Following Civil Suits Have Been Filed By ... vs Samsung Electronics Co

[Cites 17, Cited by 0]

Madras High Court

Following Civil Suits Have Been Filed By ... vs Samsung Electronics Co

Bench: N. Sathish Kumar

                                                         O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;
                                       O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019;
                                       O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019;
                              O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and
                                          O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019

                              IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                             Reserved on               Delivered on
                                               25~11~2019                 20~12~2019

                                                             CORAM:

                             THE HONOURABLE MR.JUSTICE N. SATHISH KUMAR
                                   O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;
                          O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019;
                          O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019;
                                  O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019
                                               in C.S.No.327 of 2019; and
                            O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019


                      N.SATHISH KUMAR, J.


                                                   C O M M ON       ORDER

Following Civil Suits have been filed by the Plaintiff M/s.Matrimony.com Limited for the reliefs stated therein I. Civil Suit No.802 of 2018:

a. a permanent injunction restraining the defendant 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 1/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 infringing and /or enabling others to infringe plaintiff's registered trademarks, TAMILMATRIMONY, TELUGUMATRIMONY, KANADAMATRIMONY, KERALAMATRIMONY, etc, a list where of is annexed hereto and marked as Annexure-A and /or its variants by including them jointly or severally as “Keyword Suggestion Tool”, for Search Engine Optimization, Search Engine Marketing, keyword or as adwords in the Internet search or as meta tag in any other manner.

b. a permanent injunction restraining the defendant 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 themselves by using the plaintiff's trademarks and domain names TAMILMATRIMONY, TELUGUMATRIMONY, KANADAMATRIMONY, KERALAMATRIMONY, etc, a list where of is annexed hereto and marked as Annexure-A and /or its variants, as adwords, for Search Engine Optimization, Search Engine Marketing, keyword Suggestion Tool, as a keyword for the internet search and /or as meta tags and thereby passing off and enabling 2/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 others to pass off the business and services of the defendant as that of the plaintiff or in any other manner whatsoever;

c. the defendants be directed to surrender to the plaintiff for destruction all compact discs, master copy, advertising materials, pamphlets, brochures, etc, which bears the plaintiff's registered trademarks and/or any other variants which is phonetically and / or deceptively identical and /or similar to the plaintiff's registered trademarks or in any other form whatsoever;

d. award damages of Rs.10,00,000/- for infringing and / or for passing off and /or for enabling others to infringe and /or pass off the plaintiff's trademarks and domain names;

e. a preliminary decree be passed in favour of the plaintiff directing the defendant to render account of profits made by use of the plaintiff's trademarks and final decree by passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant, after the latter have rendered accounts;

f. for costs of the suit 3/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 II. Civil Suit No.277 of 2019:

a. a permanent injunction restraining the defendant 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 plaintiff's registered trademarks, TAMILMATRIMONY, TELUGUMATRIMONY, KANADAMATRIMONY, KERALAMATRIMONY, TAMILMATRIMONIAL, KANADAMATRIMONIAL etc, a list where of is annexed hereto and marked as Annexure-A and /or its variants by including them jointly or severally as “Keyword Suggestion Tool”, for Search Engine Optimization, Search Engine Marketing, keyword or as adwords in the Internet search or as meta tag in any other manner whatsoever;

b. a permanent injunction restraining the defendant 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 themselves by using the plaintiff's 4/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 trademarks and domain names TAMILMATRIMONY, TELUGUMATRIMONY, KANADAMATRIMONY, KERALAMATRIMONY, TAMILMATRIMONIAL, KANADAMATRIMONIAL etc, a list where of is annexed hereto and marked as Annexure-A and /or its variants, as adwords, for Search Engine Optimization, Search Engine Marketing, 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 defendant as that of the plaintiff or in any other manner whatsoever;

c. the defendants be directed to surrender to the plaintiff for destruction all compact discs, master copy, advertising materials, pamphlets, brochures, etc, which bears the plaintiff's registered trademarks and/or any other variants which is phonetically and / or deceptively identical and /or similar to the plaintiff's registered trademarks or in any other form whatsoever;

d. award damages of Rs.10,00,000/- for infringing and / or for passing off and /or for enabling others to infringe and /or pass off the plaintiff's trademarks and domain names;

