website. Though the claim for damages was dismissed, Bundesgerichtshof sustained the claim for injunction on the basis of the German legal principle of Storerhaftung, which means "disturber" or "interferer" liability. This act of balancing (granting an injunction but dismissing the claim for damages) was hailed by Prof. Dr. Joachim Bornkamm, President of the First Civil Chamber, as "one which strikes a fair balance between intellectual property rights and the interests of host providers". He pointed out that such an approach, on the one hand, does not impose an unreasonable burden on the provider, but on the other hand ma....
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....s stipulations in the vendor manual (an agreement between Video Professor and Amazon) whereby Video Professor granted a non exclusive, world wide, perpetual and royalty free license to Amazon to use all trade marks in the product information. 106. In the case of Organizacion Veraz vs. Open Discovery, (Which arose in Argentina and about which there is a reference in the paper submitted by SCT of WIPO) the plaintiff, a financial services company, sued the defendant for purchasing its mark VERAZ as a keyword. The Court held that the defendant had engaged in an unauthorized use in commerce of the plaintiff's mark with the aim of attracting consumers that were interested in the plaintiff's services. According to the Court, this use could cause confusion or mistake as to the origin of the services or could suggest an association between the two companies. The Court held that in these circumstances, the trademark holder could prevent the unauthorized use of its mark by a competitor. 107. The Australian Competition and Consumer Commission (ACCC) brought an action against Google and a 'classifieds' website named "Trading Post" because the latter purchased keywords cons....
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....ew questions, which read as follows:- "What is the ground for preventing such advertising in a market that values free competition and praises the freedom to choose and practice occupation? Would hanging advertisement of K's business nearby M's shop or even opening a shoe business in close proximity, violate trade mark rights of 'M' ? Would it be reasonable to argue that such advertising, which lacks any mentioning of M's trade mark, is likely to confuse consumers or that it dilutes the reputation of M? Is there any false description involved? Is it an unreasonable prevention of access or burdening that could amount to finding a tort of unfair competition or deception ?" The court answered all the above questions in the negative and held that the same which applied to the physical world, should be true of even the virtual shopping mall in google. Nevertheless, the court held that the use of the trade marks as between computers cannot be said to fall outside the scope of "use" within the meaning of trademark law. However, the court went on to hold as follows:- "even if sponsored links may be considered as conferring some advantage on Responde....
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....prietors of the French trademarks "bourse des vols", "bourse des voyages" and "BDV". Their grievance was that entering these trademarks into the search engine triggered the display of ads for sites offering identical or similar products and that Google offered advertisers, the possibility of selecting keywords which corresponded to these trademarks. Google was found guilty of trademark infringement by the Regional Court, Nanterre (Tribunal de grande instance de Nanterre). The Appellate Court (Cour d'appel de Versailles) found Google guilty of being an accessory to trademark infringement. The further appeal filed by Google was referred by Cour de Cassation, for a preliminary ruling on two questions. (c) The third reference arose out of proceedings between Google, Mr.Raboin and Tiger SARL on the one hand and Mr.Thonet and Centre national de recherche en relations humaines SARL, on the other hand. The complainant was the holder of a license for the French trademark "Eurochallenges". Their grievance was that if the browser keyed in the trademark of the complainant, the search engine displayed advertisements for sites offering identical or similar products and that Go....
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....ion asks, in essence, whether an internet referencing service provider which stores, as a keyword, a sign corresponding to a reputable trade mark and organises the display of ads on the basis of that keyword uses that sign in a way which the proprietor of that mark is entitled to prohibit under Article 5(2) of Directive 89/104 or, in the case where that sign is identical with a reputable Community trade mark, under Article 9(1)(c) of Regulation No.40/94." The third part of the discussion was on the following questions:- "By its third question in Case C-236/08, its second question in Case C-237/08 and its third question in Case C-238/08, the Cour de Cassation asks, in essence, whether Article 14 of Directive 2000/31 is to be interpreted as meaning that an internet referencing service constitutes an information society service consisting in the storage of information supplied by the advertiser, with the result that that information is the subject of 'hosting' within the meaning of that article and that the referencing service provider therefore cannot be held liable prior to its being informed of the unlawful conduct of that advertiser." 114. Since the fi....
