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TMI Blog2012 (9) TMI 1220X X X X Extracts X X X X X X X X Extracts X X X X ..... s are the defendants in the Suit. The appellant filed the suit in C.S.No.832 of 2009 for the following reliefs;- a) a permanent injunction restraining the defendants, by themselves, their directors, partners, men, servants, agent, broadcasters, representatives, advertisers, franchisees, licensees and/or all other persons acting on their behalf from in any manner infringing and/or enabling others to infringe plaintiff's registered trademarks BHARATMATRIMONY, TAMILMATRIMONY, TELUGUMATRIMONY etc., a list whereof is annexed hereto and marked as Annexure-A and/or its variants by including them jointly or severally as Adwords , Keyword Suggestion Tool or as a keyword for internet search or as meta tag in any other manner whatsoever; b) a permanent injunction restraining the defendants, by themselves, their directors, partners, men, servants, agents, broadcasters, representatives, advertisers, franchisees, licensees and/or all other persons acting on their behalf from in any manner diverting the plaintiff's business to its competitor's by using 1st and 5th defendants' search engine in which the plaintiff's trademarks and domain names BHARATMATRIMONY.COM, TAMIL ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in any manner diverting the appellant's business to its competitors by using the first respondent's search engine in which the applicant's trademarks and domain names BHARATMATRIMONY.COM, TAMILMATRIMONY.COM, etc., a list whereof is annexed hereto and marked as Annexure-A and/or its variants, by using as Adwords, Keyword Suggestion Tool, as a keyword for the internet search and/or as meta tags and thereby passing off and enabling others to pass off the business and services of the applicant's competitors including respondents 2 to 4 as that of the applicant or in any other manner whatsoever, pending disposal of the suit. 4. The case of the appellant as reflected in the plaint is that it is a private limited company involved in online matrimonial services using internet as a vehicle/platform. In the course of business the appellant has adopted several trademarks including inter-alia Bharatmatrimony, Tamilmatrimony, Telugumatrimony, Assamesematrimony etc. The appellant is the market leader in the concerned business. The appellant owns several domain names at par with its registered trademarks. Since the appellant's business is web-based, most of the appellant&# ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... pondents 2 to 4 are their competitors, who also are in the similar line of business, namely online matrimonial services. The appellant's trademarks such as Bharatmatrimony, Tamilmatrimony, Telugumatrimony etc., are all heavily searched by the internet users in whole or separated with a space. The first and fifth respondents have included the appellant's trademark in their Key-word Suggestion Tool programme and offering them to the appellant's competitors to use them as their keyword and part of their advertisement in the Sponsored Link. The respondents 2 to 4 knowingly bid for such KeyWords which are identical to the appellant's trademarks to divert the business meant for the appellant. 4.5 Further, according to the appellant, internet users enter the appellant's trademark 'bharatmatrimony' in the search engine of the 1st and 5th respondents to reach the appellant's website, the Sponsored Link appearing in the search result page would also display the competitors' advertisements with identical terms such as 'bharatmatrimony' or 'bharat matrimony' (with a space in-between) as their Ad Title and /or Ad Text in the content of the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n the side of the appellant, it could be seen that out of the 22 trademarks, 4 trademarks were registered under Class 42, which covers marriage bureau, horoscope matching and other matrimonial services, services to facilitate online marriage, profile references, match making services etc. The remaining 18 trademarks were registered under Class 16, which covers printed matters. 9. The first respondent namely Google India Private Limited is a search engine, the second respondent is the proprietor of a Web portal, offering matrimonial services with the domain name www.shaadi.com. The third respondent is a business division of a company by name Info Edge India Ltd., also having a Web portal offering matrimonial services with the domain name www.jeevansathi.com. The fourth respondent is also having a Web portal offering matrimonial services under the trademark simplymarry and a domain name www.simplymarry.com. 10. It is also not in dispute that whenever any of the registered trademarks of the appellant 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... person who wishes to choose appropriate keywords will have to enter into the KeyWord Suggestion Tool of the search engine and type one or more descriptive words or phrases solicit keyword ideas. Immediately, the engine displays all keywords related to the word entered by the advertiser, along with the volume of monthly searches made on the same keyword and the additional keywords that could possibly be considered for use by the advertiser. In case an advertiser uses the KeyWord Tool to find the appropriate Adwords, which would easily lead to his website, the search engine suggests several key words that cold be adopted by the advertiser so that the link to his website would appear at as many locations as possible. 