5/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 e. a preliminary decree be passed in favour of the plaintiff directing the defendant to render account of profits made by use of the plaintiff's trademarks and final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant, after the latter have rendered accounts;

f. for costs of the suit III. Civil Suit No.418 of 2019:

a. a permanent injunction restraining the defendant 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 plaintiff's registered trademarks, KERALAMATRIMONY, TAMILMATRIMONY, TELUGUMATRIMONY, KANADAMATRIMONY, PUNJABIMATRIMONY etc, a list where of is annexed hereto and marked as Annexure-A and /or its variants by including them jointly or severally as “Keyword Suggestion 6/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 Tool”, for Search Engine Optimization, Search Engine Marketing, keyword or as adwords by bidding for the trade marks in the Internet search or as meta tag in any other manner whatsoever;

b. a permanent injunction restraining the defendant 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 themselves by using the plaintiff's trademarks and domain names KERALAMATRIMONY, TAMILMATRIMONY, TELUGUMATRIMONY, KANADAMATRIMONY, PUNJABIMATRIMONY etc, a list where of is annexed hereto and marked as Annexure-A and /or its variants, as adwords, for Search Engine Optimization, Search Engine Marketing, 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 defendant as that of the plaintiff or in any other manner whatsoever;

7/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 c. the defendants be directed to surrender to the plaintiff for destruction all compact discs, master copy, advertising materials, pamphlets, brochures, etc, which bears the plaintiff's registered trademarks and/or any other variants which is phonetically and / or deceptively identical and /or similar to the plaintiff's registered trademarks or in any other form whatsoever;

d. award damages of Rs.10,00,000/- for infringing and / or for passing off and /or for enabling others to infringe and /or pass off the plaintiff's trademarks and domain names;

e. a preliminary decree be passed in favour of the plaintiff directing the defendant to render account of profits made by use of the plaintiff's trademarks and final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant, after the latter have rendered accounts;

f. for costs of the suit 8/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 IV. Civil Suit No.395 of 2019:

a. a permanent injunction restraining the defendant 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 plaintiff's registered trademarks, TAMILMATRIMONY, TELUGUMATRIMONY, KANADAMATRIMONY, KERALAMATRIMONY, BENGALIMATRIMONY, GUJARATIMATRIMONY, MARATHIMATRIMONY, PUNJABIMATRIMONY, CHRISTIANMATRIMONY, TAMILMATRIMONIAL, KANNADAMATRIMONIAL, PUJABIMATRIMONIAL, SINDHIMATRIMONIAL etc., a list where of is annexed hereto and marked as Annexure-A and /or its variants by including them jointly or severally as for Search Engine Optimization, Search Engine Marketing/Google Adword bidding, in webpages/website of defendant, APP Title, ASO, off line advertisements keyword or as Adwords in the Internet search, or as meta tag in any other manner whatsoever and in violation of the orders dated 19.10.2012, 02.02.2016 and 04.08.2016 passed by the Hon'ble Supreme Court;

9/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 b. a permanent injunction restraining the defendant 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 themselves by using the plaintiff's trademarks and domain names TAMILMATRIMONY, TELUGUMATRIMONY, KANADAMATRIMONY, KERALAMATRIMONY, BENGALIMATRIMONY, GUJARATIMATRIMONY, MARATHIMATRIMONY, PUNJABIMATRIMONY, CHRISTIANMATRIMONY, TAMILMATRIMONIAL, KANNADAMATRIMONIAL, PUJABIMATRIMONIAL, SINDHIMATRIMONIAL etc., a list where of is annexed hereto and marked as Annexure-A and /or its variants for Search Engine Optimization, Search Engine Marketing/Google Adword bidding, in webpages/website of defendant as APP Title, ASO, off line advertisements keyword or as Adwords in the Internet search, or as meta tag and thereby passing off and enabling others to pass off the business and services of the defendant as that of the plaintiff or in any other manner whatsoever; 10/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 c. the defendants be directed to surrender to the plaintiff for destruction all compact discs, master copy, advertising materials, pamphlets, brochures, etc, which bears the plaintiff's registered trademarks and/or any other variants which is phonetically and / or deceptively identical and /or similar to the plaintiff's registered trademarks or in any other form whatsoever;

