Similarly, the unauthorised use of another person's trade mark, was held to be a fair use in cases-- (i) where the defendant used the plaintiff's mark in a descriptive sense as in the decision in Brookfield (174 F.3d at 1066), by using simple English words "movie" and "buff" with a space in-between (ii) where the defendant's website was critical of the plaintiff's business activities as in the case of Bihari vs. Gross (119 F.Supp. 2D 309) (iii) where the defendant distributed the plaintiff's products or had a similar legitimate business relationship with or connection to the plaintiff and its products as in the case of Transunion {142 F.Supp. 2d at 1040} and (iv) where the defendant's fame or notoriety was due to its affiliation to the plaintiff as in Welles {279 F.3d at 802}. However, despite these exceptions, Courts have not extended the fair use defence to Cyber Stuffing in which another's trademark is used multiple times in website metatags to obtain more prominent placement on a search engine research space {Transunion 142 F.Supp. 2d at 1040}.
What's in a name ? That which we call a rose,
By any other name would smell as sweet"
would have been acceptable to Shakespeare, but certainly not to WIPO. Today everything is in a name, if the name had acquired significance as a trademark. William Murray, First Earl of Mansfield observed in Morgan vs. Jones, that "most of the disputes in the world arise from words". 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, in respect of the goods and services falling under the Classes indicated in column No.4 thereof:- S.No.
4. The grievance of the plaintiff, in a nutshell, is that the defendants 2 to 4, who also have matrimonial web portals, rendering online matrimonial services in the internet, advertise their services in the search engine "Google", by adopting adwords and texts, which are exactly identical or deceptively similar to the registered trademarks of the plaintiff. With this grievance, the plaintiff has come up with the above suit, praying for the following reliefs:- (a) 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 infringing and/or enabling others to infringe the plaintiff's registered trademarks BHARATMATRIMONY, TAMIL MATRIMONY, 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 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 others to infringe and/or pass off the plaintiff's trademarks and domain names;
(e) An order for rendition of accounts of profits in favour of the plaintiff and against the first defendant to ascertain the profits made by the first defendant on account of allowing such infringements.
5. Along with the suit, the plaintiff also filed 2 applications in O.A.Nos. 977 and 978 of 2009, seeking ---
(i) an interim injunction restraining the respondents, by themselves, their directors, partners, men, franchisees, licensees and/or all other persons acting on their behalf from in any manner infringing and/or enabling others to infringe applicant's registered trademarks BHARATMATRIMONY, TAMIL MATRIMONY, 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, pending disposal of the suit; and (ii) an interim order of injunction restraining the respondents, 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 applicant'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.
6. On 17.9.2009, a learned Judge granted ex parte ad interim orders of injunction in both the applications. But on 7.10.2009, the blanket interim orders of injunction were vacated by the learned Judge and a direction was issued to the search engine (viz., the first defendant) to adhere to their business policy of protecting the registered trademarks, by ensuring that others do not use such registered trademarks in their "Adwords".
7. Complaining of violation 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, the plaintiff, of their own accord, came up with an application in A.No.6379 of 2009, seeking an amendment of the plaint and the original applications. The scope of the amendment sought for, was (i) to insert paragraph 8-A in the plaint so as to make it clear that Mr.Janakiraman Murugavel was the registered Proprietor of most of the trademarks and that he had assigned them in favour of the plaintiff, of which he is the promotor/director (ii) to delete the words "www." and ".com" and (iii) to substitute the correct address of the second defendant in the long and short cause title.
10. By an order dated 21.1.2010, the application for amendment A.No. 6379 of 2009 was allowed by me and the amendments were also carried out. Even while allowing the amendment, I reserved liberty to the defendants to raise all their objections in the applications for injunction and in the suit. The reasons that persuaded me to allow the amendment were - (a) that Mr.Janakiraman Murugavel is undoubtedly the registered Proprietor of most of the trademarks listed in the above table;
(b) that the plaintiff company is also the registered Proprietor of a few of them ;
(c) that there is no dispute that Mr.Janakiraman Murugavel is the promotor/ director of the plaintiff; and
(d) that even in the first instance it was Mr.Janakiraman Murugavel who had signed and verified the pleadings, including the plaint and the affidavit in support of the applications for injunction.
11. Therefore it was obvious that there was a mix up, between Mr.J. Murugavel's identity as an individual and his identity as the promotor/director of the plaintiff-company. This had led to improper and shabby pleadings on the part of the plaintiff in the plaint filed in the first instance. After being pointed out, the plaintiff sought amendment and hence the amendment was allowed, as it did not alter the character and nature of the dispute raised in the suit. Moreover, the dispute on hand raises larger issues of global concern and hence I did not wish to short circuit the same, by rejecting the prayer for amendment and by throwing out the plaint on hyper technical grounds, though it could have suited me very much and saved much of the botheration that I had to undergo later.
12. The plaintiff has also come up with another application in A.No. 247 of 2010, seeking to implead 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.Vineet Subramani, learned counsel appearing for the second defendant, Mr.Satish Parasaran, learned counsel for the third defendant and Mr.Arvind P.Datar, learned Senior Counsel for the fourth defendant. GRIEVANCE OF THE PLAINTIFF:
15. The plaintiff as well as its promoter Mr.Janakiraman Murugavel are the registered proprietors of about 22 trademarks such as Bharatmatrimony, Tamilmatrimony, Telugumatrimony etc. Out of them, 4 marks are registered under Class 42, covering "marriage bureau, horoscope matching and other matrimonial services, services to facilitate online marriages, profile references, match making services" etc. The others are registered under Class 16, covering printed matter.
16. While the first defendant is a search engine, the second defendant is the proprietor of a web portal, offering matrimonial services with the domain name www.shaadi.com (the word "shaadi" in Hindi means marriage). Similarly, the third defendant 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. (Jeevansathi in Hindi means friend for life). The fourth defendant is also a company having a web portal offering matrimonial services, under the trademark "simplymarry" and a domain name www.simplymarry.com.
17. The grievance of the plaintiff is that whenever a websurfer browses the search engine 'google' using as keywords, any of their 22 trademarks or the constituent parts thereof (such as Bharat, Assam, Tamil, Matrimony etc.,) the links to the websites of the defendants 2 to 4 also appear on the right hand side of the page, as "sponsored links". Each sponsored link has (i) an ad title (ii) an ad text and (iii) the URL (Uniform Resource Locator) of the advertiser's website. When the trademark of the plaintiff or a mark which is deceptively similar to it, is used in the ad title or ad text, by a competitor, whose advertisement appears on the sponsored links, an infringement happens, according to the plaintiff. Since the choice of the keyword is made by the advertiser through the keyword suggestion tool provided by the search engine, the contention of the plaintiff is that the search engine is guilty of aiding and abetting such infringement. In other words, the plaintiffs charge the defendants 2 to 4 with direct infringment and passing off. They 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 side under the column "Sponsored Links". When the ad titles and/or ad texts appearing in those links, of the respondents 2 to 4, contain either the combined word "BHARATMATRIMONY" or the individual words "BHARAT" and "MATRIMONY", it results in confusion, deception and diversion of business traffic. This is what the plaintiff is objecting to.