13. According to the appellant, the first respondent has provided in the Keyword Suggestion Tool, the registered trademarks of the plaintiff or deceptively similar variations thereof, thereby inducing the trade rivals to choose them as their Adwords, either by way of Ad title or Ad text or both. According to the appellant, the words BHARATMATRIMONY, ASSAMESEMATRIMONY, Bharat, Tamil, etc., are made available by the first respondent in their KeyWords Suggestion Tool enab ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... appellant having registered the trademarks they have the exclusive right to use the trademarks in relation to the goods or services in respect of which the trademark is registered and to obtain relief in respect of infringement of the trademark. In support of his contention, the learned Senior Counsel relied on Section 28 of the Act, which deals with the exclusive rights conferred by registration, which includes services also. According to him, when once the learned Judge found prima facie case in favour of the appellants, injunction order should have followed. (d) The learned Senior counsel also relied upon Section 29(c) of the Act, which states that a registered trade mark is infringed, if the trade mark is identical and is used in relation to identical goods or services; and that such use is likely to cause confusion on the part of the public or is likely to be taken to have an association with the registered trademark. The learned Senior Counsel relied upon Sections 17 and 31 of the Act. Section 17 deals with the effect of registration of parts of a mark seeks to omit the provision relating to requirement of disclaimer and to explicitly state the general proposition that the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 51(a)(ii) of the Act Further the learned Single Judge in paragraph 20(h) has held as follows;- (h) Further it has been argued that the advertisement may also appear automatically as the user types keywords and search for the same. This is usually a part of Adwords which are in the nature of hints or options given by the search engines as and when the suer asks any query from search engine. The example of the same is given that supposingly if the user is typing Punjaban. The song may appear and along side the same some options of Punjabi matrimonial may appear automatically which happens due to the search engines exercise and not due to the acts of the defendants. iii) (2004) 6 SCC 145 (SATYAM INFOWAY LTD V. SIFYNET SOLUTIONS (P) LTD.). The main question that arose for consideration before the Honourable Supreme Court is as to whether internet domain names are subject to the legal norms applicable to other intellectual properties such as trade marks. The Honourable Supreme Court, has held that the first domain-name has misrepresented its goods or services through its promotional activities and the first domain-owner would thereby lose its custom. It is apparent, theref ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... CONCERN), wherein the Honourable Supreme Court has held as follows;- There might be and there will be obvious differences deliberately introduced to avoid a possible change of infringement. A bad copy does not cease to be a copy. If the Court, on a consideration of all the relevant circumstances and a comparison of the plaintiffs' picture and the infringing picture comes to the conclusion that the defendants' picture was consciously copied from the work of the plaintiff, that would be sufficient to hold that copyright is infringed. v) 2011 (4) SCC 85 (T.V.Venugopal vs. Ushodaya Enterprises Ltd., anr), wherein the Honourable Supreme Court has extracted the finding of the Supreme Court decision reported in (2004) 3 SCC 90 (MIDAS HYGIENE INDUSTRIES (P) LTD. SUDHIR BHATIA) in paragraph 5, which reads as follows;- 5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also become necessary if it prima facie appears that the adoption of the mark was itself dishonest ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nsumers have to be saved from such fraudulent and deceitful conduct of the appellant; (h) Permitting the appellant to sell his product with the mark Eenadu would be encroaching on the reputation and goodwill of the respondent Company and this would constitute invasion of proprietary rights vested in the respondent Company; (i) Honesty and fair play ought to be the bases of the policies in the world of trade and business. vi) 2003(26) PTC 555 (PERRY BOTTLING CO., V. SS SODA SOFT DRINKS COMPANY), wherein a learned Judge of the Rajasthan High Court in paragraph 25 of the Judgement has held as follows;- In the light of above discussion, if the facts of this case are seen then it is clear that the product of the plaintiff is non-alcoholic soft drink which is being used by the general public in the cities as well as in the villages, therefore, it can be presumed that the product will be purchased by both villagers and resident of cities, illiterate as well as literate and, therefore, the question has to be approached from the point of view of a man of average intelligence and imperfect recollection and the Hon'ble Apex court held that the purchaser in India cannot be ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... red view the conditions specified in Clause (a) of Section 29(4) of Trade Marks Act are satisfied. 