d. award damages of Rs.10,00,000/- for infringing and / or for passing off and /or for enabling others to infringe and /or pass off the plaintiff's trademarks and domain names;

e. a preliminary decree be passed in favour of the plaintiff directing the defendant to render account of profits made by use of the plaintiff's trademarks and final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant, after the latter have rendered accounts;

f. for costs of the suit 11/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 V. Civil Suit No.327 of 2019:

a. a permanent injunction restraining the defendant 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 plaintiff's registered trademarks, KERALAMATRIMONY, TAMILMATRIMONY, TELUGUMATRIMONY, KANADAMATRIMONY, TAMILMATRIMONIAL, KANNADAMATRIMONIAL, etc., a list where of is annexed hereto and marked as Annexure-A and /or its variants by including them jointly or severally as for Search Engine Optimization, Search Engine Marketing/Google Adword bidding, in webpages/website of defendant, APP Title, ASO, off line advertisements keyword or as Adwords in the Internet search, or as meta tag in any other manner whatsoever and in violation of the orders dated 19.10.2012, 02.02.2016 and 04.08.2016 passed by the Hon'ble Supreme Court;

b. a permanent injunction restraining the defendant by themselves, their directors, partners, men, servants, agents, 12/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

c. the defendants be directed to surrender to the plaintiff for destruction all compact discs, master copy, advertising materials, pamphlets, brochures, etc, which bears the plaintiff's registered trademarks and/or any other variants which is phonetically and / or deceptively identical and /or similar to the plaintiff's registered trademarks or in any other form whatsoever;

13/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

e. a preliminary decree be passed in favour of the plaintiff directing the defendant to render account of profits made by use of the plaintiff's trademarks and final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant, after the latter have rendered accounts;

f. for costs of the suit

2. Pending the above suits, the following applications were taken:

2.a. Application No.5248 of 2019 in C.S.No.395 of 2019 has been filed to order for an appropriate action against the respondent for wilful disobedience of the injunction order, dated 2/7/2019 passed in 14/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

2.b. Application No.628 of 2019 in C.S.No.395 of 2019 has been filed to grant an interim injunction restraining the respondent to infringe applicant's registered trademarks.

2.c. Application Nos.427 of 2019 in C.S.No. 277 of 2019 has been filed to grant an interim injunction restraining the respondent to use the applicant's trademarks and domain names.

2.d. Application No.6521 of 2019 in C.S.No.418 of 2019 has been filed to substitute service to the respondent by effecting publication in a local newspaper having circulation at Bangalore and also affixing the summons at the Court notice Board and the last known residence in C.S.No.418 of 2019.

2.e. O.A.No.655 of 2019 in C.S.No.418 of 2019 has been filed to grant an interim injunction restraining the respondent to infringe applicant's registered trademarks.

15/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

2.f. O.A.Nos.1113 and 1114 of 2019 in C.S.No.277 of 2019 have been filed to grant interim injunction restraining the respondent to infringe others to applicant's registered trademarks.

2.g. Application Nos.5099 and 5100 of 2019 of C.S.No.277 of 2019 and Application Nos.5122 and 5123 of 2019 in C.S. No.327 of 2019 have been filed for the willful disobedience of the injunction order, dated 16/4/2019 30/4/2019 passed by this Court in O.A.Nos.426, 427 of 2019 in C.S.No.277 of 2019 and O.A.Nos.530, 531 of 2019 in C.S.No.327 of 2019 respectively.