20. Admittedly, the adwords used by advertisers in the sponsored links, as ad title or ad text, are selected by the advertisers themselves. But they also receive assistance from the keyword suggestion tool provided by the search engine itself. The keyword tool is search based and it generates ideas matched to the websites of the advertisers. 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 and 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. Suppose an advertiser uses the keyword tool to find the appropriate adwords, which would easily lead to his website, the search engine suggests innumerable keywords that could be adopted by the advertiser so that the link to his website would appear at as many locations as possible.
21. According to the plaintiff, the first defendant 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 adwords, either by way of ad title or ad text or both. According to the plaintiff, the words BHARATMATRIMONY, ASSAMESEMATRIMONY, Bharat, Tamil, etc., are made available by the first defendant in their keyword suggestion tool enabling the other defendants to choose them as their adwords. Consequently, when a websurfer searches the engine, for the various websites of the plaintiff, by typing the words BHARATMATRIMONY or BHARAT or MATRIMONY, the search engine not only displays the details of the websites of the plaintiff as organic results, but also displays in the column reserved for sponsored links, the details of the websites of the defendants 2 to 4 with the title and/or text of the advertisement, carrying the registered 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 defined set of policies. The advertisement policy of the first defendant, a copy of which is filed as a document, shows the policy line adopted by them with respect to trademarks vis-a-vis adwords. The relevant portion of the policy reads as follows:- "Google recognises the importance of trademarks. Our AdWords Terms and Conditions with advertisers prohibit intellectual property infringement by advertisers. Advertisers are responsible for the keywords that they choose to generate advertisements and the text that they choose to use in those advertisements. 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 regarding where the mark is valid and for what goods or services."
24. It is the contention of the first defendant that in view of the aforesaid policy, the first defendant is not actually allowing the registered trademarks of the plaintiff to be used in advertising the products and services of its competitors. In other words, the stand taken by the first defendant is that they do not allow the defendants 2 to 4 or anyone else, to use per se, the registered trademarks of the plaintiff such as BHARATMATRIMONY, ASSAMESEMATRIMONY etc.
25. However, it is contended by the first defendant that since all the registered trademarks of the plaintiff comprise of a combination of two generic or descriptive terms used in common parlance, the plaintiff cannot claim exclusivity and complete control over such words as "matrimony", "bharat", "tamil", "urdu", "punjabi" etc. A person looking for a web portal offering matrimonial services relating to his community, would necessarily type the name of his community, his linguistic identity and the description of the services that he is looking for. Therefore, it is but natural for an advertiser to choose as his adwords, the name of the community, caste or creed and the description of the services. This cannot, according to the first defendant, amount to an infringement. DEFENCE OF THE SECOND DEFENDANT
26. The second defendant, whose website is shaadi.com, has contended 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 amount to infringement. The fact that these separate words form the constituent parts of the registered trademarks of the plaintiff, would not per se make the use of these words, an infringement. The second defendant also contends that all disputes relating to registration and use of domain names are to be referred to and resolved by an international system known as Internet Centre for Assigned Names and Numbers (ICANN), in accordance with the Uniform Domain Names Dispute Resolution Policy (UDRP) and hence the jurisdiction of this Court is excluded in such matters. The second defendant has also given the names of several websites such as www.matrimony.org, www.matrimony.com, www.matrimony.net.in, www.matrimonys.com, www.matrimony.co.za, in support of its contention that the plaintiff cannot claim monopoly over the word "matrimony". The second defendant also claims to be the prior user, with its website in existence from 1996. RESPONSE OF THE THIRD DEFENDANT
27. In their counter affidavit, the third defendant has contended that even as per the admitted averments, the defendants were not using the registered trademarks of the plaintiff, as "marks", while marketing or offering their products and services. Therefore, it is not a case of infringement or passing off, since the words "matrimony", "tamil", "telugu" etc., are not used in the trademark sense, but only in descriptive sense. Moreover, the separate words such as telugu, tamil etc., which together with the word "matrimony" constitute the trademarks of the plaintiff, are words that are indispensable and unavoidable in the context of the websearch for matrimonial services. Therefore, no exclusivity can be claimed nor can any infringement be alleged. It is more so, since no part of the registered trademarks of the plaintiff contain an invented word. It is the further contention of the third defendant that when a search is made on the search engine, using the word "jeevansathi", the website of the plaintiff appears under the sponsored links, indicating thereby that the plaintiff has knowingly and willingly submitted to the business model of the first defendant. Therefore, the plaintiff is, according to the third defendant, estopped from questioning the said model. Moreover, there cannot be an injunction, according to the third defendant, restraining the fundamental right of expression in the form of advertising, 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 against the use of a trademark as an adword. The protection applies only to another mark used in the course of trade. Since the fourth defendant uses the mark "simplymarry", which has no resemblance to any of the marks of the plaintiff, there is no cause of action for the suit. Moreover, the litigation seeks to gain monopoly over keywords, which is anti competitive and hence would become a restrictive trade practice, disallowed by the Competition Act, 2002.
29. From the rival contentions briefly presented above, it is seen that fortunately, there are not many serious factual disputes in the case on hand, except two factual disputes that were originally raised.