15. Countering the submissions made by the learned Senior Counsel appearing on behalf of the appellants, Mr.P.S.Raman learned Senior Counsel appearing for the respondents 1 and 5 submitted as follows:- a) the appellant is ex-facie guilty of gross suppression and bad conduct in not having disclosed and explained the fact that till date, they themselves are participating in the Google's AD Words program and they are not guilty of using not only the other defendant's name (including registered marks) as their keywords but also using their names in the URL of their ad texts. Since the appellant is indulging in such an act cannot be permitted to plead the same as an illegal act and seek for equitable intervention. b) Yahoo!, a U.S. based corporation, who is also another internet search engine, is a strategic investor and shareholder in the appellant company. The AdWords equivalent program of Yahoo! also involves use of trademarks and other proprietary words in their keywords. Yahoo! is also doing the same alleged infringement of trademarks of appellant, but no action has b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ngine does not focus on whether such keywords are trademarked or otherwise. g) Learned Senior Counsel appearing for the respondents 1 and 5 contended that Section 29(1) to (4) of the Act is the provision directly governing what constitutes an infringement of a trademark. Under Section 29(2)(c) of the Act that Court may presume that confusion likely to be caused in the minds of the Public. In all other cases, the use of the mark in the course of trade should be demonstrated to be as 'likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademark. Therefore, deception and confusion are sine qua non in an infringement action unless it is identical goods and services and identical mark. h) Further, Google by allowing the use of trademarked words in the AdWords program does not constitute a ' use' in the same goods or services category since it is not in the business of providing matrimonial services. Therefore, Section 29(2)(c) is not attracted. The act of Google in allowing trademark words to be used as keywords in an internal algorithm and does not amount to use in the course of trade as required under Se ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... l) The learned Senior Counsel for the respondents 1 and 5 relied upon the following judgments in support of his contention:- i) Judgement of European Court of Justice (ECJ) in 2009C-236/08, C237/08 and C 238/08 dated 23.03.3010 ( Google France Sarl, Google Inc vs. Louis Vuitton Malletier; Google France vs. Viaticum Luteciel; Google France vs. CNNRRH), wherein in paragraphs 55 and 58 of the judgment, the European Court has held as follows;- 55. With regard, next, to the referencing service provider, it is common ground that it is carrying out a commercial activity with a view to economic advantage when it stores as keywords, for certain of its clients, signs which are identical with trade marks and arranges for the display of ads on the basis of those keywords. 58. It follows from the foregoing that a referencing service provider is not involved in use in the course of trade within the meaning of the above mentioned provisions of Directive 89/104 and of Regulation No.40/94. ii) First Chamber dated 22.09.2011 (Interflora Inc, vs. Marks Spencer Plc,), wherein the European Court of Justice has confirmed the principles laid down in the above referred judgment iii) ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ption under Section 29(3) of the Act is not applicable to them. c) The judgments cited by the appellant that is 2011 (4) CTC 417 (Blue Hill Logistics v.Ashok Leyland Ltd.), and 2007 (35) PTC 474(Mad) (Health Glow Retailing Pvt. Ltd. v. Dhiren Krishna Paul) are not applicable to the present case, since in both the cases the Court found that despite the phonetic, visual and aural similarity the registration in different classes would be sufficient to preclude the grant of injunction, if the defendant had due cause to use the similar mark. d) The court also took notice of the fact that the phrase 'Health and Glow' was only a generic/descriptive term used to describe the services rendered, and hence held that this was sufficient to satisfy the due cause requirement under Section 29(4) of the Act. e) In the present case, the phrase 'Assamese matrimony' is nothing more than a mere description of the services rendered. There is due cause for the second respondent to display this phrase in its advertisement and hence, the second respondent squarely falls within the protection of Section 29(4) of the Act. Therefore, the appellant is not entitled for injunction. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... for the goods. M.P.Nos.1 and 1 of 2012 17(a) The second respondent filed two petitions in M.P.Nos.1 and 1 of 2012 in O.S.A.Nos.406 and 407 of 2010 respectively under Order XIV and Rule 8 of the Original Side Rules r/w Order 41 Rule 27 CPC to permit them to produce additional evidence in the nature of the document enumerated in Schedule A. (b) In the affidavit filed support of the petition, the second respondent has stated that their counsel had checked the websites maintained by the office of the Registrar of the Trade Mark to verify the documents, but other than for basic details such as confirming the registration status there were no other details available. Merely, the second respondent had also accepted the said documents in good faith and contested the relevant applications against which the present appeals were filed. In paragraph 13 of the affidavit, the second respondent