3. In all the suits the preliminary contention of the plaintiff is that plaintiff is a pioneer in using the Internet as a vehicle/platform for matrimonial alliance especially in India. The plaintiff started Internet business in the year 1997 www.bharatmatrimony.com and the domain name was registered in 1999 for online matrimonial Services. The plaintiff has registered several domain names such as www.keralamatrimony.com, www.tamilmatrimony.com, 16/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

                          S.No.      Reg No.                   Mark                      Class
                              1       1306407     ASSAMES MATRIMONY                 16
                              2       1535126     ASSAMES MATRIMONY                 42
                              3       1335999     BHARAT MATRIMONY                  16
                              4       1548863     BHARAT MATRIMONY                  35, 42
                              5       2007933     BHARAT MATRIMONY                  9,16,35 & 45
                              6       1306408     BENGALI MATRIMONY                 16
                              7       2007942     BENGALI MATRIMONY                 9, 16, 35 & 45
                              8       1306409     GUJARATI MATRIMONY                16
                              9       2007949     GUJARATI MATRIMONY                9, 16, 35 & 45
                              10      1306410     HINDI MATRIMONY                   16
                              11      1306411     KANNADA MATRIMONY                 16
                              12      2007947     KANNADA MATRIMONY                 9, 16, 35 & 45
                              13      1306413     KERALA MATRIMONY                  16
                              14      2007935     KERALA MATRIMONY                  9, 16, 35 & 45
                              15      1345784     MATRIMONY STAMP                   16
                              16      1306412     MARATHI MATRIMONY                 16
                              17      1306414     MARWADI MATRIMONY                 16
                              18      2007943     MARWADI MATRIMONY                 9, 16, 35 & 45
                              19      1535128     MUSLIM MATRIMONIAL                42
                              20      1306415     ORIYA MATRIMONY                   16
                              21      2007946     ORIYA MATRIMONY                   9, 16, 35 & 45


                      17/60



http://www.judis.nic.in

O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

4. The defendant was also involved in similar business of online matrimonial services which is over lapping with the plaintiff's business. It is the case of the plaintiff that use of its well known trademarks as keywords/adwords for the purpose of business promotion and customer solicitation and for Search Engine Optimization (SEO) and Search Engine Marketing (SEM) by the defendant is intentional, malafide and tainted. The conduct of the defendant is nothing but an unfair trade practice and against the standards of business ethics. 18/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 5 . It is the further contention of the applicant that when one searches on the search engine, Google, by inserting the key word “KERALA MATRIMONY”, the website of the respondent appears in the search result with the title “KERALA MATRIMONY” and by clicking on the link, it directs the user to the website of the defendant in which the respondent again misleadingly advertises the applicant's trademark “KERALA MATRIMONY” in their webpage so as to completely deceive the Internet users. The above facts show that the respondent has optimised his website with SEO (Search Engine Optimization) by using the registered trademarks of the applicant and is bidding for the plaintiff's registered trademarks to advertise as SEM (Search Engine Marketing), as a tool for its SEO and in its webpages illegally so as to increase the visibility of the respondent's website in search engines to the specific keywords of the applicant. Such use by the respondent also amounts to trademark violation of the applicant. The respondent also opt to use other terms such as kalyan, alliance, marriage, Vivaham, wedding etc., to optimise its website for the search engines and in the adtext for paid advertisements. Hence all the applications have filed for interim injunction.

19/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

6. The primary contention of the respondent in the counter is that the suit is not maintainable that Google has to be made as a party. The alleged registrations of the applicant do not deserve to remain in the register and is liable to be cancelled. The respondent who is in offering matrimonial services which are specific to language, region, caste based, cannot be forced to give up on words that are generic and are most appropriate to describe their services.