(i) The first was on account of the defective pleadings in the plaint as it originally stood, where the plaintiffs failed to plead registration in the name of Mr.Janakiram Murugavel and the assignment made by him in favour of the plaintiff. But after the amendment was allowed, this first objection on erroneous pleadings receded to the background. Though Mr.Arvind P. Datar, learned Senior Counsel appearing for the fourth defendant insisted that the objections to the original pleadings still hold good and that the original pleadings disentitled the plaintiffs to any injunctive relief, I do not think that the real controversy, which is of larger public interest, should get over-shadowed on such technicalities. I am conscious of the fact that even while permitting the amendment, I have reserved liberty to the defendants to raise all these technical objections. But considering the time and efforts taken by the counsel appearing for all the parties, I have chosen to take the bull by its horns. (ii) The second factual dispute is with regard to the actual contents of the adwords, adtext or adtitle. According to the plaintiffs, the trade marks registered in their favour appear as such, on the adtitle and the adtext of the advertisements of the respondents 2 to 4. But according to the first defendant (the search engine), the registered trade marks BHARATMATRIMONY etc., do not appear as such, though the words BHARAT, MATRIMONY etc. appear independently. Disputing the claims of the defendants, the plaintiffs have produced print outs of the web pages showing that at times, the trade marks have been used. But in my considered view, a detailed enquiry into the same may not be necessary in view of the 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 disputes operating in the real physical world, from the disputes of this nature, operating in the virtual world. So let us now undertake a brief journey into the evolution of the virtual world. While persons who are not so familiar with the virtual world, are welcome to join me, the others are free to stay back, relax and come on board at the stage where the discussion from paragraph 42 onwards begin. PRELUDE:
31. It appears that the age of internet, began in 1969 as a network of just 4 computers located at the University of California at Los Angeles, the University of California at Santa Barbara, the University of Utah and the Stanford Research Institute. At around the same time, the U.S. Department of Defence established the Advanced Research Projects Agency (ARPA) and established ARPAnet, the world's first decentralised computer network. Though Doug Engelbart invented the mouse for prototyping an online system for hypertext browsing and editing and the hypertext editing system was developed by Andy Van Dam in the 1960s, the next decade saw the development of electronic mail, telnet and FTP. The early 1980s brought the Transmission Control Protocol (TCP) and Internet Protocol (IP) which led to the development of web technology using Hyper Text Markup Language (HTML) and Hyper Text Transfer Protocol (http). The web technology, known as "World Wide Web" (www), that was developed by Tim Berners Lee while working for CERN in 1991, became available freely from 1993. It led to the development of three basic types of search tools known as (i) search engines (ii) search agents and (iii) hand-built directories.
32. 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. To make a search of what one wants, one has to go to the web page of the search engine and submit key words or search terms, in a simple form. It runs these terms past its database and almost instantly, returns a list of results or hits. The results displayed are so voluminous that if one surfs through them in entirety, one may retire from service or perhaps even from this world.
33. There are several search engines such as HotBot, Alta 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 certain words. HOW SEARCH ENGINES OPERATE:
34. Normally, 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 bar/box in which, the person making the search is 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".
35. The moment one clicks the keyword in the open search option, two types of results are thrown open. The results that appear on the left hand side are known as "organic results" and those that appear on the right hand side are known as "sponsored links" (may be inorganic). Suppose one clicks the phrase "Bharatmatrimony" in the open search option, the page that opens with a set of about 10, out of millions of results, would contain natural results on the left hand side and sponsored links on the right side. The information provided on the left hand side as natural or organic results, is excavated by the search engine, from out of a mine field of data stored in its web pages. The information supplied to the search engine and stored in its store house and the information displayed by the search engine to the internet user, are available free of cost. The results displayed by the search engine are like catalogues, which provide "information gate-ways" to several sites, Therefore, they are available free of cost to the user. But if the user intends to get into the sites, whose links are provided as organic results, he may have to pay a fee to such sites (if so prescribed), though not to the search engine. Some of the sites are also available free of cost.
36. In contrast, the information displayed on the right hand side as "sponsored links", is so displayed, upon payment of charges by the person (advertiser) sponsoring the link, to the company owning the search engine. In other words, the space on the right hand side is virtually like a hoarding site, where one is free to advertise his products or services, by paying necessary charges to the person who owns the search engine. The advertisements could be said to be "hung" in these designated ads-zones and the main source of revenue for the search engines, is only through advertisements hosted on 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 crossed several billions of US Dollars for Google. This is why, "The Economist" remarked in its edition dated 6.7.2006 that "Google is the world's most valuable online advertising agency disguised as a web search engine".
38. Information is retrieved on the internet by typing a query containing what is known as a keyword, into the search engine. Soon as the keyword is typed, the programme searches its data base and returns a list of results. The results are in the form of hyper links related to relevant web pages. Since the search engines do not possess natural intelligence to identify what a person is actually looking for, they use what are known as meta tags to produce the results. Meta tags can be compared to sign posts or indices, which lead one to what he is looking for, along with what he is also not looking for. It is a combination of two ordinary words meta and tag, meaning respectively "denoting position" and "label". Meta tags are embedded in the HTML code and remain invisible to the internet user. When a webpage creator creates the site, he lists meta key words in the computer code that makes up the web page. When someone searching for the information on the internet, types in one or more key words that relate to the information sought in the search field of the search engine, those websites having metatags that match the keywords, come up as hits. The importance of meta tags has slowly been reduced by modern search algorithms.
39. One of the meta tags successfully employed for locating an information, product or service on a search engine, is "keywords". Since all topics, things, products and services are associated with and identified by specific words or a combination of words, the conduct of a search, with the use of such words (keywords), has become the most popular and common mode of search. The moment a keyword is typed, the search engine locates all web pages and hyper links where the same word appears, either separately or as part of another word and displays the links to all pages. Therefore, keywords constitute the lifeline of a search engine and consequently, the advertising policies of search engines, revolve around meta tags.
40. Any online advertising, involves two complimentary programmes designated as "adwords" and "adsense". Since an internet user targets the site on which he wishes to land, only through the use of 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 his website on the sponsored links, but the slot allotted to him in the list of sponsored links, depends upon the price offered by him for the keyword, in comparison to the price offered by others for the very same keyword. Since a search engine is insensitive to what the user actually wants, it would display on the sponsored links, the links to the web pages of a host of products and services, which may even be unrelated to each other or to what the user was actually looking for. For an advertiser, his product and/or service gets advertised in many locations, including those where his competitor's products and services are also displayed by way of advertisement or otherwise. But when the products and services of two or more competitors are displayed in the same location, directly as a result of the choice of keywords which are deceptively similar to the registered trademark of one of them, disputes relating to infringement arise. However, the question to be addressed in such cases, is spelt out by McCarthy on Trademark and Unfair Competition, in the following words: " In the keyword cases, where keyword placement of advertising links is being sold, the search engines are taking commercial advantage of the drawing power and goodwill of these famous marks. The policy question is whether this activity is fair competition presenting web users with useful alternatives or whether it is a form of unfair free riding on the fame of well known marks" Therefore the issue obviously has many dimensions.