has stated that the documents were produced at the time of hearing on 5th July 2012 and the appellant took an objection that the document should not be taken on record without an application for the same. According to the second respondent, the documents make out a prima facie case against the averm ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... inference if he withholds important documents in his possession which can throw light on the facts at issue. It is not, in our opinion, a sound practice for those desiring to rely upon a certain state of facts to withhold from the Court the best evidence which is in their possession which could throw light upon the issues in controversy and to rely upon the abstract doctrine of onus of proof. ii) In Hamza Haji v. State of Kerala ((2006) 7 SCC 416), wherein the Honourable Supreme Court held that if the court finds that the appellant had deliberately suppressed documents or transactions which had relevance in deciding his claim, the same would amount to fraud. iii) Hoffmann Roche v. Cipla Limited ((2009) (40) PTC 125 (Del)), wherein the Division Bench of the Delhi High Court held that the Court being approached for the grant of an ad interim relief will be unable to form a view on whether the plaintiff has made out a prima facie case. Otherwise it would be a case of suppression of material facts that would have a bearing on the question. iv) Malayalam Plantations Ltd. v. State of Kerala ((2010) 13 SCC 487), wherein the Honourable Supreme Court observed that on an applic ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s test seeks to measure the relationship between the actual words of the mark and the product to which they are applied. If a term requires imagination, thought and perception to reach a conclusion as to the nature of goods, Six Products, 295 F.Supp. at 488, 160 USPQ at 785, it is considered a suggestive term. Alternatively, a term is descriptive if standing alone it conveys information as to the characteristics of the product. In this case, mere observation compels the conclusion that a product branded Fish'Fri is a prepackaged coating or batter mix applied to fish prior to cooking. The connection between this merchandise and its identifying terminology is so close and direct that even a consumer unfamiliar with the product would doubtless have an idea of its purpose or function. It simply does not require an exercise of the imagination to deduce that Fish-Fri is used to fry fish. See Vision Center, 596 F.2d at 116-17, 202 USPQ at 338-40; Six Products, 295 F.Supp at 487-88, 160 USPQ at 784-85. Accordingly, the term Fish-Fri must be considered descriptive when examined under the imagination test . ii) Filipino Yellow Pages, INC v. Asian Journal Publications, INC 198 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 00 is not an idiosyncratic combination. It naturally refers to the year 2000 and that, in my view, is what most people will think of when they see or hear it, used in connection with the marketing of goods of the kind of which registration has been sought. v) Singer Manufacturing Co. v. Loog (8 APP.Cas.15), wherein the House of Lords has held as follows;- The reputation acquired by machines of a particular form or construction is one thing; the reputation of the plaintiffs as manufacturers is another. If the defendant has no right, under color of the former, to invade the latter, neither have the plaintiffs any right under color of the latter to claim (in effect) a monopoly of the former. If the defendant has (and it is not denied that he has) a right to make and sell in competition with the plaintiffs,' articles exactly similar in form and construction to those made and sold by the plaintiffs, he must also have a right to say that he does so, and to employ for that purpose, the terminology common in their trade, provided always that he does this in a fair, distinct and unequivocal way. vi) Horlicks Malted Milk Co. v. Summerskill (1916) 33 RPC 1, wherein Chancery Di ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ic who use the word thermos are not award of any trademark significance, there is not enough dual use to support King-Seeley's claims to monopoly of the word as a trademark. No doubt, the Aspirin and Cellophane doctrine can be a harsh one for it places a penalty on the manufacturer who has made skillful use of advertising and has popularized his product. See 3 Callman, Unfair Competition and Trademarks 1149-50 (2d ed.1950).However, King-Seeley has enjoyed a commercial monopoly of the word thermos for over fifty years. During that period, despite its efforts to protect the trademark, the public has virtually expropriated it as its own. The word having become part of the public domain, it would be unfair to unduly restrict the right of a competitor of King-Seeley to use the word. viii) Profitmaker TM case (1994) RPC 613 wherein the Secretary of State for Trade has held as follows;- In my view the overwhelming impact of the mark is descriptive and laudatory. It tells potential customers, whether retailers or end users, that the product will help them make profits. It is just the sort of combination of two commonwords which other traders might well wish to use. Inde ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t.denied, 380 U.S.913, 144 USPQ 780 (1965). The partnership maintains that Opticks failed to show that the name is descriptive. We disagree. Our previous discussion indicates that in this case Opticks has argued persuasively, not merely with equal force, that the partnership's name is a term descriptive of the products and services provided by an optical store. Aluminum Fabricating Co. v. Season-All Window Corp., 259 F.2d 314, 316, 119 USPQ 61 (2d Cir.1958); Scientific Applications, Inc. v.Energy Conservation Corp.436 F.Supp.354, 360, 195 USPQ 379, 384-385 (N.D.Ga1977). The weight of these arguments is more than sufficient to rebut the prima facie presumption that the name is suggestive rather than merely descriptive. f) In these circumstances, the learned counsel appearing for the third respondent prayed for dismissal of both the appeals. 