TaxTMI 
TaxTMI 
2012 (9) TMI 1220
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.... by the learned Single Judge in O.A.No.978 of 2009 in OS No.832 of 2009. 2. The respondents are the defendants in the Suit. The appellant filed the suit in C.S.No.832 of 2009 for the following reliefs;- a) a permanent injunction restraining the defendants, by themselves, their directors, partners, men, servants, agent, broadcasters, representatives, advertisers, franchisees, licensees and/or all other persons acting on their behalf from in any manner infringing and/or enabling others to infringe plaintiff's registered trademarks BHARATMATRIMONY, TAMILMATRIMONY, TELUGUMATRIMONY etc., a list whereof is annexed hereto and marked as Annexure-A and/or its variants by including them jointly or severally as Adwords , Keyword Suggestion Tool or as a keyword for internet search or as meta tag in any other manner whatsoever; b) a permanent injunction restraining the defendants, by themselves, their directors, partners, men, servants, agents, broadcasters, representatives, advertisers, 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 1st a....
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....es, their directors, partners, men, servants, agents, broadcasters, representatives, advertisers, franchisees, licensees and/or all other persons acting on their behalf from in any manner diverting the appellant's business to its competitors by using the first respondent's search engine in which the applicant'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 applicant's competitors including respondents 2 to 4 as that of the applicant or in any other manner whatsoever, pending disposal of the suit. 4. The case of the appellant as reflected in the plaint is that it is a private limited company involved in online matrimonial services using internet as a vehicle/platform. In the course of business the appellant has adopted several trademarks including inter-alia Bharatmatrimony, Tamilmatrimony, Telugumatrimony, Assamesematrimony etc. The appellant is the market leader in th....
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.... the competitors to pick and choose the heavily searched term/trademark as their keyword to trigger advertisement in the sponsored Link ad space. 4.4 According to the appellant, the respondents 2 to 4 are their competitors, who also are in the similar line of business, namely online matrimonial services. The appellant's trademarks such as Bharatmatrimony, Tamilmatrimony, Telugumatrimony etc., are all heavily searched by the internet users in whole or separated with a space. The first and fifth respondents have included the appellant's trademark in their Key-word Suggestion Tool programme and offering them to the appellant's competitors to use them as their keyword and part of their advertisement in the Sponsored Link. The respondents 2 to 4 knowingly bid for such KeyWords which are identical to the appellant's trademarks to divert the business meant for the appellant. 4.5 Further, according to the appellant, internet users enter the appellant's trademark 'bharatmatrimony' in the search engine of the 1st and 5th respondents to reach the appellant's website, the Sponsored Link appearing in the search result page would also display the competitors....
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....moter Mr.Janakiraman Murugavel are the registered proprietors of about 22 trademarks such as Bharatmatrimony, Tamilmatrimony, Telugumatrimony etc., On a perusal of the documents produced on the side of the appellant, it could be seen that out of the 22 trademarks, 4 trademarks were registered under Class 42, which covers marriage bureau, horoscope matching and other matrimonial services, services to facilitate online marriage, profile references, match making services etc. The remaining 18 trademarks were registered under Class 16, which covers printed matters. 9. The first respondent namely Google India Private Limited is a search engine, the second respondent is the proprietor of a Web portal, offering matrimonial services with the domain name www.shaadi.com. The third respondent is a business division of a company by name Info Edge India Ltd., also having a Web portal offering matrimonial services with the domain name www.jeevansathi.com. The fourth respondent is also having a Web portal offering matrimonial services under the trademark simplymarry and a domain name www.simplymarry.com. 10. It is also not in dispute that whenever any of the register....