7. Mr. Aravind Pandian learned senior counsel appearing for the applicant / plaintiff submitted that in the earlier round of litigation this court has held that although the plaintiff was entitled to an injunction, they would not interfere with the order of the Learned Single Judge on account of the undertaking given by google at the interlocutory stage that it would not permit the use of any trademarked term in the adwords program. In the appeal challenging the above order by the defendants the Hon’ble Supreme Court was not inclined to interfere with the order of the division bench of this court. It is his contention the use of competitors trademark either explicitly ie., in the domain 20/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 name or ad text or in the background of as meta tags or key words, causes initial interest confusion by diverting consumer traffic from the website of the legitimate trademark owner. The use of another trader’s mark in meta tags and by other background means has been deemed as a violation of the trade mark owner’s rights by Indian courts. It is his further contention that infringement can be based on confusion that initial customers interest, even though no actual sale is finally completed as a result of the confusion. It is evident when one searches for the plaintiff’s brand such as “Tamil Matrimony”’, one of the defendants advertisement also show up along with the plaintiff’s website. When customer hit a link to one of the defendant’s website and notices that similar services are being offered, such a consumer will not go in specific search of the plaintiff’s website, especially after having found a competitor’s website that offers similar services. Therefore the purpose of using the plaintiff’s trademarks are only as “trigger” for the defendants advertisements, which is sought to be camouflaged as descriptive use and intended to act as “springboard” to enable the defendants to illegally divert the users searching for the plaintiff and their trademarks.

21/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

8. The Learned senior Counsel further submits that the trade mark used in the code as a keyword is invisible to the end-user or customer. Such use, though invisible to the customer, is illegal. Such use is deliberate, and is done in order to increase the hits for the defendants’ website. It is his contention the arguments of the defendants are entirely based on self serving presumptions. owing to the extensive use of the subject marks for the last few decades, the subject mark have come to be associated solely with the plaintiff and have granted significant goodwill and reputation of which the defendants are taking undue advantage. His further submission that “ if the proprietor is the prior user of the trademark, and if such trademark is applied by a subsequent adapter to similar goods /services such use amounts to passing off and he also submits that particular words even though descriptive, may have acquired technical signification which would give to them in the trade, the character of a trademark. It is his further contention, What in each case or in each trade will produce the effect intended to prohibited, is a matter which must depends upon the circumstances of each case and peculiarities of each trade and the 22/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

9. The Learned senior Counsel submit that it was recognized that excepting the space in between, the trademarks used by the defendants are identical and would cause confusion in the minds of the public. There is no logical explanation as to why the plaintiff’s marks with a space must be permitted to be used freely by third parties while trademark protection must extend, as the defendants repeatedly claim, only to the mark without the space. Further, in this sense, the use of the trademark with or without a space, for bidding as key words for advertising the website of the defendants, will have an adverse 23/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

10. The Learned senior counsel further submits that if the defendant adopts an identical/similar mark subsequently, in website there by diverting traffic from the plaintiff’s website, such use by the defendant is deemed to be dishonest and malafide. In the presence case, the defendants have failed to establish that their use of the plaintiff’s registered trademark in a descriptive sense and the words contained in such trademarks do not have alternatives. There is no evidence of any third-party use of the plaintiff’s trademarks except for the purpose of online advertising thereby usurping the goodwill and reputation acquired by the plaintiff and his further contention is when there is a judicial establishment of a proposition of law or fact between the parties to earlier litigation and when the same questions arise in later litigation, the established propositions are treated as conclusive inter se the same parties.

24/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

11. The Learned senior Counsel further submits that there is no legal basis for this argument and there is no variance in the jurisprudence between the online and offline marks. In the present case, the customer who searches for the plaintiffs mark, when clicking upon the defendants’ advertisements would immediately be rerouted to the defendant website, and may lose any interest in availing the plaintiffs service even if he understands that the defendant is not connected with the plaintiff. This this immediacy in the possible confusion and loss of economic opportunity in fact makes this principle rather apt for the present scenario. It is his further contention that the result are “naturally” occurring is wholly incorrect, and results are due to SEM and SEO activities, and any result in the landing page in either ads or organic results is a direct result of deliberate design. It is worthwhile to note that such bidding “commoditize” the plaintiff’s trademarks, allowing them to be bought by the defendants to act as contextual triggers for their advertisements. This is also directly contradictory to the defendants’ arguments that such use is descriptive, as it exposes the defendants’ intension to commoditize the 25/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