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....rk." 115. After considering the scope of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No.40/94 in relation to Community trademarks, the Court held that the proprietor of a trademark is entitled to prohibit a third party from using, without the proprietor's consent, a sign identical with that trademark, when that use is in the course of trade, is in relation to goods or services which are identical with or similar to those for which that trade mark is registered and affects or is liable to affect the functions of the trademark. [A Community Trademark is one, registered with the European Community Trademark Office, located at Alicante, Spain. It was created on the approval of the European Council of Ministers, for the purpose of enabling single trademark registration that will provide protection to trademarks from infringement in all European Community nations] 116. On the question as to when the use of a trademark constitutes "use in the course of trade", the Court held that "the use of a sign identical with a trademark constitutes use in the course of trade, where it occurs in the context of commercial activity with a view to economic advantage an....
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....he ECJ held that since a sign identical with a trademark is selected as a keyword by a competitor, with the aim of offering internet users, an alternative to the goods or services of the proprietor of the trademark, there was use of that sign, in relation to the goods or services of that competitor. 119. The ECJ then went to the extent of holding that even in cases in which the advertiser does not seek, by its use, as a keyword, of a sign identical with the trade mark, to present its goods or services to internet users as an alternative to the goods or services of the proprietor of the trade mark but, on the contrary, seeks to mislead internet users as to the origin of its goods or services by making them believe that they originate from the proprietor of the trade mark or from an undertaking economically connected to it, there is use 'in relation to goods or services'. Therefore, the Court concluded that the use by an advertiser of a sign identical with a trademark as a keyword in the context of an internet referencing service, falls within the concept of "use in relation to goods or services" within the meaning of Article 5(1)(a) of Directive 89/104. 120. However, i....
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....ndings recorded by the Cour de Cassation, the ECJ held in para 98 of its opinion that the use of a sign identical with another person's trademark in a referencing service such as that at issue, in the cases in the main proceedings, was not liable to have an adverse effect on the advertising function of the trademark. 122. Taking up the second part of the discussion, relating to the second question in the first reference, the ECJ concluded that an internet referencing service provider, which stores as a keyword, a sign identical with a reputable trademark and arranges the display of ads on the basis of that keyword, does not use that sign within the meaning of Article 5(2) of Directive 89/104 or of Article 9(1)(c) of Regulation No.40/94. 123. Coming to the question of liability of the referencing service provider (third part of the order of the Grand Chamber), the ECJ held, with reference to Article 14 and recital 42 in the preamble to Directive 2000/31 that the exemption from liability would cover only cases in which the activity of the information society service provider is of a mere technical, automatic and passive nature. In other words, the service provider should ha....
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....of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No.40/94. (3) Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market ('Directive on electronic commerce') must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser's activities, it failed to act expeditiously to remove or to disable access to the data concerned." 126. After the ECJ rendered its opinion on 23.3.2010, the French Cour de Cassation took back the case of Louis Vuitton and by an order dated 13.7.2010, remitted the case back to the Court of appeal to examine the factual matters mo....
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....n the past three decades. They are (1) The Trademark Counterfeiting Act of 1984; (2) The Trademark Law Revision Act of 1988, making major revisions and creating an "Intent to Use" system; (3) legislation in 1993 and 1994 implementing the provisions of the NAFTA treaty and the GATT agreement; (4) a 1996 enactment which added an anti-dilution prohibition to federal law; (5) the 1999 "Anti-cybersquatting Consumer Protection Act," directed at preventing the Cybersquatting on the Internet of domain names that are confusingly similar to trademarks and person names; (6) legislation in 2002 implementing the provisions of the MADRID PROTOCOL, facilitating the international registration of marks. 130. Similarly, in Europe, the European Union issued Council Directive No.89/104, on 21.12.1988, to approximate the laws of the member States relating to trade marks. It was designed to harmonise the disparities in the respective trade mark laws, which had the potential to impede the free movement of goods and provision of services and distort competition within the European Union. Articles 5 and 6 of the said Council Directive around which most of the decisions cited above revolved, read as foll....