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....as Ad title or Ad text, are selected by assistance from the Keyword Suggestion Tool provided by the search engine itself. The key word tool is search based and it generates ideas matched to the websites of the advertisers. If a person who wishes to choose appropriate keywords will have to enter into the KeyWord Suggestion Tool of the search engine and type one or more descriptive words or phrases solicit keyword ideas. Immediately, the engine displays all keywords related to the word entered by the advertiser, along with the volume of monthly searches made on the same keyword and the additional keywords that could possibly be considered for use by the advertiser. In case an advertiser uses the KeyWord Tool to find the appropriate Adwords, which would easily lead to his website, the search engine suggests several key words that cold be adopted by the advertiser so that the link to his website would appear at as many locations as possible. 13. According to the appellant, the first respondent has provided in the Keyword Suggestion Tool, the registered trademarks of the plaintiff or deceptively similar variations thereof, thereby inducing the trade rivals to choose them as their Adw....
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....porting the goods, the use of the mark as trade name or trade mark on business paper or in advertising. (c). Mr. A. L. Somayaji, the learned Senior Counsel, who is also appearing on behalf of the appellant submitted that the appellant having registered the trademarks they have the exclusive right to use the trademarks in relation to the goods or services in respect of which the trademark is registered and to obtain relief in respect of infringement of the trademark. In support of his contention, the learned Senior Counsel relied on Section 28 of the Act, which deals with the exclusive rights conferred by registration, which includes services also. According to him, when once the learned Judge found prima facie case in favour of the appellants, injunction order should have followed. (d) The learned Senior counsel also relied upon Section 29(c) of the Act, which states that a registered trade mark is infringed, if the trade mark is identical and is used in relation to identical goods or services; and that such use is likely to cause confusion on the part of the public or is likely to be taken to have an association with the registered trademark. The learned Senior Counsel relie....
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.... add, amend, or delete the content and thereafter communicating the said work to the public by providing some advertisements alongside the work or in the alternative gaining advertisements or sponsorships on the said basis thereafter would prima facie tantamounts to permitting the place for profit for infringement as envisaged under Section 51(a)(ii) of the Act" Further the learned Single Judge in paragraph 20(h) has held as follows;- "(h) Further it has been argued that the advertisement may also appear automatically as the user types keywords and search for the same. This is usually a part of "Adwords" which are in the nature of hints or options given by the search engines as and when the suer asks any query from search engine. The example of the same is given that supposingly if the user is typing Punjaban. The song may appear and along side the same some options of Punjabi matrimonial may appear automatically which happens due to the search engines exercise and not due to the acts of the defendants. iii) (2004) 6 SCC 145 (SATYAM INFOWAY LTD V. SIFYNET SOLUTIONS (P) LTD.). The main question that arose for consideration before the Honourable Supreme Court is ....
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....ant's trade name are already registered. We are not prepared to deny the appellant's claim merely on the aforesaid basis. For one, none of the alleged previous registrants are before us. For another, the word "Sci'fi" is an abbreviation of "Science fiction" and is phonetically dissimilar to the word Sify." iv) AIR 1967 MADRAS 381 (V 54 C 121) (D.C.S. BUREAU V. UNITED CONCERN), wherein the Honourable Supreme Court has held as follows;- "There might be and there will be obvious differences deliberately introduced to avoid a possible change of infringement. A bad copy does not cease to be a copy. If the Court, on a consideration of all the relevant circumstances and a comparison of the plaintiffs' picture and the infringing picture comes to the conclusion that the defendants' picture was consciously copied from the work of the plaintiff, that would be sufficient to hold that copyright is infringed. v) 2011 (4) SCC 85 (T.V.Venugopal vs. Ushodaya Enterprises Ltd., & anr), wherein the Honourable Supreme Court has extracted the finding of the Supreme Court decision reported in (2004) 3 SCC 90 (MIDAS HYGIENE INDUSTRIES (P) LTD. SUDHIR BHATIA) in paragraph....