12. In support of his contention the learned Senior Counsel for the Plaintiffs relied upon the following Judgments:

1. Kapil wadhwa & ors Vs. Samsung Electronics Co.

ltd [2012 (194) DLT 23]

2. Christian Louboutin SAS Vs. Nakul Bajaj [2018 (253) DLT728]

3. SNJ Distilleries Ltd. Vs. Imperial Spirits P. Ltd. [2010 (4) LW 304 ] 26/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

4. Reddaway Vs. Bamham [ 1896 RPC 218 ]

5.Ishi Khosla Vs. Anil Agareal & Anr. [ 2007 (34) PTC 370 (Del)]

6.mInfo Edge (India)Pvt. Ltd. Vs. Shailesh Gupta & Anr. [ ILR 2002 (I) DEL 220 ] 7· Info Edge (India) Ltd. Vs. Sumanta Bhattacharya [ (2017) 240 DLT 737 ] 8· Regina Vs. Hogan [ 1974 All ER 142 ] 9· Inovation Ventures, LLc Vs. N.V.E., Inc No.10- 2353 ( 6th Cir.2012) [763 F. 3d 524]

13. Mr.K.Harishankar, learned Counsel appearing for the defendant/respondent in C.S.No.277 of 2019 and Mr.Sathish Parasaran, learned Senior Counsel appearing for the Respondent/ Defendant in O.A.No.530 and 531 of 2019 in C.S.No.327 of 2019 and Mr.R.Satish Kumar, learned counsel for the respondent/defendant in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018 submitted that the plaintiff has miserably failed to explain why Google Inc., was not added as a party to the present suit particularly when they were a party to the earlier round of litigation, this Hon’ble Court refused to grant interim injunction in favour of the plaintiff against the other 27/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 defendants. The plaintiff by filing this suit is re-litigating and attempting to obtain interim injunction which were earlier refused by this Hon’ble court and also confirmed by the Hon’ble Supreme Court. It is his further contention that in fact, the plaintiff has also filed screenshots along with the plaint filed by it, where certain terms entered into the google search result yield result pertaining to the respondents website as a sponsored link. However, the Respondent reiterates that it has not bid for any adword consisting of the term “KERALAMATRIMONI” (Without space). While so, the Respondent’s cannot be held liable for the plaintiff’s registered trademark. He also states that the plaintiff has failed to note that the entity with the best information, is Google Inc. Had Google Inc. be made party to the present proceedings, it would have been made amply clear that there has been no bid made by the defendants of the plaintiff’s registered trademark.

14. The learned senior counsel Mr.Sathish Parasaran further submits that the plaintiff approached this court with unclean hands. The plaintiffs have miserably failed to note that the earlier litigation resulted in the plaintiff being denied injunction by both the Single 28/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 Judge and the Division Bench. It is his further contention the Defendant was never a party to the earlier proceedings, and in any event is not bound by the decisions therein and he is not liable for the either infringement or for passing off in so for as any person using as internet search engine is definitely aware of how a search engine works and in any event such a person would not be deceived into believing that the respondents website is associated with that of the applicant’s. It is further submitted that the assertion is demonstrably false, in so for as the defendant has submitted on affidavit that it has not in any manner of bid for the plaintiff’s registered trademark and that in any event it is entitle to a bid for the words “Bharat Matrimony” (with space) or “KERALA Matrimony” ( with space) in so for as they are nothing more than a combination of two generic words and the plaintiff does not have any right over the same. It is his further contention, in the typeset of Documents filed along with the plaint, the plaintiffs have not filed any document to show that the use of the words “KERALAMATRIMONY” (with/without space) has thrown up any results of the defendant. That have been only at the time of oral submission, through a document that has not been filed as evidence. Therefore the 29/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