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....the service, or other characteristics of goods or services; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts; provided he uses them in accordance with honest practices in industrial or commercial matters. 2. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognized by the laws of the Member State in question and within the limits of the territory in which it is recognized." 131. Subsequently, the European Union recognised that the barrier of territoriality of the rights conferred on proprietors of trademarks, by the laws of the member States, cannot be removed by approximation of laws. Therefore, in order to open up unrestricted economic activity in the whole of the common market for the benefit of undertakings and to create trademarks which are governed by uniform Community Law, the Council issued regulations known as COUNCIL REGULATION (EC) No.40/94 of 20 December 1993 on the Community Trade Mark (CTM). Arti....
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....aracteristics of the goods or service; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he uses them in accordance with honest practices in industrial or commercial matters." 132. However, Regulation No.40/94 was repealed by Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community Trade Mark (codified version) {(OJ 2009 L 78, p. 1)}, which entered into force on 13 April 2009. But Articles 9, 10 and 12 did not undergo any change. 133. On 8.6.2000, the European Parliament and the Council of European Union issued Directive 2000/31/EC on certain legal aspects of information society services, and in particular electronic commerce, in the Internal Market (Directive on electronic commerce). Article 14 of the said Directive, reads as follows:- "14. Hosting.-1. Where an information society service is provided that consists of the storage of information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service....
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....amendments to the pleadings. Therefore, the plaintiffs are the registered proprietors of the trade marks in question, viz., those listed in the table in paragraph -3 above. Consequently, by virtue of section 28 (1), the plaintiffs have (i) the exclusive right to the use of the trade marks in question (ii) in relation to the services in respect of which, registration is made. Thus, 2 limbs of section 28(1) stand satisfied in the case on hand, in so far as defendants 2 to 4 are concerned. Nevertheless, there is a dispute about what constitutes "the use of the trade mark", within the meaning of section 28 (1). 137. Similarly, the liability of the first defendant (search engine) is also in question since the search engine is not engaged in the same line of business as the plaintiff and the alleged infringement by the search engine is not "in relation to the same type of goods or services". However the allegation against them is that of "contributory infringement" or "ancillary infringement" and they are alleged to have facilitated the infringement by the other defendants, by providing the trade marks of the plaintiff as key words and by allowing them to use those marks in the adtitl....
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....ervices in the search engine, in the same manner in which the defendants 2 to 4 do. When the websurfers search for the sites of the respondents 2 to 4, advertisements of the plaintiff's sites also appear on the right hand side as sponsored links. Therefore, they are guilty of what they are seeking to injunct and hence they are estopped from questioning the policy of the search engine, after having submitted to the same (v) The very registration of the trademarks of the plaintiff is contrary to Section 9(1)(b) of the Trade Marks Act, 1999. (vi) The suit is not maintainable in view of the Uniform Domain Name Resolution Policy adopted by ICANN (vii) Since a search engine is like a directory, the reference to certain words in the directory cannot be termed as infringement. The use of the words constituting the registered trademarks of the plaintiff in the keyword suggestion tool, is not a use in the course of trade. 140. One more dispute was sought to be raised by the counsel appearing for the second defendant. It was, that Class 16 in respect of which most of the trade marks of the plaintiff were registered, related to paper, card bo....
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....e or phrase is descriptive is whether, as it is commonly used, it is reasonably indicative and descriptive of the thing intended. In order to be descriptive within the condemnation of the rule, it is sufficient if information is afforded as to the general nature or character of the article and it is not necessary that the words or marks used shall comprise a clear, complete and accurate description. The meaning which should be given is the impression and significance which are conveyed to the public. Whether words or marks claimed as trade marks are descriptive or whether they are suggestive or arbitrary and fanciful must be decided with respect to the articles to which they are applied and the mark must be considered as a whole.' 144. Courts have held that when descriptive words are involved, even a small distinguishing element in the use would be regarded as adequate. In Office Cleaning Services Limited Vs. Westminister Window and General Cleaners Limited (1946 (63) RPC 39), the Court of Appeal held that where the name of the business consists of words descriptive of that business and have not acquired a secondary meaning, a slight difference between the two business names....