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....its product in the State of Andhra Pradesh would amount to encouraging the appellant to practise fraud on the consumers; (f) Permitting the appellant to carry on his business in the name of Eenadu in the State of Andhra Pradesh would lead to eroding extraordinary reputation and goodwill acquired by the respondent Company over a passage of time; (g) The appellant's deliberate misrepresentation has the potentiality of creating serious confusion and deception for the public at large and the consumers have to be saved from such fraudulent and deceitful conduct of the appellant; (h) Permitting the appellant to sell his product with the mark Eenadu would be encroaching on the reputation and goodwill of the respondent Company and this would constitute invasion of proprietary rights vested in the respondent Company; (i) Honesty and fair play ought to be the bases of the policies in the world of trade and business. vi) 2003(26) PTC 555 (PERRY BOTTLING CO., V. SS SODA & SOFT DRINKS COMPANY), wherein a learned Judge of the Rajasthan High Court in paragraph 25 of the Judgement has held as follows;- "In the light ....
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....nt matters, it is important to note that the Trade Marks Act gives the proprietary and exclusive right to use the mark which will be infringed in the case of an identical mark. The statutory protection in the case of registered trade mark is absolute. Therefore, infringement takes place not merely by exact imitation, but by the use of the mark merely resembling the registered mark as to likely to be deceptive. When the 1st defendant's mark "LUXURIA" is compared with the registered trade mark "LUXURA" , both in the positioning and phonetic similarity, in our considered view the conditions specified in Clause (a) of Section 29(4) of Trade Marks Act are satisfied. 15. Countering the submissions made by the learned Senior Counsel appearing on behalf of the appellants, Mr.P.S.Raman learned Senior Counsel appearing for the respondents 1 and 5 submitted as follows:- a) the appellant is ex-facie guilty of gross suppression and bad conduct in not having disclosed and explained the fact that till date, they themselves are participating in the Google's AD Words program and they are not guilty of using not only the other defendant's name (including registered marks) as ....
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....uch sponsored links are purely based on relevance, quality score(popularity of the advertiser's site) and the bid (amount agreed to be paid to Google per click on their sponsored links). Google does not 'auction' keywords in the sense portrayed by appellant, but follows a bidding process, which is only for placement of the advertisement in the sponsored results; that the highest bid will not guarantee top spot unless it is coupled with relevance and quality scored. Admission to Adwords program and payment for the Ads includes unlimited use of keywords and the algorithm which runs the search engine does not focus on whether such keywords are trademarked or otherwise. g) Learned Senior Counsel appearing for the respondents 1 and 5 contended that Section 29(1) to (4) of the Act is the provision directly governing what constitutes an infringement of a trademark. Under Section 29(2)(c) of the Act that Court may presume that confusion likely to be caused in the minds of the Public. In all other cases, the use of the mark in the course of trade should be demonstrated to be as 'likely to cause confusion on the part of the public, or which is likely to have an assoc....
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....ich site he wants to go into because he never came looking for the site of the appellant in the first instance. k) Section 28(2) r/w Section 17(2) of the Act makes it clear that even as per the Act, though there is no provision for disclaimer, such disclaimer is contained in the statute itself. The words 'Bharat' or 'Tamil' etc with space bar in between and the word 'Matrimony' are generic words. The appellant cannot have exclusive right over the said words. The appellant had obtained two common words by joining them together. Therefore, they cannot claim exclusive right over the words independently. l) The learned Senior Counsel for the respondents 1 and 5 relied upon the following judgments in support of his contention:- i) Judgement of European Court of Justice (ECJ) in 2009C-236/08, C237/08 and C 238/08 dated 23.03.3010 ( Google France Sarl, Google Inc vs. Louis Vuitton Malletier; Google France vs. Viaticum Luteciel; Google France vs. CNNRRH), wherein in paragraphs 55 and 58 of the judgment, the European Court has held as follows;- 55. With regard, next, to the referencing service provider, it is common ground th....