ORIGIN OF SUCH DISPUTES WORLDWIDE:
42. To have a better understanding of (i) how trade mark disputes arose in the internet context and (ii) how the war on words or war for words (rather than war of words) in the virtual world is different from that in the real world, it is necessary to see how the internet servers operate. Without doubt, the internet, by far, has been the largest information resource, to have ever existed. The information resources on the internet, are available via networks. These networks have IP addresses (Internet Protocol), expressed as four binary numbers, each of eight bits, normally written as decimal numbers. Necessarily, each server has to be located in a different IP address, as no two servers can either have a living-in relationship or live together under one roof at the same IP address. But since IP addresses are expressed 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 serve several purposes such as (i) making it easily memorable for the user (ii) ensuring a semantic association with the operator or the activities carried on by the operator and (iii) making them relatable to the trademarks or trade names of the servers. It is while doing so, that disputes relating to domain name infringement and passing off, arise.
44. The legal rights in names arise out of either (i) their registration as trademarks, or (ii) their actual use for trading, or (iii) their actual use as personal names by natural or legal persons. In so far as trademarks are concerned, they are generally classified in the order of their increasing distinctiveness: generic, descriptive, suggestive, arbitrary and fanciful. The more distinctive the mark, the greater the protection afforded by law. When a trademark is not inherently distinctive, it may nevertheless be protected if it has acquired distinctiveness, also known as "secondary meaning". But it depends upon the length and manner of use, nature and extent of advertising and promotion, efforts made to promote conscious connection in the public's mind between the trademark and the business and extent to which the public actually identifies the mark and the product or service as measured by Consumer Surveys.
45. In the physical world, the problems posed by identical names being used by different persons, can be resolved more easily than the same can be resolved in the virtual world of internet. This is primarily because of the fact that the virtual world has no geographical limitations or borders, but the laws relating to protection of trademarks are normally country specific or region specific and confined to specific boundaries. The system of allocating rights in names, works reasonably well in the physical world, since the physical world is partitioned both by geographical boundaries and by the categorisation of goods and services. But internet knows no partitioning. Consequently, the holders of similar trademarks in different jurisdictions were rarely exposed to conflict, at least till the advent of globalisation and glasnost. But the domain name system allows every server connected to the internet, to be accessed from anywhere else, resulting in the trademarks registered in the domain owner's jurisdiction being displayed in other jurisdictions, where different persons may hold the mark. Due 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 far better known and hence had a better claim to the domain name shell.de.
47. While one type of disputes relating to infringement of trademarks, arise out of the use of the registered trademarks of a person by another as part of their domain name, another type of disputes, relates to the infringement of trademarks by advertisements posted in the search engines. These advertisements could either be banner advertisements/pop-up advertisements or advertisements which appear as sponsored links. The dispute on hand belongs to the later category.
48. The question as to whether keyword banner advertising should be interpreted as an unauthorised exploitation of a competitor's goodwill, has been the subject matter of business ethics assessment, with reference to Article 10 of the International Chamber of Commerce International Code of Advertising Practice, which states as follows:- "Advertisements should not make unjustifiable use of the name, initials, logo and/or trademarks of another firm, company or institution nor should advertisement in any way take undue advantage of another firm, person or institutions goodwill in its name, trade name or other interested property nor should advertisements take advantage of the goodwill earned by other advertising campaigns." But we are not concerned here with business ethics as the expression "business ethics", has become an oxymoron. Therefore let me now see how the issue has thrown a conundrum in different jurisdictions and how the World Intellectual Property Organization (WIPO) has taken serious note of the disputes arising in several jurisdictions.
49. At its 23rd session held in Geneva from June 30 to July 02, 2010, the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) of the WIPO requested the Secretariat to prepare a background document summarising the past and current developments in the area of trade marks and the internet. In accordance with the request by the SCT, the Secretariat prepared a document and presented the same on 31.8.2010. In the said paper, the SCT took note of the WIPO Joint Recommendation Concerning Provisions on the Protection of Marks and other Industrial Property Rights in Science on the Internet, which was adopted during the series of meetings of the Assemblies of the Member States of WIPO (October 2001). In Chapter IV of 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 advertising, Google neither had the ability to check or control the informations submitted by the competitor nor did it have an obligation to examine the legality of that information. The Google case can be contrasted to the case of Baidu vs. Shanghai Dazhong House Moving Logistics Company Limited. Baidu's bid ranking services allowed Dazhong's competitor to link their web sites to the key words "Dazhong Banchang". Here the Court ordered Baidu to pay compensation to Dazhong."
50. The question whether key word banner advertising results in trademark dilution or creates a likelihood of confusion that leads to infringement, has come up in several jurisdictions. Two of the earliest cases were settled without adjudication. In Estee Lauder Inc. vs. Fragrance Counter, Inc. {189 FRD 269-SDNY 1999}, Estee Lauder sued Excite and The Fragrance Counter in a case involving both metatags and keyword banner advertising. Estee Lauder objected the highlighting of advertisements for Fragrance Counter, whenever internet users searched for its trademarks. However, the defendant agreed to refrain from using Estee Lauder trademarks and the case was settled out of Court.
51. In Reed Elsevier, Inc. vs. Innovator Corp., Reed Elsevier, which owns the LEXIS, NEXIS, and LEXIS-NEXIS trademarks, brought a trademark infringement suit against (i) Innovator, a competing information retrieval system (ii) Altavista, a search engine and portal site and (iii) DoubleClick, a service that assists firms with the placement of advertising on websites and search engines. Reed Elsevier sought damages and injunctive relief due to Altavista's sale of LEXIS, NEXIS, and LEXIS-NEXIS as keywords to its competitors. Reed Elsevier ended the case by entering into settlement agreements with Altavista and DoubleClick.
52. In Metaspinner Media GmbH vs. Google Deutschland, LG Hamburg, No.312 O 887/02 (Nov. 14, 2003), the German District Court in Hamburg found that the search engine engaged in trademark use when it sold advertising space based on keywords identical to the plaintiff's trademark and issued a preliminary injunction against Google. Google refused to accept the injunction as a final ruling; therefore, Metaspinner refiled its case in May 2004 to "prevent further infringements of rights and to sustain the preliminary injunction". But it appears that on September 21, 2004, the Court dismissed 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 the plaintiff's trademark in a non-trademark way-that is in a way that does not identify the source of a product -then trademark infringement and false designation of origin laws do not apply.
56. In Planned Parenthood Federation of America, Inc. vs. Bucci and Jews For Jesus vs. Brodsky, for example, consumers reaching the defendants' sites were falsely led to believe that the site they reached was authorised by the trademark owner and only gradually came to realise their mistake as they kept reading. There was thus a diversion of customers through a combination of initial confusion and switching costs.