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....; is descriptive of the state of marriage of a person. The words 'marriage', 'wedding', etc., may all signify the same meaning, though the origin of these words are from different sources. While the word 'wedding' is an english word denoting a marriage ceremony, the word 'matrimony' is derived from the Latin word 'matrimonium' meaning thereby a rite or state of marriage. On the other hand, the word 'marriage' is derived from the French term 'marier' meaning both a legal union of a man and a woman as well as the act or ceremony marking this. The World Book Dictionary states that while the term 'marriage' emphasises the legal union of a man and woman, the term 'matrimony' is a formal and religious word, applied to the religious bond established by the union and the term 'wedding' is the common word for the ceremony or celebration. 147. Therefore, it is needless to point out that the plaintiff cannot claim monopoly over the individual words 'Tamil', 'Malayalam', 'Telugu', 'Punjabi', 'Assamese', 'matrimony', 'Bharath' etc. But, the plaintiff has obt....
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.... if the defendants use the words 'Bharat' or 'Punjabi' or 'Muslim' etc., in conjunction with any word other than 'Matrimony', the plaintiff cannot maintain an action. But the objection of the plaintiff is to the use of the very same combination of words by the defendants, as contained in the registered trademarks of the plaintiff. 149. Though the objection of the plaintiff to the use by the defendants, of the very same combination of words, is well founded prima facie, the same cannot take them to the desired destination. It is on account of a subsidiary question that would then automatically arise for consideration. That question is as to whether the defendants 2 to 4 would be left with any other choice, to advertise their services, if the use of the combination of the above words is prohibited. 150. We have already seen that the defendants 2 to 4 are also in the same line of business as the plaintiff. Therefore, they have no alternative except to advertise their services, only in a manner descriptive of such services. For instance, in a website providing services to men and women looking for suitable life partners from Kerala, the defendants ....
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....ral use. Similarly, Prof. Wendy Gordon stated in his article "On Owning Information: Intellectual Property and the Restitutionary Impulse" {78 Va. L.Rev.149} that "culture could not exist if all free riding were prohibited within it". 153. Even before the advent of this issue in the internet age, the Supreme Court (of USA) allowed, in Saxlehner vs. Wagner {216 US 375 (1910)}, a natural water producer to use its competitor's mark to identify the product that it was copying. Justice Holmes explained that as long as the defendants did not create confusion about the real source of their product, they were free "to tell the public what they are doing and to get whatever share they can in the popularity of the trademarked product by advertising that they are trying to make the same article and think that they succeed". The Court held that by flagging its product as an imitator of the original, they are not trying to get the goodwill of the name but the goodwill of the goods. 154. In Health & Glow Retailing Pvt Ltd. Vs. Dhiren Krishna Paul [2007(35) PTC 474], a similar question came up before me for consideration. But in that case the plaintiff had a word mark as well as a devic....
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.... (1), when a trade mark - (a) contains any part - (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the while of the trade mark so registered.' 157. But, the second defence taken by the defendants, on the basis of Sections 15 and 17, cannot be sustained for one simple reason. The plaintiff does not seek an injunction restraining the defendants from making use of the individual words 'Tamil', 'Malayalam', 'Telugu', 'Punjabi', 'Assamese', 'Matrimony' etc., independently. The plaintiff does not even seek an injunction to restrain the defendants 2 to 4 from using any of the words 'Tamil', 'Malayalam', 'Telugu', 'Punjabi', 'Assamese', etc in combination with any word other than 'Matrimony'. The injunction that....
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.... or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the Court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which - (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (5) A registered trade ....
