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TMI Blog2010 (9) TMI 1223X X X X Extracts X X X X X X X X Extracts X X X X ..... 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:- ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... al 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ting 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 applicatio ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tiff; 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 claime ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ce 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 registe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 s ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... o 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 defe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ver-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 wou ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nown 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... re 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. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... h 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 a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on 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 challen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... formation 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 Co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n 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. 58. In US, the use of another's trademark in meta-tags to capture initial consumer attention was also regarded as a potential infringement of a trademark. In Brookfield Communications, Inc. vs. West Coast Entertainment Corp. {174 F.3d 1036-9th Cir. 1999}, the defendant West Coast Entertainment used the plaintiff's moviebuff mark in the metatags of its website. The Court analogised it to the use of a Bill Board bearing the plaintiff's mark to attract consumers interested in the plaintiff's products or services. Although the consumers would ultimately realise that the defendant was not the provider they initially sought, they might decide instead to patronise the defendant's website. The Court held that using another's trademark in one's metatags is much like posting a sign with another's trademark in front of one's store. Elaborating this illustration, the 9th Circuit Court said, Using another's trademark in one's meta-tags is much like pos ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of goods and the degree of care likely to be exercised by the purchaser (7) defendant's intent in selecting the mark and (8) likelihood of expansion of the product lines. 61. Thereafter, the Court accepted the argument of initial interest confusion advanced by the plaintiff, on the ground that the choice of keywords, presented to the advertisers by the search engine and the use of click-through rates as a way to gauge the success of advertisements, showed an intent to confuse. Since an intent to confuse constituted probative evidence of likelihood of confusion, the Court held that the summary judgment issued in favour of the defendants by the District Court was wrong. {Note: But the decision Playboy came in for criticism from academics on two grounds viz., (i) that they were not prohibiting initial interest confusion, but prohibiting initial interest itself; and (ii) that trademark infringement requires likelihood of confusion and not a mere likelihood of diversion.} 62. Extending the road sign metaphor used in Brookfield, the Court held in Playboy that in that case, the scenario was more akin to a driver pulling off the freeway in response to a sign that reads fast f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... deserved a trial, though the plaintiff was held not entitled to interim prohibitory reliefs. 65. After the 'Bill Board' analogy in Brookfield and 'highway sign post'' analogy in Playboy, the Courts extended the initial interest confusion doctrine to correspond to a broader reading of Brookfield, under which real confusion is not required, but a probability of confusion was enough. In Promatek Industries, Ltd vs. Equitrac Cor., for example, the Seventh Circuit upheld an injunction against a service company's use in metatags of the name of a product for which it offered maintenance and repair services. The Court found a probability of initial interest confusion. Similarly, in People for the Ethical Treatment of Animals vs. Doughney, the Court found initial interest confusion based on the use of the domain name peta.org to link to a site entitled People Eating Tasty Animals , a parody of the People for the Ethical Treatment of Animals website that visitors were presumably trying to reach. Once visitors reached the page, there is no way they could have been confused given the very different title and the obviously parodic message of the page. Nonetheless ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tive (89/104). For holding so, the Court gave the following reasons:- The web-using member of the public knows that all sorts of banners appear when he or she does a search and they are or may be triggered by something in the search. He or she also knows that searches produce fuzzy results results with much rubbish thrown in. The idea that a search under the name Reed would make anyone think there was a trade connection between a totaljobs banner making no reference to the word Reed and Reed Employment fanciful. No likelihood of confusion was established. That is not to say, of course, that if anyone actually clicked through (and few did) and found an infringing use, there could not be infringement. Whether there was or not would depend solely on the site content, not the banner. If this had been an Art.5.1(a) case then the position might have been different. For then there would have been no requirement to prove a likelihood of confusion. The question would appear to turn on whether the use of the word Reed by Yahoo at the instance of RBI properly amounted to a use in the course of trade as to which, as I say, I reserve my opinion. It may be that an invisible use ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed by them, so as to increase their rate of clicks. In view of the inducement so made by the search engine, the Court rejected the protection claimed by the search engine under the guarantee limitation clause, fixing total responsibility upon the advertiser for the choice of the keywords, as against third party claims. 