57. Thus in the early stages, courts perceived the unauthorised use in metatags, by a person, of someone else's trademark, as creating a confusion in the minds of the consumers. This doctrine, identified as a doctrine of initial interest confusion posits that trademark infringement results when a consumer has been confused prior to purchase. But in normal circumstances, the likelihood of confusion would occur at the time of purchase. All over the world, the Courts have struggled hard, as pointed out above, to grapple with this problem of "initial interest confusion" in the internet context, where internet users seeking a trademark owner's website are diverted (i) either by identical or confusingly similar domain names to websites in competition with the trademark owner or (i) by a competitor's unauthorised use of another's mark as the keyword to generate banner or pop-up advertisements for its products and services.
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Madras High Court
Consim Info Pvt. Ltd vs And on 30 September, 2010
What's in a name ? That which we call a rose,
By any other name would smell as sweet"
would have been acceptable to Shakespeare, but certainly not to WIPO. Today everything is in a name, if the name had acquired significance as a trademark. William Murray, First Earl of Mansfield observed in Morgan vs. Jones, that "most of the disputes in the world arise from words". 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, in respect of the goods and services falling under the Classes indicated in column No.4 thereof:- S.No.
4. The grievance of the plaintiff, in a nutshell, is that the defendants 2 to 4, who also have matrimonial web portals, rendering online matrimonial services in the internet, advertise their services in the search engine "Google", by adopting adwords and texts, which are exactly identical or deceptively similar to the registered trademarks of the plaintiff. With this grievance, the plaintiff has come up with the above suit, praying for the following reliefs:- (a) 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 infringing and/or enabling others to infringe the plaintiff's registered trademarks BHARATMATRIMONY, TAMIL MATRIMONY, 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 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 others to infringe and/or pass off the plaintiff's trademarks and domain names;
(e) An order for rendition of accounts of profits in favour of the plaintiff and against the first defendant to ascertain the profits made by the first defendant on account of allowing such infringements.
5. Along with the suit, the plaintiff also filed 2 applications in O.A.Nos. 977 and 978 of 2009, seeking ---
(i) an interim injunction restraining the respondents, by themselves, their directors, partners, men, franchisees, licensees and/or all other persons acting on their behalf from in any manner infringing and/or enabling others to infringe applicant's registered trademarks BHARATMATRIMONY, TAMIL MATRIMONY, 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, pending disposal of the suit; and (ii) an interim order of injunction restraining the respondents, 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 applicant'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.
6. On 17.9.2009, a learned Judge granted ex parte ad interim orders of injunction in both the applications. But on 7.10.2009, the blanket interim orders of injunction were vacated by the learned Judge and a direction was issued to the search engine (viz., the first defendant) to adhere to their business policy of protecting the registered trademarks, by ensuring that others do not use such registered trademarks in their "Adwords".
7. Complaining of violation 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, the plaintiff, of their own accord, came up with an application in A.No.6379 of 2009, seeking an amendment of the plaint and the original applications. The scope of the amendment sought for, was (i) to insert paragraph 8-A in the plaint so as to make it clear that Mr.Janakiraman Murugavel was the registered Proprietor of most of the trademarks and that he had assigned them in favour of the plaintiff, of which he is the promotor/director (ii) to delete the words "www." and ".com" and (iii) to substitute the correct address of the second defendant in the long and short cause title.
10. By an order dated 21.1.2010, the application for amendment A.No. 6379 of 2009 was allowed by me and the amendments were also carried out. Even while allowing the amendment, I reserved liberty to the defendants to raise all their objections in the applications for injunction and in the suit. The reasons that persuaded me to allow the amendment were - (a) that Mr.Janakiraman Murugavel is undoubtedly the registered Proprietor of most of the trademarks listed in the above table;
(b) that the plaintiff company is also the registered Proprietor of a few of them ;
(c) that there is no dispute that Mr.Janakiraman Murugavel is the promotor/ director of the plaintiff; and
(d) that even in the first instance it was Mr.Janakiraman Murugavel who had signed and verified the pleadings, including the plaint and the affidavit in support of the applications for injunction.
11. Therefore it was obvious that there was a mix up, between Mr.J. Murugavel's identity as an individual and his identity as the promotor/director of the plaintiff-company. This had led to improper and shabby pleadings on the part of the plaintiff in the plaint filed in the first instance. After being pointed out, the plaintiff sought amendment and hence the amendment was allowed, as it did not alter the character and nature of the dispute raised in the suit. Moreover, the dispute on hand raises larger issues of global concern and hence I did not wish to short circuit the same, by rejecting the prayer for amendment and by throwing out the plaint on hyper technical grounds, though it could have suited me very much and saved much of the botheration that I had to undergo later.
12. The plaintiff has also come up with another application in A.No. 247 of 2010, seeking to implead 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.Vineet Subramani, learned counsel appearing for the second defendant, Mr.Satish Parasaran, learned counsel for the third defendant and Mr.Arvind P.Datar, learned Senior Counsel for the fourth defendant. GRIEVANCE OF THE PLAINTIFF:
15. The plaintiff as well as its promoter Mr.Janakiraman Murugavel are the registered proprietors of about 22 trademarks such as Bharatmatrimony, Tamilmatrimony, Telugumatrimony etc. Out of them, 4 marks are registered under Class 42, covering "marriage bureau, horoscope matching and other matrimonial services, services to facilitate online marriages, profile references, match making services" etc. The others are registered under Class 16, covering printed matter.
16. While the first defendant is a search engine, the second defendant is the proprietor of a web portal, offering matrimonial services with the domain name www.shaadi.com (the word "shaadi" in Hindi means marriage). Similarly, the third defendant 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. (Jeevansathi in Hindi means friend for life). The fourth defendant is also a company having a web portal offering matrimonial services, under the trademark "simplymarry" and a domain name www.simplymarry.com.
17. The grievance of the plaintiff is that whenever a websurfer browses the search engine 'google' using as keywords, any of their 22 trademarks or the constituent parts thereof (such as Bharat, Assam, Tamil, Matrimony etc.,) the links to the websites of the defendants 2 to 4 also appear on the right hand side of the page, as "sponsored links". Each sponsored link has (i) an ad title (ii) an ad text and (iii) the URL (Uniform Resource Locator) of the advertiser's website. When the trademark of the plaintiff or a mark which is deceptively similar to it, is used in the ad title or ad text, by a competitor, whose advertisement appears on the sponsored links, an infringement happens, according to the plaintiff. Since the choice of the keyword is made by the advertiser through the keyword suggestion tool provided by the search engine, the contention of the plaintiff is that the search engine is guilty of aiding and abetting such infringement. In other words, the plaintiffs charge the defendants 2 to 4 with direct infringment and passing off. They 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 side under the column "Sponsored Links". When the ad titles and/or ad texts appearing in those links, of the respondents 2 to 4, contain either the combined word "BHARATMATRIMONY" or the individual words "BHARAT" and "MATRIMONY", it results in confusion, deception and diversion of business traffic. This is what the plaintiff is objecting to.