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....violating trademark laws of U.S. Following the judgment in 1-800 Contacts, referred supra. m) In these circumstances, the learned Senior Counsel appearing on behalf of the respondents 1 and 5 prayed for dismissal of both the appeals. 16. Mr.Vineet Subramani, learned counsel appearing on behalf of the second respondent submitted that:- a)The appellant has not satisfied the requirements of Section 29(1) of the Act and in the absence of any one of the three elements mentioned therein, the suit for infringement must fail, and the petition for interim injunction must be dismissed. b) The appellant have registered its trademark under Class 16 in respect of stationery related products. The presumption under Section 29(3) of the Act is not applicable to them. c) The judgments cited by the appellant that is 2011 (4) CTC 417 (Blue Hill Logistics v.Ashok Leyland Ltd.), and 2007 (35) PTC 474(Mad) (Health & Glow Retailing Pvt. Ltd. v. Dhiren Krishna Paul) are not applicable to the present case, since in both the cases the Court found that despite the phonetic, visual and aural similarity the registration in different classes would be sufficient to preclude....
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....advertisement. iii) $1.199 Pvt.Ltd v. Lifestyle 1.99 Pvt.Ltd., ((2001) FSR 10 (CA, Sg) and Marcio Ltd. v. Agro Tech Foods Ltd., 2010 (43) PTC 39 (Del), In both the above cases, the Courts of appeal and Single Judge of Delhi High Court held that "Descriptiveness and distinctiveness is a defence available against registered marks as well" iv) 2001 (2) SCR 743 (Cadila Health Care Ltd., v. Cadila Pharmaceuticals Ltd.,) the Honourable Supreme Court held that the class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care that they are likely to exercise in purchasing and/or using the goods" and further held that a relevant factor to be considered is "the mode of purchasing the goods or placing orders for the goods." M.P.Nos.1 and 1 of 2012 17(a) The second respondent filed two petitions in M.P.Nos.1 and 1 of 2012 in O.S.A.Nos.406 and 407 of 2010 respectively under Order XIV and Rule 8 of the Original Side Rules r/w Order 41 Rule 27 CPC to permit them to produce additional evidence in the nature of the document enumerated in Schedule A. (b) In the affidavit filed support o....
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....t suit. Therefore, the question of material suppression does not arise. (e) The learned counsel appearing for the second respondent submitted that the documents are necessary for proper adjudication of the matter. But, according to the appellants, the documents are filed at a belated stage, even though those documents were available at earlier stage. No reason has been assigned for not producing the documents before the learned Single Judge. (f) The learned counsel for the second respondent in support of his contention with regard to production of additional evidence has relied upon the following judgments;- i) Gopal Krishanji Ketkar v. Mohammed Haji Latif (AIR 1968 SC 1413), wherein the Honourable Supreme Court, has held that "Even if the burden of proof does not lie on a party the Court may draw on adverse inference if he withholds important documents in his possession which can throw light on the facts at issue. It is not, in our opinion, a sound practice for those desiring to rely upon a certain state of facts to withhold from the Court the best evidence which is in their possession which could throw light upon the issues in controversy and to rely up....
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....est is not as to whether the English words appropriated by the appellant have substitutes, but whether the said words are indispensable and unavoidable. c) Bharatmatrimony has created URLs with each of its competitors' trademarks and no explanation as to why similar trade practice of yahoo! is acceptable to the appellant. d) Therefore, the allegation, viz., infringement of Registered Trademark is liable to be rejected. Since there is no deception, passing off/unfair competition is also liable to be rejected. e) In support of his contention, the learned counsel relied upon the following judgments:- i) Zatarains, Inc. v. Oak Grove Smokehouse, Inc, No.81-3573, dated 25.02.1983, wherein the Court of Appeals, Fifth Circuit, in paragraph 17 has held as follows;- "17. The "imagination test" is a second standard used by the courts to identify descriptive terms. This test seeks to measure the relationship between the actual words of the mark and the product to which they are applied. If a term "requires imagination, thought and perception to reach a conclusion as to the nature of goods," Six Products, 295 F.Supp. at 488, 160 USPQ at 785, it i....