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....public. Sub.Section (3) raises a presumption in favour of likelihood of confusion, if the mark used by a person in the course of trade has identity with the registered trade mark and the goods or services, on which such mark is used, also have identity with the goods or services in respect of which, the mark is registered. Sub.Section (4) speaks of infringement in relation to trade marks which have acquired transborder reputation. Sub.Section (5) seeks to prevent a person from adopting someone else's trade mark as part of his trade name or business name. 162. However, Sub.Section (6) clarifies that for the purpose of Section 29, a person uses a registered mark, (i) if he affixes it to goods or the packaging thereof; (ii) if he offers or exposes those goods or services for sale under the registered trade mark; (iii) if he imports or exports the goods under the mark; or (iv) if he uses the registered mark on business papers or in advertising; 163. Under Sub.Section (7), even the application of a registered trade mark on a material intended to be used for labelling or packaging goods or as a business paper or for advertising goods or servi....
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....ar in the 'sponsored links' column. If the defendants 2 to 4 actually use in the adtitle and adtext of their advertisements in the 'sponsored link' column, the words which form part of the registered trade marks of the plaintiff, then it would certainly be an use in advertising and an use in the course of trade. A similar view was echoed by the High Court of Australia in Shell Company of Australia Ltd., Vs. Esso Standard Oil (Australia) Ltd.,{(1961) 1 B IPR 523}. The question which arose in that case was as to whether the use of an animated cartoon oil-drop character in a television commercial, amounted to use of the constituent pictures of a trademark. The court was called upon to decide whether in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer, as possessing the character of the devices or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating or so as to indicate, a connection in the course of trade between the petrol and Shell. The High Court held that "the use of a mark in an advertisement of goods is a use in the course of trade an....
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....nent placement on a search engine research space {Transunion 142 F.Supp. 2d at 1040}. 169. A use is considered to be a permitted nominative fair use, if it meets three requirements, viz., (i) the product or service in question must be one not readily identifiable without use of the trademark; (ii) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and (iii) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. {see New Kids on the Block vs. News Am. Publ'g Inc., 971 F.2d 302, 308 (9th Cir. 1992); Caims vs. Franklin Mint Co. 292 F.3d 1139, 1153-55 (9th Cir. 2002)}. 170. Nominative fair use and initial interest confusion were at the center of the dispute in J.K.Harris & Co. vs. Kassel. In this case, J.K.Harris and Kassel were rendering the services of negotiating reductions in tax assessments and resolution of past due tax obligations for clients. Both of them promoted their services online. On its website, taxes.com, Kassel began publishing negative information about Harris on a page that was designed so as to be prominently featured in the sea....
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....#39; or any permutation thereof as a keyword for the taxes.com website more often than is necessary to identify the content of the website and from using header and underline tags around sentences containing Harris' trade name, or from increasing the prominence and font size of sentences which include Harris' trade name. 174 However, in the context of the statutory provisions in India, there are only 2 questions which are relevant in this context. They are:- (1) whether the defendants are using the registered trade mark in the course of trade or using it in advertisements within the meaning of section 2(2)(b) and (c) and 29(6); and (2) whether such use or application constitutes infringement within the meaning of section 29(8). If the defendants 2 to 4 use the individual words constituting the registered trade marks of the plaintiff, in their advertisements in the sponsored links column, then such use would certainly fall within section 2(2)(c)(ii) and 29(6)(d). 175. Therefore we have to see if such use in advertising, satisfies the ingredients of sub-section (8) of section 29 also, so as to constitute infringement. 176. In the case on hand, it is the c....
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....62, p.376}, expressed the view that, "by its very nature, such a concept must allow of a certain flexibility. Its detailed contours may vary from time to time and according to circumstances, and will be determined in part by various rules of law which may themselves change, as well as by changing perceptions of what is acceptable. However, there is a large and clear shared core concept of what constitutes honest conduct in trade, which may be applied by the Courts without great difficulty and without any excessive danger of greatly diverging interpretations..." The Court further described the concept as "expressing a duty to act fairly in relation to the legitimate interests of the trade mark owner, and the aim as seeking to "reconcile the fundamental interests of a trade-mark protection with those of free movement of goods and freedom to provide services in the common market" in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the Treaty seeks to establish and maintain". 179. The European Court further referred to Article 10bis of the Paris Convention for Protection of Industrial Property which uses the ver....