20. Admittedly, the adwords used by advertisers in the sponsored links, as ad title or ad text, are selected by the advertisers themselves. But they also receive assistance from the keyword suggestion tool provided by the search engine itself. The keyword tool is search based and it generates ideas matched to the websites of the advertisers. 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 and 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. Suppose an advertiser uses the keyword tool to find the appropriate adwords, which would easily lead to his website, the search engine suggests innumerable keywords that could be adopted by the advertiser so that the link to his website would appear at as many locations as possible.
21. According to the plaintiff, the first defendant 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 adwords, either by way of ad title or ad text or both. According to the plaintiff, the words BHARATMATRIMONY, ASSAMESEMATRIMONY, Bharat, Tamil, etc., are made available by the first defendant in their keyword suggestion tool enabling the other defendants to choose them as their adwords. Consequently, when a websurfer searches the engine, for the various websites of the plaintiff, by typing the words BHARATMATRIMONY or BHARAT or MATRIMONY, the search engine not only displays the details of the websites of the plaintiff as organic results, but also displays in the column reserved for sponsored links, the details of the websites of the defendants 2 to 4 with the title and/or text of the advertisement, carrying the registered 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 defined set of policies. The advertisement policy of the first defendant, a copy of which is filed as a document, shows the policy line adopted by them with respect to trademarks vis-a-vis adwords. The relevant portion of the policy reads as follows:- "Google recognises the importance of trademarks. Our AdWords Terms and Conditions with advertisers prohibit intellectual property infringement by advertisers. Advertisers are responsible for the keywords that they choose to generate advertisements and the text that they choose to use in those advertisements. 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 regarding where the mark is valid and for what goods or services."
24. It is the contention of the first defendant that in view of the aforesaid policy, the first defendant is not actually allowing the registered trademarks of the plaintiff to be used in advertising the products and services of its competitors. In other words, the stand taken by the first defendant is that they do not allow the defendants 2 to 4 or anyone else, to use per se, the registered trademarks of the plaintiff such as BHARATMATRIMONY, ASSAMESEMATRIMONY etc.
25. However, it is contended by the first defendant that since all the registered trademarks of the plaintiff comprise of a combination of two generic or descriptive terms used in common parlance, the plaintiff cannot claim exclusivity and complete control over such words as "matrimony", "bharat", "tamil", "urdu", "punjabi" etc. A person looking for a web portal offering matrimonial services relating to his community, would necessarily type the name of his community, his linguistic identity and the description of the services that he is looking for. Therefore, it is but natural for an advertiser to choose as his adwords, the name of the community, caste or creed and the description of the services. This cannot, according to the first defendant, amount to an infringement. DEFENCE OF THE SECOND DEFENDANT
26. The second defendant, whose website is shaadi.com, has contended 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 amount to infringement. The fact that these separate words form the constituent parts of the registered trademarks of the plaintiff, would not per se make the use of these words, an infringement. The second defendant also contends that all disputes relating to registration and use of domain names are to be referred to and resolved by an international system known as Internet Centre for Assigned Names and Numbers (ICANN), in accordance with the Uniform Domain Names Dispute Resolution Policy (UDRP) and hence the jurisdiction of this Court is excluded in such matters. The second defendant has also given the names of several websites such as www.matrimony.org, www.matrimony.com, www.matrimony.net.in, www.matrimonys.com, www.matrimony.co.za, in support of its contention that the plaintiff cannot claim monopoly over the word "matrimony". The second defendant also claims to be the prior user, with its website in existence from 1996. RESPONSE OF THE THIRD DEFENDANT
27. In their counter affidavit, the third defendant has contended that even as per the admitted averments, the defendants were not using the registered trademarks of the plaintiff, as "marks", while marketing or offering their products and services. Therefore, it is not a case of infringement or passing off, since the words "matrimony", "tamil", "telugu" etc., are not used in the trademark sense, but only in descriptive sense. Moreover, the separate words such as telugu, tamil etc., which together with the word "matrimony" constitute the trademarks of the plaintiff, are words that are indispensable and unavoidable in the context of the websearch for matrimonial services. Therefore, no exclusivity can be claimed nor can any infringement be alleged. It is more so, since no part of the registered trademarks of the plaintiff contain an invented word. It is the further contention of the third defendant that when a search is made on the search engine, using the word "jeevansathi", the website of the plaintiff appears under the sponsored links, indicating thereby that the plaintiff has knowingly and willingly submitted to the business model of the first defendant. Therefore, the plaintiff is, according to the third defendant, estopped from questioning the said model. Moreover, there cannot be an injunction, according to the third defendant, restraining the fundamental right of expression in the form of advertising, 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 against the use of a trademark as an adword. The protection applies only to another mark used in the course of trade. Since the fourth defendant uses the mark "simplymarry", which has no resemblance to any of the marks of the plaintiff, there is no cause of action for the suit. Moreover, the litigation seeks to gain monopoly over keywords, which is anti competitive and hence would become a restrictive trade practice, disallowed by the Competition Act, 2002.
29. From the rival contentions briefly presented above, it is seen that fortunately, there are not many serious factual disputes in the case on hand, except two factual disputes that were originally raised.
(i) The first was on account of the defective pleadings in the plaint as it originally stood, where the plaintiffs failed to plead registration in the name of Mr.Janakiram Murugavel and the assignment made by him in favour of the plaintiff. But after the amendment was allowed, this first objection on erroneous pleadings receded to the background. Though Mr.Arvind P. Datar, learned Senior Counsel appearing for the fourth defendant insisted that the objections to the original pleadings still hold good and that the original pleadings disentitled the plaintiffs to any injunctive relief, I do not think that the real controversy, which is of larger public interest, should get over-shadowed on such technicalities. I am conscious of the fact that even while permitting the amendment, I have reserved liberty to the defendants to raise all these technical objections. But considering the time and efforts taken by the counsel appearing for all the parties, I have chosen to take the bull by its horns. (ii) The second factual dispute is with regard to the actual contents of the adwords, adtext or adtitle. According to the plaintiffs, the trade marks registered in their favour appear as such, on the adtitle and the adtext of the advertisements of the respondents 2 to 4. But according to the first defendant (the search engine), the registered trade marks BHARATMATRIMONY etc., do not appear as such, though the words BHARAT, MATRIMONY etc. appear independently. Disputing the claims of the defendants, the plaintiffs have produced print outs of the web pages showing that at times, the trade marks have been used. But in my considered view, a detailed enquiry into the same may not be necessary in view of the 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 disputes operating in the real physical world, from the disputes of this nature, operating in the virtual world. So let us now undertake a brief journey into the evolution of the virtual world. While persons who are not so familiar with the virtual world, are welcome to join me, the others are free to stay back, relax and come on board at the stage where the discussion from paragraph 42 onwards begin. PRELUDE:
31. It appears that the age of internet, began in 1969 as a network of just 4 computers located at the University of California at Los Angeles, the University of California at Santa Barbara, the University of Utah and the Stanford Research Institute. At around the same time, the U.S. Department of Defence established the Advanced Research Projects Agency (ARPA) and established ARPAnet, the world's first decentralised computer network. Though Doug Engelbart invented the mouse for prototyping an online system for hypertext browsing and editing and the hypertext editing system was developed by Andy Van Dam in the 1960s, the next decade saw the development of electronic mail, telnet and FTP. The early 1980s brought the Transmission Control Protocol (TCP) and Internet Protocol (IP) which led to the development of web technology using Hyper Text Markup Language (HTML) and Hyper Text Transfer Protocol (http). The web technology, known as "World Wide Web" (www), that was developed by Tim Berners Lee while working for CERN in 1991, became available freely from 1993. It led to the development of three basic types of search tools known as (i) search engines (ii) search agents and (iii) hand-built directories.