19) Mr.V.Niranjan, the learned counsel appearing for the fourth respondent has submitted as follows:- a) The appellant has failed to distinguish between the two different claims of infringement that it makes in this case; i) the content of the sponsored link, ii) the mere display of a competitor's advertisement in response to a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... imony , used in the title of the advertisement, are merely descriptive of its services, and therefore not likely to be taken as being used as a trademark under Section 29(1) of the Act. But, 'SimplyMarry' used the word Gujarati Matrimony (with a space) not to answer the question Who are you , but to answer the question What are you . In other words, SimplyMarry, by using those words, does not represent that this is its name, but rather that this is what its website does. Such non-trademark use of a registered trademark is protected both under Section 29 and 30(2)(a) of the Act. i) In support of his contention, the learned counsel relied upon the following judgments:- i)521 F.Supp.2d 188(USDC) (S L Vitamins Inc v. Australian Gold Inc) wherein the United States District Court held that mere display of a competitor's advertisement next to registered goods or services cannot constitute use of infringement. ii) 431 F.Supp.2d 425 (USDC) (Merck Co v. Mediplan Health Consulting), wherein the United States District Court held that selection of trademarks as AdWords does not constitute use because there is no visual representation to any consumer. iii) T ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . 22. 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. On the other hand, the information displayed on the right hand side as sponsored links , is so displayed, upon payment of charges by the advertiser sponsoring the link to the company owning the search engine. By paying necessary charges to the person who owns the search engine, one can advertise his products or services on the right hand side. The search engine mainly derive revenue from the advertisement. The appellant as well as the respondents 2 to 4 advertise their services on the sponsored links by paying necessary charges to Google. 23. 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. If the keyword selected by the advertiser is not selected by anybody else, the search engine makes it available to th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the Act. 27. So far as the first respondent namely Google is concerned they are not involved in the similar services as that of the appellants. The allegation against them is that of contributory infringement or ancillary infringement and they are alleged to have facilitated the infringement by the other respondents, by providing the trademarks of the appellant as key words and by allowing them to use those marks in the adtitle and adtext of their advertisement. 28. It is not in dispute that the appellant is the proprietor of the registered trademarks; the respondents 2 to 4 are also engaged in the business of rendering matrimonial services similar to the appellant's services and that the respondents 2 to 4 were using the words 'Bharat', 'Tamil', 'Matrimony' etc. in the adtitle and/or adtext of their advertisements. 29. According to the respondents, the registered trademarks of the appellant contain a combination of generic and descriptive words and therefore, there is no protection available to them. A 'descriptive mark' as 'a word, picture or other symbol that directly describes something about the goods or services in connecti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he combination of the above word is prohibited. The learned Judge also held that the grant of an order of injunction would lead to the consequence of reducing the choice of words available to competitors, to a very few and resulting in the appellant's monopolising the English word 'Matrimony'. In this connection, the respondents have not pleaded with regard to alternative synonym for the words 'Tamil', 'Malayalam', 'Telugu', 'Matrimony' etc. In the absence of any pleading with regard to the same, we are not agreeing with the finding of the learned single Judge that by preventing the use of the words would leave the respondents 2 to 4 with a very limited choice of words. 33. The respondents contended that since the appellant had obtained registration for a combination of two words and that they have not obtained registration for each of the two independent words, they cannot claim monopoly over each of these two words, which constituting the registered trademarks. The learned Single Judge rightly rejected the contention for the reason that under Sections 15 and 17 of the Act, the the appellant did not seek an injunction restraining the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ity 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, of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of which, the mark is registered. 