69. In GOOGLE INC. vs. AMERICAN BLIND WALLPAPER FACTORY, INC. {5:03-cv-05340-JF}, Google filed an action for a declaratory relief seeking a judicial determination that its adwords advertising program did not infringe American Blind's Trademarks. Initially, American Blind brought a motion to dismiss the complaint of Google, unsuccessfully. Later, American Blind not only answered Google's complaint but also made counter claims against Google as well as third party claims against several other search engines such as Ask Jeeves, Earthlink, AOL, Netscape and Compuserve, for trademark infringement and dilution, false representation, injury to business reputation, unfair competition and tortious interference with prospective business advantage. The defendants to the counter claim (Google and others) brought motions to dismiss American Blind's counter claims ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ase involved issues relating to copyrights, I am tempted to make a reference to it in view of certain principles of law evolved by the U.S. Supreme court. 71. In that case, though the District Court acknowledged that there was infringement of MGM's copyright, the Court allowed the motion of the respondents for summary judgment and the Ninth Circuit affirmed it. The decisions of the trial Court and the lower Appellate Court were based upon the earlier decision of the Supreme Court of the United States in Sony Corporation of America vs. Universal City Studios Inc.{464 US 517}. 72. Reversing the summary judgment in favour of the respondents and remanding the matter for trial, the Supreme Court of the United States held that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, going beyond mere distribution with knowledge of third-party action, and is liable for the resulting acts of infringement by third parties using the device, regardless of the device's lawful uses . 73. The Court distinguished the decision in Sony, on the basis of patent law&# ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... competitors, to appear on the screen of the computer user, whenever the website of the plaintiff was accessed. The District Court granted a preliminary injunction in favour of the plaintiff and the defendant filed an appeal to the Second Circuit. Reversing the decision of the District Court, the Court of Appeals, Second Circuit held that the defendant WhenU cannot be said to use the plaintiff's trademarks within the meaning of the Lanham Act, under two situations viz., (i) when it includes 1-800's website address, which is almost identical to 1-800's trademark, in an unpublished directory of terms that trigger delivery of WhenU's contextually relevant advertisements to computer users; or (ii) when it causes separate, branded pop-up ads to appear on a computer screen either above, below or along the bottom edge of the 1-800 website window. 76. For holding so, the Second Circuit reasoned that a company's internal utilization of a trademark, in a way that does not communicate it to the public, is analogous to a individual's private thoughts about a trademark. Such conduct simply does not violate the Lanham Act, which is concerned with the use of trademark ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f the suits on the ground that their use of the plaintiff's marks was fair use . 80. While dismissing some of the trademark claims against three defendants, on their use of the mark in connection with search engines, the United States District Court, SD New York held that a trademark is used in commerce in connection with the goods, when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale and the goods are sold or transported in commerce . 81. Following the decision of the Court of Appeals Second Circuit in 1-800 Contacts, the District Court further held as follows:- Here, in the search engine context, defendants do not place the ZOCOR marks on any goods or containers or displays or associated documents, nor do they use them in any way to indicate source or sponsorship. Rather, the ZOCOR mark is used only in the sense that a computer user's search of the keyword Zocor will trigger the display of sponsored links to defendants' websites. This int ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... designed to deceive and cause consumer confusion. This is surely neither within the intention nor the letter of the Lanham Act. 85. In FILIPINO YELLOW PAGES, INC. vs. ASIAN JOURNAL PUBLICATIONS, INC. {198 F.3d 1143}, the publisher of Telephone Directory for Filipino-American Community of Southern California brought an action for trademark infringement arising out of the defendant's use of the term Filipino Yellow Pages . The District Court for the Central District of California granted summary judgment in favour of the defendants. While affirming the said decision, the Ninth Circuit pointed out that the law recognises four different categories of terms with respect to trademark protection. They are (i) generic (ii) descriptive (iii) suggestive and (iv) arbitrary or fanciful. A generic term is one that refers or has come to be understood as referring, to the genus, of which the particular product or service is its species. The test to determine whether a term is generic or not, was spelt out by the Court in the following lines:- In determining whether a term is generic, we have often relied upon the who-are-you/what-are-you test: A mark answers the buyer's quest ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the mark Mr.Spicy . What, instead, is being used is the English word spicy as it appears in that phrase. 90. Explaining as to how things operate on the search engine, Justice Morgan held as follows:- I remind myself of what actually appears on the search results, or what did at the relevant time appear, if one typed in the words Mr.Spicy . There is a reference to Sainsbury's. It does not say that all the food sold at Sainsbury's has Mr.Wilson's trade or business as an origin. It is not pretending that Sainsbury's food all comes from Mr.Wilson's trade or business, MR. SPICY. It does not even say that Sainsbury's, amongst the many brands they stock, stock Mr. Wilson's foods under the brand name Mr.Spicy or under the trade mark MR. SPICY. I do not begin to see how what is described in the search response with reference to Sainsbury's has any impact of an adverse character on Mr. Wilson's rights as proprietor of the Community Trade Mark. The same comments apply to the reference to Pricegrabber. 