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....dvantage of or fell within the meaning of honest practices. 181. Therefore, in my considered view, the use by the defendants, of the individual words constituting the registered trademarks of the plaintiff, in the advertisements in internet, may not amount to taking unfair advantage of and contrary to honest practices in industrial or commercial matters. The ingredients of section 29(8)(b) and (c) are also not satisfied, since it is not shown that the use is detrimental to the distinctive character of the mark or against the reputation of the mark. Therefore, i hold that though the use by the defendants would be an use in the course of trade and an use in advertising, such use does not amount to an infringing use, in view of the reasons stated above. DEFENCE IV (ESTOPPEL) 182. The fourth contention of the defendants 2 to 4 is that the plaintiff is equally guilty of what the defendants 2 to 4 are alleged to be. According to them, whenever the web surfers attempt to access the sites of the defendants 2 to 4, the links to the sites of the plaintiff are automatically displayed on the right hand side under the sponsored links. Therefore, the defendants 2 to 4 contend that under....
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....ublici juris, the very registration obtained by the plaintiff, is in violation of Section 9(1)(b) of the Act. 187. The relevant portion of Section 9 reads as follows : "9. Absolute grounds for refusal of registration.- (1) The trade marks- (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person; (b) which consist exclusive of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service; (c) which consist exclusive of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark. 188. But, ....
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....at all disputes regarding domain name registration which are not brought pursuant to the mandatory administrative proceeding provisions of paragraph 4, shall be resolved through Court, Arbitration or other proceedings. Therefore it is a non-exclusive remedy. DEFENCE VII (ROLE OF SEARCH ENGINE) 191. The next contention of the defendants is that a search engine is like a directory containing references to various products and services as well as references to the manufacturers of those products and providers of services. Therefore, according to the defendants, the use of the words which constitute the registered trademarks of persons, in the keyword suggestion tool would not amount to an use in the course of trade of the search engine and would not in any case constitute an infringement. 192. But analogizing a search engine to a directory, may not be appropriate for various reasons. In a directory, the name of a person would invariably appear in one or two locations or sites. Say for instance, the name and address of a timber merchant or his advertisement may appear in a directory, at the location where the names and addresses/advertisements of all timber merchants are group....
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.... services. Therefore, different parties can own the same mark in different countries or different industries. Accordingly, in processing complaints, Google will ask the trademark owner for information regarding where the mark is valid and for what goods or services. Please note the following about our complaint process: The trademark owner doesn't need to be a Google AdWords advertiser in order to send a complaint. Any such investigation will only affect ads served on or by Google. Google's trademark policy does not apply to search results. Our investigations only apply to sponsored links. For trademark concerns about websites that appear in Google search results, the trademark owner should contact the site owner directly. In the case of an AdSense for Domains trademark complaint, an investigation will affect only the participation of the domain name in question in our AdSense for Domains program. Because Google is not a third-party arbiter, we encourage trademark owners to resolve their disputes directly with the advertisers, particularly because the advertisers may have similar ads running via other advertising programs. 194. By adopting the policy extracted above, ....
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....their ads. For example, if an advertiser has selected the keyword shoes that advertiser's ad will appear when a user enters the word shoes as a search query, regardless of other search terms that may be used. So, the ad would show if the user entered any of the following search queries: lennis shoes, red shoes or Nike shoes. This system eliminates the need for the advertiser to specify each of the myriad different search query combinations that are relevant to their ad. 197. The reason for adopting different policies in different regions, is actually not very clear. However, in document No.6 filed by Google, containing sample printouts, depicting the component of an ad and explaining the process of search in Google, the first defendant has stated that in accordance with their adwords policy, the plaintiff's registered trademarks, would not appear in the adtext i.e., the title or the text of the ad of others. 198. However, in the screen shots of the defendant's webpages, showing sponsored links ads, filed by the plaintiff as document Nos.48, 49, 50, 51, 52 and 53, the terms 'Tamilmatrimony', 'Sindhimatrimony', 'Punjabimatrimony', 'Bengalimatrimony', 'Ass....
