2010 (9) TMI 1223 - HC - Indian Laws

Summary

Issues Involved:
1. Infringement of registered trademarks.
2. Use of trademarks in Google AdWords.
3. Liability of search engines for trademark infringement.
4. Defenses based on generic or descriptive terms.
5. Validity of trademark registration.
6. Estoppel and unclean hands.
7. Jurisdiction of ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP).
8. Impleading Google Inc. as a party.

Detailed Analysis:

1. Infringement of Registered Trademarks:
The plaintiff, a company providing online matrimonial services, claimed that the defendants, who also offer similar services, were using adwords and texts in Google advertisements that were identical or deceptively similar to the plaintiff's registered trademarks. This, according to the plaintiff, amounted to trademark infringement.

2. Use of Trademarks in Google AdWords:
The defendants were using keywords identical to the plaintiff's trademarks in Google AdWords, causing their ads to appear alongside search results for the plaintiff's services. The court noted that while such use could be seen as in the course of trade and in advertising, it did not necessarily constitute infringement under Section 29(6) and (8) of the Trade Marks Act, 1999, unless it took unfair advantage or was contrary to honest practices.

3. Liability of Search Engines for Trademark Infringement:
Google argued that it merely provided a platform and did not use the trademarks in a commercial sense. The court acknowledged that the search engine's role was neutral and that Google's policy prohibited the use of trademarks in ad text but allowed their use in keywords. The court held that Google's inclusion of words in the keyword suggestion tool did not amount to contributory infringement unless it was done with knowledge of the trademark registration.

4. Defenses Based on Generic or Descriptive Terms:
The defendants argued that the trademarks consisted of generic or descriptive terms like "Tamil," "Matrimony," etc., which could not be monopolized. The court accepted that these terms were descriptive and essential for describing the services. The use of such terms in advertisements was considered necessary and did not constitute infringement as long as it was in accordance with honest practices.

5. Validity of Trademark Registration:
The defendants contended that the trademarks should not have been registered under Section 9(1)(b) of the Trade Marks Act, 1999, as they were descriptive. However, the court noted that the registration of a trademark is prima facie evidence of its validity under Sections 31 and 32 of the Act. The court held that the validity of the registration could not be challenged at this stage.

6. Estoppel and Unclean Hands:
The defendants claimed that the plaintiff was also using similar keywords in Google AdWords, and thus, could not seek an injunction. The court acknowledged this but did not base its decision solely on this ground, given that both parties were using descriptive terms.

7. Jurisdiction of ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP):
The defendants argued that the dispute should be resolved under ICANN's UDRP. The court rejected this, stating that the jurisdiction of the court was not ousted by the UDRP, and the plaintiff was entitled to seek relief from the court.

8. Impleading Google Inc. as a Party:
The plaintiff sought to implead Google Inc., USA, as a defendant, arguing that it was the parent company and responsible for the policies of Google India. The court allowed this, noting that Google Inc. was a proper party to the suit.

Conclusion:
The court dismissed the applications for interim injunctions, holding that the plaintiff failed to establish a prima facie case of infringement. However, it directed Google to adhere to its AdWords Trademark Policy and allowed the impleadment of Google Inc. The court emphasized that the main suit should proceed uninfluenced by the interim findings.