91. After pointing out that the search engine yahoo can make available any word, probably in any language, the Court considered the issue of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... a search on any one of the search engines, using one of the Link Marks would cause a sponsored link to the site to be displayed. If the user clicked on the sponsored link, he would be taken to a display of search results on the site for products by reference to the Link Marks. e-Bay Europe admittedly chose the keywords based on the activity on the site and paid a certain amount for each click-through of each keyword. 95. After referring to Articles 5, 6 and 7 of the Trade Marks Directive (First Council Directive 89/104), the Chancery Division of the High Court of Justice, London, in its decision rendered on 22.5.2009, pointed out that the proprietor of a registered trademark can succeed in a claim under Article 5(1)(a) of the aforesaid Directive, only if six conditions are satisfied viz., (i) there must be use of a sign by a third party; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trademark; (iv) it must be of a sign which is identical to the trademark; (v) it must be in relation to goods or services which are identical to those for which the trademark is registered; and (vi) it must affect or be ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e the infringement of third parties' trademarks by sellers and despite the knowledge of e-Bay Europe about such infringements and e-Bay Europe profiting from such infringements, they were not factors enough to make e-Bay Europe liable as joint tortfeasors. By taking such a view, the learned Judge held that e-Bay Europe were not liable as joint tortfeasors on account of two factors viz., (i) that they were under no legal duty to prevent infringement and (ii) that e-Bay's facilitation with knowledge and an intention to profit, were not enough. 100. After holding e-Bay to be not under any legal obligation to prevent infringement by third parties, the Court then took up the question as to whether e-Bay could at least be injuncted from being made use of as a platform for others to commit infringement. In other words, the question was whether the proprietor of the trademark was entitled to a remedy under Article 11 of the Enforcement Directive. 101. While considering this question, the attention of the learned Judge was invited to three decisions of the Bundesgerichtshof (Federal Court of Justice of Germany known by its acronym BGH ). Those decisions are popularly known as ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ored link might confuse a consumer, it is hardly likely that several different sponsored links appearing on a page that a consumer might believe each one is the true producer or the origin of the product. The Court also held that Google's key word suggestion tool is covered by 230CDA, which merely helped third parties to refine their content. The Court further opined that Google merely provided neutral tools and its ad words program simply allowed competitors to host their digital fliers where they might be most readily received in the cyber market place. 105. In Video Professor Inc. vs. Amazon.com (1:09-CV-00636-REB-KLM), Amazon used the words VIDEO PROFESSOR as the key word to trigger its advertisements. On some occasions, a click on the advertisement led users to land up on pages on which the competitor's products were advertised. But, the Court rejected the claim in view of the express stipulations in the vendor manual (an agreement between Video Professor and Amazon) whereby Video Professor granted a non exclusive, world wide, perpetual and royalty free license to Amazon to use all trade marks in the product information. 106. In the case of Organizacion Veraz v ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nd arose even before the District Court of Tel Aviv-Jaffa (Israel) in Matim Li Fashion Chain for Large Sizes Ltd., Vs. Crazy Lines Ltd. Google Israel Ltd., was cited as the third defendant in the case. The plaintiff as well as the first defendant in that case were runing women fashion retail chains. The grievance of the plaintiff was that Google offered to the first defendant, the registered trade marks of the plaintiff as keywords, resulting in the advertisements of the first defendant appearing aongside the search results of the plaintiff's sites and that the same constituted infringement. But the court analogized the situation to that of a shoe shop owner 'K', hanging the advertisement posters of his shop, on the walls of an escalator or in the exit from the parking lot of a Mall where the shop of his competitor 'M' is located. After adopting such an analogy, the court posed a few questions, which read as follows:- What is the ground for preventing such advertising in a market that values free competition and praises the freedom to choose and practice occupation? Would hanging advertisement of K's business nearby M's shop or even opening a shoe bu ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... LV. Their grievance was that Google offered advertisers, the possibility of selecting keywords which corresponded to Louis Vuitton's trademarks and hence when these trademarks are keyed in, Google's search engine triggered the display of advertisements for sites offering counterfeit versions of LV's products. The Regional Court, Paris (known as Tribunal de grande instance de Paris) found the search engine guilty of infringement and the same was upheld on appeal by Cour d'appel de Paris (Court of Appeal, Paris). The further appeal filed by Google on points of law to the Cour de Cassation was referred to the European Court of Justice for a preliminary ruling on three questions. (b) The second reference arose in the context of proceedings between Google on the one hand and Viaticum SA and Luteciel SARL on the other hand. The complainants were the proprietors of the French trademarks bourse des vols , bourse des voyages and BDV . Their grievance was that entering these trademarks into the search engine triggered the display of ads for sites offering identical or similar products