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....ch engine, about the registration of those words as trademarks. It is only in cases where a completely arbitrary or fanciful name, which has no nexus or connection with the nature of the goods or services, is adopted as a trademark, that the offer by a search engine of that trademark in their keyword suggestion tool, to the competitors of the proprietor of the mark, could be considered as amounting to vicarious or contributory infringement. In cases of the nature on hand, the benefit of doubt would go to the search engine, since the choice of the words Tamil, Matrimony etc., in the keyword suggestion tool, need not necessarily have happened deliberately. 201. One more contention of the plaintiff is that the search engine is guilty of double standards, in the sense that sponsored links do not appear for certain categories of persons, products and services such as Aircel, HDFC, Microsoft, Nike, ICICI Bank, Oracle, Facebook etc. In support of the said contention, the plaintiff has also filed the print-outs of the relevant webpages as part of document No.69. However, the first defendant has denied this. The first defendant has also filed as document No.16 series, the screen shot....
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....granted interim orders of injunction as prayed for, in O.A.Nos.977 and 978 of 2009, on 17.9.2009. The operative portion of the said order read as follows: "I could see considerable force in the submission made by the learned counsel for the applicant/plaintiff and accordingly, interim injunction as prayed for is granted till 05.10.2009." It is seen from the docket sheet in O.A.Nos.977 and 978 of 2009 that the applications were listed for hearing on 05.10.2009 and they were simply adjourned to 06.10.2009 without any order. On 06.10.2009, the Court heard the matter in part and adjourned it to 07.10.2009 and also extended the interim order till then. 206. On 07.10.2009, the Court heard the arguments on both sides. After adverting to the prayers made and the rival contentions in paragraphs 1 to 8, in its order dated 07.10.2009, the Court pointed out in paragraphs 10 and 13 that the plaint as it stood on that date, required modifications and that therefore, the plaintiff was not justified in seeking exparte injunction with those defective pleadings. Thereafter, the Court referred to the policy of the search engine on the issue and held in paragraphs 19 and 20, which const....
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....ant under Order VII, Rule 11, CPC to reject the plaint, A.Nos.6382 and 6383 of 2009 are by the second defendant praying for (i) rejection of plaint under Order VII, Rule 11, CPC; and (ii) stay of further proceedings in the suit. 211. The stay of suit is sought on the short ground that in the plaint, the plaintiff has given a false and fictitious address for the second defendant, despite the fact that there are several litigations between the parties and the plaintiff was well aware of the correct address of the second defendant. The second defendant relies upon the provisions of Order VI, Rule 14A (5)(a) of the Code of Civil Procedure, for seeking stay of the suit. 212. However, I do not think that there is any necessity to stay the suit. The second defendant has entered appearance through counsel and has also filed counter affidavits to the applications for injunction. The second defendant has also come up with substantial applications for stay of suit and rejection of plaint. Therefore, the stage at which the provisions of Order VI, Rule 14A(5) are to be invoked, has already passed. As a matter of fact, a careful perusal of the provisions of sub rules (5), (6), (7) and (8) ....
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....n the ground that a majority of 22 registered marks did not stand in the name of the plaintiff Company and that therefore, the protection available only to the registered proprietors, cannot be extended to the plaintiff. However, the plaintiff later got his plaint amended by virtue of an order dated 21.01.2010 passed in A.No.6379 of 2009. The order dated 21.01.2010, allowing the application for amendment, was not challenged by any of the parties. 216. It is true that I also gave liberty to the defendants 2 and 4 to raise all these objections in the applications for injunction and in the suit. I have noted this in paragraph 10 of this order, even while providing the reasons which persuaded me to allow the amendments. 217. Therefore, all that the defendants 2 and 4 can claim is that these objections can be taken note of in deciding the applications for injunction and in deciding the suit. But, it does not mean that the suit can be thrown out at the threshold, on the ground of defective pleadings, especially after the amendments were allowed. 218. Order VII, Rule 11 enables this Court to reject a plaint (i) where it does not disclose a cause of action; (ii) where the relief i....