37) As per 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. 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 expose 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; 38) 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 prescribes 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 detrimental to its distinctive character or (iii) ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... does not amount to an infringing use. The learned Judge after coming to the conclusion held that since registered words of the appellant are descriptive in nature of the individual words, respondents 2 to 4 cannot be held to be guilty of infringement. 44. In the case on hand, for example, if the appellant's registered trade marks namely 'Assamesematrimony' or 'Tamilmatrimony' etc. is clicked, the respondents 2 to 4's links are shown on the right hand side as 'sponsored links'. In the sponsored links the appellant's mark namely for example 'Assameseematrimony' is also shown with a space in between the two words. If one clicks the said word on the sponsored links, it does not goes to 'Assamesematrimony' web site, instead it goes to 'www.shaadi.com', 'www.jeevansathi.com' and 'www.simplymarry.com', which are the respondents 2 and 4. It only mislead the consumers. One would expect that if 'Assamesematrimony' is clicked on the right hand side, it would go only to 'Assamasematrimony' web site, which is appellant's web site, but instead it goes to the respondent's web site. This is evid ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... uality, 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 consists 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. 48. On a reading of Section 9(1)(b) and Sections 31 and 32 of the Act, it could be seen that the registration of a trade mark is considered prima facie evidence of its validity and a registered trade mark cannot be held to be invalid in a legal proceeding on the ground that it is not registered under Section 9 of the Act. 49. Under Section 32 of the Act it is open to the appellant to establish, in the course of trial, that after the registration of the mark, but before the commencement of the legal proceedings, the mark has acquired a distinctive character, in consequence of its use. Therefor ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nse 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. 52). From the above policy, the Google appears to have taking steps to protect the possible infringement of trade marks by the advertisers. Google also provided a mechanism for redressal of complaints, even by a person who is not an Adwords advertiser in Google. Since the appellant and the search engine namely Google are to protect and safeguard the rights of the registered trademarks, we expect the respondents 1 and 5 to strictly enforce the policy to protect and safeguard the rights and interest of the appellant. It is pertinent to note that Google is adopting different policies in different regions. The rationale behind the difference in policy has not been explained by the Google. 53. Whenever a Web surfer types a search term, which matches the adwords selected by the advertiser, the advertis ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e appellant. So far as irreparable hardship is concerned, the same has to be examined and decided only at the time of trial of the suit. 57. Though the learned Single Judge dismissed both the application. In paragraph 203 of the order, the learned Judge made it clear that the first respondent Google should not deprive the appellant of the benefit of their trade mark policy. 58. By order dated 17.09.2009, the learned single Judge granted interim order of injunction as prayed for in O.A.Nos.977 and 978 of 2009. Thereafter, by order dated 07.10.2009, the learned Judge while vacating the interim order of injunction granted on 17.09.2009, passed the following order in paragraphs 19 and 20 which constitute the operative portion of the order, which reads 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 police 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 a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e, preferably before the end of the year 2013 on merits and in accordance with law, without being influenced by the observations made in this judgment. M.P.Nos.1 and 1 of 2012 61. So far as the petitions filed by the second respondent under Order 41 Rule 27 CPC for producing the additional documents, the second respondent has not stated anything in the affidavit as to the delay in producing the documents and they have not stated any reason for not producing the documents before the learned Single Judge. They have not stated anything in the affidavit filed in support of the petition as to the non availability of the documents at the time when the applications were argued before the learned Single Judge. The reasons given by the second respondent for producing the documents at a belated stage are not acceptable and the judgments relied upon by the learned counsel for the second respondent on this aspect are not applicable to the facts and circumstances of the case on hand. The applications are devoid of merits and the same are liable to be dismissed. However, dismissal of the above petitions shall not preclude the second respondent from producing the documents in the suit su ..... X X X X Extracts X X X X X X X X Extracts X X X X
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