and that Google offered advertisers, the possibility of selecting keywords which co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nd questions in Case C-238/08, which it is appropriate to consider together, the Cour de Cassation asks, in essence, whether Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Regulation No.40/94 are to be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit a third party from displaying, or arranging for the display of, on the basis of a keyword identical with, or similar to, that trade mark which that third party has, without the consent of that proprietor, selected or stored in connection with an internet referencing service, an ad for goods or services identical with, or similar to, those for which that mark is registered. The second part of the discussion of ECJ focussed on the following questions:- By its second question in Case C-236/08, the Cour de Cassation asks, in essence, whether an internet referencing service provider which stores, as a keyword, a sign corresponding to a reputable trade mark and organises the display of ads on the basis of that keyword uses that sign in a way which the proprietor of that mark is entitled to prohibit under Article 5(2) of Directive 89/104 or, in the case where that sign is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ause of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark. 115. After considering the scope of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No.40/94 in relation to Community trademarks, the Court held that the proprietor of a trademark is entitled to prohibit a third party from using, without the proprietor's consent, a sign identical with that trademark, when that use is in the course of trade, is in relation to goods or services which are identical with or similar to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in use in the course of trade within the meaning of the above mentioned provisions, the ECJ then took up for consideration, the question whether the conditions relating to use in relation to goods or services were satisfied. On this question, the Court held that in most cases an internet user, entering the name of a trademark as a search term, would be looking for information covered by that trademark. Therefore, when advertising links to sites offering goods or services of competitors of the proprietor of that mark are displayed beside or above the natural results of the search, the internet user may perceive those advertising links as offering an alternative to the goods or services of the trademark proprietor. In such a situation, the ECJ held that since a sign identical with a trademark is selected as a keyword by a competitor, with the aim of offering internet users, an alternative to the goods or services of the proprietor of the trademark, there was use of that sign, in relation to the goods or services of that competitor. 119. The ECJ then went to the extent of holding that even in cases in which the advertiser does not seek, by its use, as a keyword, of a sign identi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tached thereto, whether the advertiser is a third party vis-a-vis the proprietor of the trade mark or, on the contrary, economically linked to that proprietor, the conclusion must also be that there is an adverse effect on that function of the trade mark. 121. Taking up then, the question of adverse effect on the advertising function, the ECJ accepted that the use by internet advertisers of a sign identical with another man's trademark as a keyword for the purposes of displaying advertising messages, is liable to have certain repercussions both on the advertising use of that mark by its proprietor and on the latter's commercial strategy. However, having regard to the facts and the findings recorded by the Cour de Cassation, the ECJ held in para 98 of its opinion that the use of a sign identical with another person's trademark in a referencing service such as that at issue, in the cases in the main proceedings, was not liable to have an adverse effect on the advertising function of the trademark. 122. Taking up the second part of the discussion, relating to the second question in the first reference, the ECJ concluded that an internet referencing service provider, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party. (2) An internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No.40/94. (3) Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market ('Directive on electronic commerce') must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not pla ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... commercial greed, always scoring a march over the laws, just as crimes always march ahead of law enforcement. Therefore, the road so far travelled appears to have been bumpy and as Austrotrabant's blog put it, the law on the issue has become as confusing as the statement of the Oracle of Delphi could be. In any case, the decisions of various courts cited above, have to be read only in the context of the laws with reference to which they were rendered and hence let us now see the relevant laws in the backdrop of which, those decisions were rendered. 129. In U.S., the Lanham Act is a federal trade mark Act of 1946, to which several amendments have been made in the past three decades. They are (1) The Trademark Counterfeiting Act of 1984; (2) The Trademark Law Revision Act of 1988, making major revisions and creating an Intent to Use system; (3) legislation in 1993 and 1994 implementing the provisions of the NAFTA treaty and the GATT agreement; (4) a 1996 enactment which added an anti-dilution prohibition to federal law; (5) the 1999 Anti-cybersquatting Consumer Protection Act, directed at preventing the Cybersquatting on the Internet of domain names that are confusingly s ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. 6. Limitation of the effects of a trade mark 1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, (a) his own name or address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts; provided he uses them in accordance with honest practices in industrial or commercial matters. 2. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognized by the laws of the Member State in question and within the limits of the territory in which it is recognized. 