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....ancial services sector it denoted, amongst other things, a branch of insurance or a line of goods or services for undertakings. Coupling them together without any graphic or semantic modification thus did not imbue them with any additional characteristic such as to render the sign, taken as a whole, capable of distinguishing the appellant's services from those of other undertakings. The sing COMPANYLINE was therefore devoid of any distinctive character." iv) AD2000 TM case (1997) RPC 168, wherein it has been held as follows;- Without any prior use on the part of the applicant, the capacity to communicate that fact must, if it existed, have existed by virtue of the nature and characteristics of the designation per se. A combination of two letters and a four-figure numeral may well possess a distinctive character if it is an idiosyncratic combination. However, the combination represented by the letters and numeral AD2000 is not an idiosyncratic combination. It naturally refers to the year 2000 and that, in my view, is what most people will think of when they see or hear it, used in connection with the marketing of goods of the kind of which registrat....
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.... if Z does this by manufacturing or selecting and offering for sale in this country a rival manufacture of the article in question under the ordinary trade name that it bears, which would be the same as that of the article A has been selling; unless perchance A has taken the precaution to prefix his own surname, or make some other addition to the ordinary designation of the article as dealt in by him, in order to distinguish or identify his own particular make or selection. vii) King-Seely Thermos Co. V. Aladdin Industries Incorporated 138 USPQ 349 wherein the Court of Appeal, the second Circuit has been held as follows;- 3. Since in this case, the primary significance to the public of the words thermos is its indication of the nature and class of an article rather than as an indication of its source, whatever duality of meaning the word still holds for a minority of the public is of little consequence except as a consideration in the framing of a decree. Since the great majority of those members of the public who use the word thermos are not award of any trademark significance, there is not enough dual use to ....
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....xamined at the stage of grant of interim injunction by the Courts. x) Marico Limited v. Agro Tech Foods Limited in FAO (OS) No.352/2010 dated 01.11.2010, wherein the Delhi High Court has held as follows;- 21.(iii) A civil Court in a suit filed for infringement of a registered trademark is entitled (if there is no earlier judgment which has achieved finality in cancellation proceedings) to consider the validity of registration for the purpose of passing an interlocutory order including of grant or refusal of an interim injunction- once the objection, as to invalidity of registration, is taken up in the pleading/written statement. xi. The Vision Center v. Opticks Inc.202 USPQ Inc.202 USPQ 333, 340 (5h Cir.1999), wherein the Court of Appeals, fifth Circuit has held as follows;- 18.Although a statutory presumption of validity accorded to marks registered under the Lanham Act, 15 U.S.C.$$1057(b), 1115(a), this presumption is rebuttable and may be overcome by establishing the generic or descriptive nature of the mark. Flexitized, Inc. v. National Flexitized Corp., 335 F.2d 774, 779, 142 USPQ 334 (2d Cir.1964), cert.denied, 380 U.S.913, 144 USPQ 7....
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.... any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person or which is purely descriptive shall not be registered. The marks that appellant has registered namely BharatMatrimony, TamilMatrimony, GujaratiMatrimony are devoid of any distinctive character because they describe the class of goods or services, rather than appellant's service. f) The consequence of allowing a person to acquire a trade mark over purely descriptive words is that these words are unlawfully appropriated by him although they belong to the common stock of language. Nobody can have any monopoly over words like Tamil and Matrimony . g) Injunction cannot be granted in respect of purely descriptive mark and the effect granting injunction relief in respect of a purely descriptive mark, is that the registered proprietor obtains a monopoly over common and generic words. If the respondent questions the prima facie validity of the mark by demonstrating that it is purely descriptive. An order of injunction cannot be granted because the mark itself is prima facie invalid. h) The elements of Sec....