32. 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. To make a search of what one wants, one has to go to the web page of the search engine and submit key words or search terms, in a simple form. It runs these terms past its database and almost instantly, returns a list of results or hits. The results displayed are so voluminous that if one surfs through them in entirety, one may retire from service or perhaps even from this world.
33. There are several search engines such as HotBot, Alta 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 certain words. HOW SEARCH ENGINES OPERATE:
34. Normally, 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 bar/box in which, the person making the search is 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".
35. The moment one clicks the keyword in the open search option, two types of results are thrown open. The results that appear on the left hand side are known as "organic results" and those that appear on the right hand side are known as "sponsored links" (may be inorganic). Suppose one clicks the phrase "Bharatmatrimony" in the open search option, the page that opens with a set of about 10, out of millions of results, would contain natural results on the left hand side and sponsored links on the right side. The information provided on the left hand side as natural or organic results, is excavated by the search engine, from out of a mine field of data stored in its web pages. The information supplied to the search engine and stored in its store house and the information displayed by the search engine to the internet user, are available free of cost. The results displayed by the search engine are like catalogues, which provide "information gate-ways" to several sites, Therefore, they are available free of cost to the user. But if the user intends to get into the sites, whose links are provided as organic results, he may have to pay a fee to such sites (if so prescribed), though not to the search engine. Some of the sites are also available free of cost.
36. In contrast, the information displayed on the right hand side as "sponsored links", is so displayed, upon payment of charges by the person (advertiser) sponsoring the link, to the company owning the search engine. In other words, the space on the right hand side is virtually like a hoarding site, where one is free to advertise his products or services, by paying necessary charges to the person who owns the search engine. The advertisements could be said to be "hung" in these designated ads-zones and the main source of revenue for the search engines, is only through advertisements hosted on 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 crossed several billions of US Dollars for Google. This is why, "The Economist" remarked in its edition dated 6.7.2006 that "Google is the world's most valuable online advertising agency disguised as a web search engine".
38. Information is retrieved on the internet by typing a query containing what is known as a keyword, into the search engine. Soon as the keyword is typed, the programme searches its data base and returns a list of results. The results are in the form of hyper links related to relevant web pages. Since the search engines do not possess natural intelligence to identify what a person is actually looking for, they use what are known as meta tags to produce the results. Meta tags can be compared to sign posts or indices, which lead one to what he is looking for, along with what he is also not looking for. It is a combination of two ordinary words meta and tag, meaning respectively "denoting position" and "label". Meta tags are embedded in the HTML code and remain invisible to the internet user. When a webpage creator creates the site, he lists meta key words in the computer code that makes up the web page. When someone searching for the information on the internet, types in one or more key words that relate to the information sought in the search field of the search engine, those websites having metatags that match the keywords, come up as hits. The importance of meta tags has slowly been reduced by modern search algorithms.
39. One of the meta tags successfully employed for locating an information, product or service on a search engine, is "keywords". Since all topics, things, products and services are associated with and identified by specific words or a combination of words, the conduct of a search, with the use of such words (keywords), has become the most popular and common mode of search. The moment a keyword is typed, the search engine locates all web pages and hyper links where the same word appears, either separately or as part of another word and displays the links to all pages. Therefore, keywords constitute the lifeline of a search engine and consequently, the advertising policies of search engines, revolve around meta tags.
40. Any online advertising, involves two complimentary programmes designated as "adwords" and "adsense". Since an internet user targets the site on which he wishes to land, only through the use of 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 his website on the sponsored links, but the slot allotted to him in the list of sponsored links, depends upon the price offered by him for the keyword, in comparison to the price offered by others for the very same keyword. Since a search engine is insensitive to what the user actually wants, it would display on the sponsored links, the links to the web pages of a host of products and services, which may even be unrelated to each other or to what the user was actually looking for. For an advertiser, his product and/or service gets advertised in many locations, including those where his competitor's products and services are also displayed by way of advertisement or otherwise. But when the products and services of two or more competitors are displayed in the same location, directly as a result of the choice of keywords which are deceptively similar to the registered trademark of one of them, disputes relating to infringement arise. However, the question to be addressed in such cases, is spelt out by McCarthy on Trademark and Unfair Competition, in the following words: " In the keyword cases, where keyword placement of advertising links is being sold, the search engines are taking commercial advantage of the drawing power and goodwill of these famous marks. The policy question is whether this activity is fair competition presenting web users with useful alternatives or whether it is a form of unfair free riding on the fame of well known marks" Therefore the issue obviously has many dimensions.
ORIGIN OF SUCH DISPUTES WORLDWIDE:
42. To have a better understanding of (i) how trade mark disputes arose in the internet context and (ii) how the war on words or war for words (rather than war of words) in the virtual world is different from that in the real world, it is necessary to see how the internet servers operate. Without doubt, the internet, by far, has been the largest information resource, to have ever existed. The information resources on the internet, are available via networks. These networks have IP addresses (Internet Protocol), expressed as four binary numbers, each of eight bits, normally written as decimal numbers. Necessarily, each server has to be located in a different IP address, as no two servers can either have a living-in relationship or live together under one roof at the same IP address. But since IP addresses are expressed 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 serve several purposes such as (i) making it easily memorable for the user (ii) ensuring a semantic association with the operator or the activities carried on by the operator and (iii) making them relatable to the trademarks or trade names of the servers. It is while doing so, that disputes relating to domain name infringement and passing off, arise.