131. Subsequently, the European Union recognised that the barrier of territoriality ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ietor to prohibit a third party from using in the course of trade: (a) his own name or address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he uses them in accordance with honest practices in industrial or commercial matters. 132. However, Regulation No.40/94 was repealed by Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community Trade Mark (codified version) {(OJ 2009 L 78, p. 1)}, which entered into force on 13 April 2009. But Articles 9, 10 and 12 did not undergo any change. 133. On 8.6.2000, the European Parliament and the Council of European Union issued Directive 2000/31/EC on certain legal aspects of information society services, and in particular electronic commerce, in the Internal Market (Directive on electronic commerce). Article 14 of the said Directive, reads as follows:- 14. Hosting.-1. Where an infor ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ts 2 to 4, are engaged in the business of rendering the same type of services. Though there was an initial dispute about the proprietorship of the trade marks, the same got cleared by virtue of the amendments to the pleadings. Therefore, the plaintiffs are the registered proprietors of the trade marks in question, viz., those listed in the table in paragraph -3 above. Consequently, by virtue of section 28 (1), the plaintiffs have (i) the exclusive right to the use of the trade marks in question (ii) in relation to the services in respect of which, registration is made. Thus, 2 limbs of section 28(1) stand satisfied in the case on hand, in so far as defendants 2 to 4 are concerned. Nevertheless, there is a dispute about what constitutes the use of the trade mark , within the meaning of section 28 (1). 137. Similarly, the liability of the first defendant (search engine) is also in question since the search engine is not engaged in the same line of business as the plaintiff and the alleged infringement by the search engine is not in relation to the same type of goods or services . However the allegation against them is that of contributory infringement or ancillary infringemen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... view of the provisions of Section 29(6). (iv) The plaintiffs themselves are making use of the same keywords suggestion tool and are advertising their services in the search engine, in the same manner in which the defendants 2 to 4 do. When the websurfers search for the sites of the respondents 2 to 4, advertisements of the plaintiff's sites also appear on the right hand side as sponsored links. Therefore, they are guilty of what they are seeking to injunct and hence they are estopped from questioning the policy of the search engine, after having submitted to the same (v) The very registration of the trademarks of the plaintiff is contrary to Section 9(1)(b) of the Trade Marks Act, 1999. (vi) The suit is not maintainable in view of the Uniform Domain Name Resolution Policy adopted by ICANN (vii) Since a search engine is like a directory, the reference to certain words in the directory cannot be termed as infringement. The use of the words constituting the registered trademarks of the plaintiff in the keyword suggestion tool, is not a use in the course of trade. 140. One more dispute was sought to be raised by the counsel appearing for the second defendant. It ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Vol.87 in paras 34 and 35, at pages 271 as follows : 'The true test in determining whether a particular name or phrase is descriptive is whether, as it is commonly used, it is reasonably indicative and descriptive of the thing intended. In order to be descriptive within the condemnation of the rule, it is sufficient if information is afforded as to the general nature or character of the article and it is not necessary that the words or marks used shall comprise a clear, complete and accurate description. The meaning which should be given is the impression and significance which are conveyed to the public. Whether words or marks claimed as trade marks are descriptive or whether they are suggestive or arbitrary and fanciful must be decided with respect to the articles to which they are applied and the mark must be considered as a whole.' 144. Courts have held that when descriptive words are involved, even a small distinguishing element in the use would be regarded as adequate. In Office Cleaning Services Limited Vs. Westminister Window and General Cleaners Limited (1946 (63) RPC 39), the Court of Appeal held that where the name of the business consists of words descrip ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d to monopolise the use of these words. Similarly, the word 'matrimony' is descriptive of the state of marriage of a person. The words 'marriage', 'wedding', etc., may all signify the same meaning, though the origin of these words are from different sources. While the word 'wedding' is an english word denoting a marriage ceremony, the word 'matrimony' is derived from the Latin word 'matrimonium' meaning thereby a rite or state of marriage. On the other hand, the word 'marriage' is derived from the French term 'marier' meaning both a legal union of a man and a woman as well as the act or ceremony marking this. The World Book Dictionary states that while the term 'marriage' emphasises the legal union of a man and woman, the term 'matrimony' is a formal and religious word, applied to the religious bond established by the union and the term 'wedding' is the common word for the ceremony or celebration. 147. Therefore, it is needless to point out that the plaintiff cannot claim monopoly over the individual words 'Tamil', 'Malayalam', 'Telugu', 'Punjabi', 'Assames ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... om using the word 'Tamil' in their advertisements. Similarly if the defendants use the words 'Bharat' or 'Punjabi' or 'Muslim' etc., in conjunction with any word other than 'Matrimony', the plaintiff cannot maintain an action. But the objection of the plaintiff is to the use of the very same combination of words by the defendants, as contained in the registered trademarks of the plaintiff. 