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....ful consideration of the materials available on record, the submissions made by the respective counsels and the judgments relied upon by them, it could be seen that a search engine is an information retrieval system designed to help find information stored on a system. It is a data base of 'web page extracts' that can be queried to find reference to something on the net. Search engines provide a way to search the contents of millions of web pages simultaneously. There are several search engines such as Yahoo!, the first respondent etc. 21. The first respondent is one such search engine which has a large database and which uses a system of ranking hits by relevancy. When one enters into the net and goes to a search engine, the first page that opens up on the screen of the computer is the Home Page . The home page contains a box in which, the person making the search has to type the key words or the search terms. Just below the box, two options will be indicated. One is an open search option, which is actually a wild search. Another is a limited search option, indicated by the phraseology I'm feeling lucky . The moment one clicks the keyword in the open sea....
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.... referred above, can be of persuasive value to the extent, the laws in India are similar. The dispute on hand is in the context of the provisions of the Trade Marks Act, 1999. Section 28 of the Act enumerates the right conferred by registration of trademarks. Sub Section (1) of Section 28 of the Act confers upon the registered proprietor of the mark-- (i) The exclusive right to the use of the trade mark, ii) In relation to the goods or services in respect of which the mark is registered and iii) To obtain relief in respect of infringement in the manner provided under the Act. Thus, there are 3 limbs to section 28(1) of the Act. However, the right recognised by sub-section (1) is made subject to the other provisions of the Act. Section 28(1) indicates both (i) the right as well as (ii) the remedies. 26. In the present case, the appellant as well as the respondents 2 to 4 are engaged in the business of rendering the same type of services, namely, matrimonial services. The appellant is the registered proprietor of the trademarks in question. By virtue of Section 28(1) of the Act, the appellant have i) the exclusive right to the use of the trade marks i....
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....n of these two words i.e. by registering as 'Tamailmatrimony' 'Malayalammatrimony', Gujarathimatrimony etc. By registering these two words, the appellant contended that they are entitled to forbear others from using these words in such manner, as would mislead the customer about their origin. 31. According to the appellant, if these two individual words are combined together with or without a space in between and if the respondents used the same, it causes confusion in the minds of the consumers. Further, the appellant contended that despite the combination of words, which constitute their registered trade marks, they have acquired secondary meaning and hence, they are entitled to prevent the infringement thereof. However, the appellant is not aggrieved by the use of these words by the respondents independently and individually and the appellants are aggrieved only by the combination of these two words. But, the respondents are using these two words with a space in between like Bharat Matrimony, Tamil Matrimony etc. 32. The learned Single Judge in his order, in paragraph 148, has stated that in spite of leaving a space in between the two words, it certainly pr....
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....f the Act hereunder; "2(2). In this Act, unless the context otherwise requires, any reference- (a)........ (b) to the use of a mark shall be construed as a reference to the use of printed or other visual representation of the mark" "(c) to the use of a mark,- (i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods; (ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provisions or performance of such services." 35) Section 29 reads as follows:- "29. Infringement of registered trade marks:-(1) 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 is identical with, or deceptively similar to, the trade mark is relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) A regis....
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....services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee. (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising - (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or (b) is detrimental to its distinctive character, or (c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly." 36) As per Section 29(1) of the Act, when a person uses in the course of trade an identical or a deceptively similar mark, in relation to the same goods or services and in such a manner as to render the use of the mark, likely to be taken as being used as a trade mark an infringement happens. Under Sub Section (2) of the Act, an infringement happens when a person uses, in the course of trade, ....
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....use by a person, of someone else's registered trademark, would constitute infringement was decided by various Courts internationally. However, the Courts have not uniformly deemed all unauthorised uses of trademarks in metatags, to be actionable. If the respondents 2 to 4 uses the individual words constituting the registered trade marks of the appellant in their advertisements in the sponsored links column, then such use would certainly fall within Section 2(2)(c)(ii) and Section 29(6)(d) of the Act. 42. Section 30 of the Act prescribes on effect of registered trade mark. It is also relevant to extract Section 30 of the Act which reads as follows;- 30. Limits on effect of registered trade mark - (1) Nothing in Section 29 Shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying the goods or services as those of the proprietor provided the use- (a) is in accordance with honest practices in industrial or commercial matters, an (b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. (2) A registered trade ma....