44. The legal rights in names arise out of either (i) their registration as trademarks, or (ii) their actual use for trading, or (iii) their actual use as personal names by natural or legal persons. In so far as trademarks are concerned, they are generally classified in the order of their increasing distinctiveness: generic, descriptive, suggestive, arbitrary and fanciful. The more distinctive the mark, the greater the protection afforded by law. When a trademark is not inherently distinctive, it may nevertheless be protected if it has acquired distinctiveness, also known as "secondary meaning". But it depends upon the length and manner of use, nature and extent of advertising and promotion, efforts made to promote conscious connection in the public's mind between the trademark and the business and extent to which the public actually identifies the mark and the product or service as measured by Consumer Surveys.
45. In the physical world, the problems posed by identical names being used by different persons, can be resolved more easily than the same can be resolved in the virtual world of internet. This is primarily because of the fact that the virtual world has no geographical limitations or borders, but the laws relating to protection of trademarks are normally country specific or region specific and confined to specific boundaries. The system of allocating rights in names, works reasonably well in the physical world, since the physical world is partitioned both by geographical boundaries and by the categorisation of goods and services. But internet knows no partitioning. Consequently, the holders of similar trademarks in different jurisdictions were rarely exposed to conflict, at least till the advent of globalisation and glasnost. But the domain name system allows every server connected to the internet, to be accessed from anywhere else, resulting in the trademarks registered in the domain owner's jurisdiction being displayed in other jurisdictions, where different persons may hold the mark. Due 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 far better known and hence had a better claim to the domain name shell.de.
47. While one type of disputes relating to infringement of trademarks, arise out of the use of the registered trademarks of a person by another as part of their domain name, another type of disputes, relates to the infringement of trademarks by advertisements posted in the search engines. These advertisements could either be banner advertisements/pop-up advertisements or advertisements which appear as sponsored links. The dispute on hand belongs to the later category.
48. The question as to whether keyword banner advertising should be interpreted as an unauthorised exploitation of a competitor's goodwill, has been the subject matter of business ethics assessment, with reference to Article 10 of the International Chamber of Commerce International Code of Advertising Practice, which states as follows:- "Advertisements should not make unjustifiable use of the name, initials, logo and/or trademarks of another firm, company or institution nor should advertisement in any way take undue advantage of another firm, person or institutions goodwill in its name, trade name or other interested property nor should advertisements take advantage of the goodwill earned by other advertising campaigns." But we are not concerned here with business ethics as the expression "business ethics", has become an oxymoron. Therefore let me now see how the issue has thrown a conundrum in different jurisdictions and how the World Intellectual Property Organization (WIPO) has taken serious note of the disputes arising in several jurisdictions.
49. At its 23rd session held in Geneva from June 30 to July 02, 2010, the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) of the WIPO requested the Secretariat to prepare a background document summarising the past and current developments in the area of trade marks and the internet. In accordance with the request by the SCT, the Secretariat prepared a document and presented the same on 31.8.2010. In the said paper, the SCT took note of the WIPO Joint Recommendation Concerning Provisions on the Protection of Marks and other Industrial Property Rights in Science on the Internet, which was adopted during the series of meetings of the Assemblies of the Member States of WIPO (October 2001). In Chapter IV of 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 advertising, Google neither had the ability to check or control the informations submitted by the competitor nor did it have an obligation to examine the legality of that information. The Google case can be contrasted to the case of Baidu vs. Shanghai Dazhong House Moving Logistics Company Limited. Baidu's bid ranking services allowed Dazhong's competitor to link their web sites to the key words "Dazhong Banchang". Here the Court ordered Baidu to pay compensation to Dazhong."
50. The question whether key word banner advertising results in trademark dilution or creates a likelihood of confusion that leads to infringement, has come up in several jurisdictions. Two of the earliest cases were settled without adjudication. In Estee Lauder Inc. vs. Fragrance Counter, Inc. {189 FRD 269-SDNY 1999}, Estee Lauder sued Excite and The Fragrance Counter in a case involving both metatags and keyword banner advertising. Estee Lauder objected the highlighting of advertisements for Fragrance Counter, whenever internet users searched for its trademarks. However, the defendant agreed to refrain from using Estee Lauder trademarks and the case was settled out of Court.
51. In Reed Elsevier, Inc. vs. Innovator Corp., Reed Elsevier, which owns the LEXIS, NEXIS, and LEXIS-NEXIS trademarks, brought a trademark infringement suit against (i) Innovator, a competing information retrieval system (ii) Altavista, a search engine and portal site and (iii) DoubleClick, a service that assists firms with the placement of advertising on websites and search engines. Reed Elsevier sought damages and injunctive relief due to Altavista's sale of LEXIS, NEXIS, and LEXIS-NEXIS as keywords to its competitors. Reed Elsevier ended the case by entering into settlement agreements with Altavista and DoubleClick.
52. In Metaspinner Media GmbH vs. Google Deutschland, LG Hamburg, No.312 O 887/02 (Nov. 14, 2003), the German District Court in Hamburg found that the search engine engaged in trademark use when it sold advertising space based on keywords identical to the plaintiff's trademark and issued a preliminary injunction against Google. Google refused to accept the injunction as a final ruling; therefore, Metaspinner refiled its case in May 2004 to "prevent further infringements of rights and to sustain the preliminary injunction". But it appears that on September 21, 2004, the Court dismissed 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 the plaintiff's trademark in a non-trademark way-that is in a way that does not identify the source of a product -then trademark infringement and false designation of origin laws do not apply.
56. In Planned Parenthood Federation of America, Inc. vs. Bucci and Jews For Jesus vs. Brodsky, for example, consumers reaching the defendants' sites were falsely led to believe that the site they reached was authorised by the trademark owner and only gradually came to realise their mistake as they kept reading. There was thus a diversion of customers through a combination of initial confusion and switching costs.
57. Thus in the early stages, courts perceived the unauthorised use in metatags, by a person, of someone else's trademark, as creating a confusion in the minds of the consumers. This doctrine, identified as a doctrine of initial interest confusion posits that trademark infringement results when a consumer has been confused prior to purchase. But in normal circumstances, the likelihood of confusion would occur at the time of purchase. All over the world, the Courts have struggled hard, as pointed out above, to grapple with this problem of "initial interest confusion" in the internet context, where internet users seeking a trademark owner's website are diverted (i) either by identical or confusingly similar domain names to websites in competition with the trademark owner or (i) by a competitor's unauthorised use of another's mark as the keyword to generate banner or pop-up advertisements for its products and services.
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