149. Though the objection of the plaintiff to the use by the defendants, of the very same combination of words, is well founded prima facie, the same cannot take them to the desired destination. It is on account of a subsidiary question that would then automatically arise for consideration. That question is as to whether the defendants 2 to 4 would be left with any other choice, to advertise their services, if the use of the combination of the above words is prohibited. 150. We have already seen that the defendants 2 to 4 are also in the same line of business as the plaintiff. Therefore, they have no alternative except to advertise their services, only in a manner descriptive of such services. For instance, in a website providing services to men and w ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... xpressively generic if society wishes to appropriate them for cultural use. Similarly, Prof. Wendy Gordon stated in his article On Owning Information: Intellectual Property and the Restitutionary Impulse {78 Va. L.Rev.149} that culture could not exist if all free riding were prohibited within it . 153. Even before the advent of this issue in the internet age, the Supreme Court (of USA) allowed, in Saxlehner vs. Wagner {216 US 375 (1910)}, a natural water producer to use its competitor's mark to identify the product that it was copying. Justice Holmes explained that as long as the defendants did not create confusion about the real source of their product, they were free to tell the public what they are doing and to get whatever share they can in the popularity of the trademarked product by advertising that they are trying to make the same article and think that they succeed . The Court held that by flagging its product as an imitator of the original, they are not trying to get the goodwill of the name but the goodwill of the goods. 154. In Health Glow Retailing Pvt Ltd. Vs. Dhiren Krishna Paul [2007(35) PTC 474], a similar question came up before me for consideratio ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... contained in Sub.Section (1), when a trade mark - (a) contains any part - (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the while of the trade mark so registered.' 157. But, the second defence taken by the defendants, on the basis of Sections 15 and 17, cannot be sustained for one simple reason. The plaintiff does not seek an injunction restraining the defendants from making use of the individual words 'Tamil', 'Malayalam', 'Telugu', 'Punjabi', 'Assamese', 'Matrimony' etc., independently. The plaintiff does not even seek an injunction to restrain the defendants 2 to 4 from using any of the words 'Tamil', 'Malayalam', 'Telugu', 'Punjabi', 'Assamese', etc in combination with any word other than 'Matrimony'. The injunction that they ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the Court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which - (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ect of which, the mark is registered. Sub.Section (4) speaks of infringement in relation to trade marks which have acquired transborder reputation. Sub.Section (5) seeks to prevent a person from adopting someone else's trade mark as part of his trade name or business name. 162. However, Sub.Section (6) clarifies that for the purpose of Section 29, a person uses a registered mark, (i) if he affixes it to goods or the packaging thereof; (ii) if he offers or exposes those goods or services for sale under the registered trade mark; (iii) if he imports or exports the goods under the mark; or (iv) if he uses the registered mark on business papers or in advertising; 163. Under Sub.Section (7), even the application of a registered trade mark on a material intended to be used for labelling or packaging goods or as a business paper or for advertising goods or services, would constitute infringement. Sub.Section (8) goes a step further, by prescribing that a trade mark is infringed even by advertising that trade mark, if such advertising------- (i) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters or (ii) is detrime ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... was echoed by the High Court of Australia in Shell Company of Australia Ltd., Vs. Esso Standard Oil (Australia) Ltd.,{(1961) 1 B IPR 523}. The question which arose in that case was as to whether the use of an animated cartoon oil-drop character in a television commercial, amounted to use of the constituent pictures of a trademark. The court was called upon to decide whether in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer, as possessing the character of the devices or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating or so as to indicate, a connection in the course of trade between the petrol and Shell. The High Court held that the use of a mark in an advertisement of goods is a use in the course of trade and is of course a use in relation to the goods advertised. However, Kitto,J., ultimately held that the use of the oil-drop character was to convey a message that it is that the chemical composition of Shell petrol gives it advantages over its rivals and that since the mark was being used descriptively rather than as a badge of origin, the act ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sed as is reasonably necessary to identify the product or service; and (iii) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. {see New Kids on the Block vs. News Am. Publ'g Inc., 971 F.2d 302, 308 (9th Cir. 1992); Caims vs. Franklin Mint Co. 292 F.3d 1139, 1153-55 (9th Cir. 2002)}. 170. Nominative fair use and initial interest confusion were at the center of the dispute in J.K.Harris Co. vs. Kassel. In this case, J.K.Harris and Kassel were rendering the services of negotiating reductions in tax assessments and resolution of past due tax obligations for clients. Both of them promoted their services online. On its website, taxes.com, Kassel began publishing negative information about Harris on a page that was designed so as to be prominently featured in the search engine results of those seeking information about Harris. Kassel did this by creating keyword density on the page in question: Harris' trade name was used seventy-five times, header and underline tags were placed around sentences containing Harris's trade name, the font size was increased, and links to websites containing inform ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r, in the context of the statutory provisions in India, there are only 2 questions which are relevant in this context. They are:- (1) whether the defendants are using the registered trade mark in the course of trade or using it in advertisements within the meaning of section 2(2)(b) and (c) and 29(6); and (2) whether such use or application constitutes infringement within the meaning of section 29(8). If the defendants 2 to 4 use the individual words constituting the registered trade marks of the plaintiff, in their advertisements in the sponsored links column, then such use would certainly fall within section 2(2)(c)(ii) and 29(6)(d). 