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....pellant and also arbitrarily used the trademark words as key words in the 'sponsored links' causing loss to the appellant business. If the same yard stick is applied even for the respondents 2 to 4, the same cannot be termed as arbitrary or discriminatory, since the appellants are popular in the field of matrimonial services, by adopting such practices as stated above would affect their business considerably. 46. The respondents 1 and 5 could have used some other words as key words on the sponsored links. The action of the respondents 1 and 5 would only create confusion in the mind of the Public. According to the respondents 2 to 4 when ever the web surfer attempts to access the sites of the respondents 2 to 4, the links to the sites of the appellant are automatically displayed on the right hand side on the sponsored links. But, as stated above, the privilege or benefit given to the respondents 2 to 4 were not given to the appellant. 47. In our view, it is clear discrimination on the part of the respondents. Further, this aspect i.e. how far it affects the business of the appellant can be known and assessed only at the time of trial of the suit. The respondents 2 to 4....
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....ith a person advertising his products and services in the search engine is governed by 1) Advertising Program Terms 2) Advertising Policy and Editorial Guidelines and 3) Adwords and Adsense Trademark Policy. In the "Advertising Program Terms", Google has made the advertiser solely responsible for ad targeting options and keywords and all ad content, ad information and ad URLs. In their Advertising Policies also a copy of which was produced by them before the learned single Judge. Google has stated as follows;- "Trademarks Google recognizes the importance of trademarks. Our AdWords terms and Conditions with advertisers prohibit intellectual property infringement by advertisers. Advertisers are responsible for the keywords they choose to generate advertisements and the text. Google takes allegations of trademark infringement very seriously and, as a courtesy, we investigate matters raised by trademark owners. Trademarks are territorial and apply only to certain goods or 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 regardin....
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....that there cannot be a presumption that the inclusion of those names in the keyword suggestion tool, happened with the knowledge of the search engine, about the registration of those words as trademarks. The learned Judge also held that the benefit of doubt would go the search engine since choice of the words "Tamil", "Matrimony" etc., in the keyword suggestion tool need not necessarily have happened deliberately. 54. As already held by us, the respondents 1 and 5, Google has been adopting double standards, since the benefit given to the respondents 2 to 4 were not given to the appellant. Had Google adopted uniform standard for appellant on par with the respondents 2 to 4, one can say that the Google has not adopted double standards. But, in the case on hand, there is a clear discrimination between the appellant and the respondents 2 to 4. However, as stated by the learned Judge we are also of the opinion that this issue can be examined only at the time of trial. 55. Though, the learned Judge has given the benefit of doubt to Google with regard to choice of the words "Tamil", "Matrimony" etc., in the keyword suggestion tool, we are of the considered view that even assuming th....
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...., the title and text of the advertisement. Therefore, it is clear from the order dated 07.10.2009, by recording the undertaking given by the first respondent, the injunction was vacated. The arrangement made on 07.10.2009 is continuing till date. 60. While dismissing both the applications i.e. O.A.Nos.977 and 978 of 2009, the learned Judge made it clear that dismissal of these applications shall not be construed to mean that the first respondent (Google) may henceforth deprive the plaintiff (appellant) of the benefit of their Adwords Trademark Policy, as reflected in documents filed by them. As already stated we are of the considered view that the appellant has established their case with regard to prima facie case and balance of convenience. As such, the appellants are entitled for injunction. So far as the irreparable hardship is concerned, the same can be decided only in the trial. That apart, even the other issues have to be decided only in the course of the trial. Though, we are of the view that the appellant is entitled for injunction, the present arrangement based on the undertaking given by the respondents, which is in force for nearly 3 years, should not be disturbed or....