175. Therefore we have to see if such use in advertising, satisfies the ingredients of sub-section (8) of section 29 also, so as to constitute infringement. 176. In the case on hand, it is the contention of the defendants that even if they use the individual words or parts of the plaintiff's registered trade marks in their advertisements, such use will not be an use in the trade mark sense, but only in a descriptive sense. This contention has to be viewed in the light of the fact that a web portal rendering online matrimonial services ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... st conduct in trade, which may be applied by the Courts without great difficulty and without any excessive danger of greatly diverging interpretations... The Court further described the concept as expressing a duty to act fairly in relation to the legitimate interests of the trade mark owner, and the aim as seeking to reconcile the fundamental interests of a trade-mark protection with those of free movement of goods and freedom to provide services in the common market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the Treaty seeks to establish and maintain . 179. The European Court further referred to Article 10bis of the Paris Convention for Protection of Industrial Property which uses the very same expression honest practices in industrial or commercial matters . Article 10bis defines an act of unfair competition as one which is contrary to such practices. The said Article runs thus: The following in particular shall be prohibited: 1. all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ce it is not shown that the use is detrimental to the distinctive character of the mark or against the reputation of the mark. Therefore, i hold that though the use by the defendants would be an use in the course of trade and an use in advertising, such use does not amount to an infringing use, in view of the reasons stated above. DEFENCE IV (ESTOPPEL) 182. The fourth contention of the defendants 2 to 4 is that the plaintiff is equally guilty of what the defendants 2 to 4 are alleged to be. According to them, whenever the web surfers attempt to access the sites of the defendants 2 to 4, the links to the sites of the plaintiff are automatically displayed on the right hand side under the sponsored links. Therefore, the defendants 2 to 4 contend that under the law relating to grant of injunctions, a person, who himself is guilty of something, is not entitled to seek a prohibitory order restraining others from doing what he is also guilty of. 183. Interestingly, the third defendant has filed a print-out of an interview given by Janakiraman Murugavel, Founder and CEO of the plaintiff to MediaNama, probably a web journal, as document No.2. The interviewer appears to have que ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nsist exclusive of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service; (c) which consist exclusive of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark. 188. But, unfortunately, the contention based on the validity of registration, cannot be accepted in view of Sections 31 and 32. Under Section 31(1), the registration of a trade mark is considered prima facie evidence of its validity. Under Sub.Section (2) of Section 31, a registered trade mark cannot be held to be invalid in a legal proceeding on the ground that it was not registrable under Section 9. By virtue of Section 32, it is open to the plaintiff to establish in the course of trial that after the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... products and providers of services. Therefore, according to the defendants, the use of the words which constitute the registered trademarks of persons, in the keyword suggestion tool would not amount to an use in the course of trade of the search engine and would not in any case constitute an infringement. 192. But analogizing a search engine to a directory, may not be appropriate for various reasons. In a directory, the name of a person would invariably appear in one or two locations or sites. Say for instance, the name and address of a timber merchant or his advertisement may appear in a directory, at the location where the names and addresses/advertisements of all timber merchants are grouped and displayed. At the most, it may appear (not very often) also at a location where wood products are listed. The reason for this is (i) that there is a constraint of space in a directory and (ii) that the listing in various locations unconnected with the advertiser's products or services would not be of any utility value. But in a search engine, there is no constraint of space, since it operates in the virtual world. Moreover, the selection of locations at which a person's name ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Google's trademark policy does not apply to search results. Our investigations only apply to sponsored links. For trademark concerns about websites that appear in Google search results, the trademark owner should contact the site owner directly. In the case of an AdSense for Domains trademark complaint, an investigation will affect only the participation of the domain name in question in our AdSense for Domains program. Because Google is not a third-party arbiter, we encourage trademark owners to resolve their disputes directly with the advertisers, particularly because the advertisers may have similar ads running via other advertising programs. 194. By adopting the policy extracted above, the search engine appears to have shown concern, about the possible infringement of trademarks by the potential advertisers. It has also provided a mechanism for redressal of complaints. What is important is that the second paragraph of the policy extracted above, shows that even a person who is not an adwords advertiser in Google, is welcome to send a complaint. In other words, the policy to honour registered trademarks, is not merely confined to those who advertise in Google, but also a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... son for adopting different policies in different regions, is actually not very clear. However, in document No.6 filed by Google, containing sample printouts, depicting the component of an ad and explaining the process of search in Google, the first defendant has stated that in accordance with their adwords policy, the plaintiff's registered trademarks, would not appear in the adtext i.e., the title or the text of the ad of others. 198. However, in the screen shots of the defendant's webpages, showing sponsored links ads, filed by the plaintiff as document Nos.48, 49, 50, 51, 52 and 53, the terms Tamilmatrimony , Sindhimatrimony , Punjabimatrimony , Bengalimatrimony , Assamesematrimony etc., are shown to have appeared in the ad title of the advertisements released by the defendants 2 to 4, in the sponsored links column. In some of those webpages, the ad title contains the term as one single term and in some, they appear as separate words such as Tamil Matrimony etc. 199. As I have pointed out elsewhere in the judgment, the appearance of the separate words cannot be taken exception to, in this particular case, in view of the peculiar nature of the combination of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... o to the search engine, since the choice of the words Tamil, Matrimony etc., in the keyword suggestion tool, need not necessarily have happened deliberately. 201. One more contention of the plaintiff is that the search engine is guilty of double standards, in the sense that sponsored links do not appear for certain categories of persons, products and services such as Aircel, HDFC, Microsoft, Nike, ICICI Bank, Oracle, Facebook etc. In support of the said contention, the plaintiff has also filed the print-outs of the relevant webpages as part of document No.69. However, the first defendant has denied this. The first defendant has also filed as document No.16 series, the screen shots of the webpages, where multiple sponsored links appear for HDFC, Oracle, Microsoft and even Google. Therefore, the question as to whether the search engine is adopting double standards, has to be examined only at the time of trial and as on date, the match is equally poised on this issue. 202. Therefore, I hold that the inclusion of the words Tamil , Matrimony etc., in the keyword suggestion tool of the search engine, would not amount to an infringing use, nor would it amount to a contributor ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to 06.10.2009 without any order. On 06.10.2009, the Court heard the matter in part and adjourned it to 07.10.2009 and also extended the interim order till then. 206. On 07.10.2009, the Court heard the arguments on both sides. After adverting to the prayers made and the rival contentions in paragraphs 1 to 8, in its order dated 07.10.2009, the Court pointed out in paragraphs 10 and 13 that the plaint as it stood on that date, required modifications and that therefore, the plaintiff was not justified in seeking exparte injunction with those defective pleadings. Thereafter, the Court referred to the policy of the search engine on the issue and held in paragraphs 19 and 20, which constitute the operative portion of the order, as follows: 19. As of now, in view of my discussion supra, it is suffice to direct that R1 Google India Private Limited would adhere to its present business policy as put forth by the learned senior counsel for R1 that the plaintiff's registered trade marks would be protected by ensuring that others do not use them in their ad words . 20. As such, the interim injunction already granted on 17.09.2009 shall stand vacated and the matter is posted for ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... defendant. The second defendant relies upon the provisions of Order VI, Rule 14A (5)(a) of the Code of Civil Procedure, for seeking stay of the suit. 212. However, I do not think that there is any necessity to stay the suit. The second defendant has entered appearance through counsel and has also filed counter affidavits to the applications for injunction. The second defendant has also come up with substantial applications for stay of suit and rejection of plaint. Therefore, the stage at which the provisions of Order VI, Rule 14A(5) are to be invoked, has already passed. As a matter of fact, a careful perusal of the provisions of sub rules (5), (6), (7) and (8) of Rule 14A of Order VI would show (i) that at any time, the plaintiff can seek the setting aside of the order of stay, after furnishing the true address of the defendant; and (ii) that as per sub rule (8), nothing in Rule 14A shall prevent the Court from directing the service of process at any other address. 213. Now that the second defendant has effectively defended itself, there is no occasion to invoke the said provision. We have already crossed the stage at which the provisions of Order VI, Rule 14A(5) could be in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in the applications for injunction and in the suit. I have noted this in paragraph 10 of this order, even while providing the reasons which persuaded me to allow the amendments. 217. Therefore, all that the defendants 2 and 4 can claim is that these objections can be taken note of in deciding the applications for injunction and in deciding the suit. But, it does not mean that the suit can be thrown out at the threshold, on the ground of defective pleadings, especially after the amendments were allowed. 218. Order VII, Rule 11 enables this Court to reject a plaint (i) where it does not disclose a cause of action; (ii) where the relief is under valued; (iii) where the relief is properly valued, but the plaint is insufficiently stamped; (iv) where the suit appears from the statement in the plaint to be barred by any law; (v) where it is not filed in duplicate; and (vi) where the provisions of Rule 9 are not complied with. 219. A reading of the averments in the affidavits in support of the applications for rejection of plaint would show that the defendants 2 and 4 are attempting to bring the applications within clauses (a) and (d) of Order VII, Rule 11. But, the plaint does ac ..... X X X X Extracts X X X X X X X X Extracts X X X X
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