15. It is his further contention that admittedly the matrimonial services offered by the plaintiff and the defendant are aimed to cater to the needs of millions of Indians across the world belonging to/ originating from the various regions of India. Hence the use of the words kerala together with the word matrimony on a search engine by internet users would definitely mean that such user is looking for matrimonial subject / service for Keralites or atleast those speaking Malayalam and the respondent which caters to the matrimonial requirements of keralites and Malayalis is entitles to listed in the search so conducted. It is further submitted that the use of the keywords “Kerala Matrimony” etc. by the defendant is to indicate the nature and purpose of the service offered, and hence does not amount to infringement of the plaintiffs trademark as provided for under section 30(2) (a) of the Act. Further, on account of the word matrimony as well as Bharat/Kerala/etc. being of non-distinctive 30/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

16. The Learned senior Counsel further contended that the plaintiff marks are prima facie descriptive /generic and the plaintiff’s trademark are a non- unique combination of two commonplace words, first being the names of popular castes/ communities / languages / geographical places, i.e. TAMIL, TELUNGU, BENGALI, GUJARATI etc. and the second being a dictionary word, i.e. MATRIMONY / MATRIMONIAL , which are synonymous to marriage or a state of being married or relating to marriage. It is submitted that combination of generic /common words is prohibited. The Honourable Delhi High Court in Lownebrau AG and another vs. Jagpin Breweries Ltd., 31/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

17. In support of his contention he relied upon the following Judgments:

1. Lowenbrau AG & Anr. Vs. Jagapin Breweries Ltd. [ (2009) 257 DLT 791]

2. Stokely Van Camp, Inc Vs. Heniz India Pvt.

Ltd. [ (2010 171 DLT16]

3. Marico Ltd. Vs. Agro Tech Foods Ltd 32/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

4. Lubin Ltd. Vs. Johnson and Johnson [2015 (1) Mh.L.J. 501]

18. Mr.Sathish Parasaran learned Senior Counsel also appearing for the Respondent/Defendant in O.A.Nos.627 and 628 of 2019 in C.S.No.395 of 2019 submitted that in the earlier round of litigation this court refused to grant interim injunction in favour of the plaintiff and against the defendant. The Hon’ble division bench also considered the undertaking given by Google India Pvt. Ltd that plaintiff registered trademarks will be protected by ensuring that others do not use them in therir “as words”. His further submitted that defendant has never violated the above said orders passed by the Supreme Court. In fact the allegedly infringing use complained off by the plaintiff in the present suit was available on the defendant’s website www.shaadi.com at least since 2013 as apparent from the web archive of the defendants website. Moreover the expressions PUNJABI 33/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

19. It is his further submission that free competition is a general rule, whereas exclusive right is an exception. Advertising for a brick and mortor business is non contextual or targeted advertising. Online platform being contextual a website has to necessarily use relevant keywords to remain visible and attract existing as well as new customers. These keywords necessarily include the name of the product sold or the kind of services offered. He further submitted that nobody can claim immunity from fee competition, whether by virtue of trademark law otherwise, and because of trademark as keywords from search engines does not constitute trademark use. The plaintiff’s claim is effectively a request to the court to restrain competitors from 34/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

20. The learned senior counsel further submitted that the plaintiff’s mark are prima facie descriptive /generic and these marks of the plaintiff are inherently devoid of any distinctive character because they describe the class of goods or services, rather than plaintiff’s service and the plaintiffs marks do not meet answer the question test. 35/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 Therefore the plaintiff’s marks are generic/descriptive and cannot be monopolized by the plaintiff to the exclusion of others. His further submission that the defendant used the word Gujarat Matrimony (with a space ) or Tamil Matrimony etc. not to answer the question _ “ who are you” but to answer the question _ “what are you”. In other words, defendant 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 under section 30(2)(a). Whether this is used in the title of advertisement or in the body or otherwise in any manner whatsoever is not important, because in all these cases it is descriptive. His further submission nobody can have any monopoly over words like _ Tamil and Matrimony, whether individually or in combination. And his contention plaintiff’s trademarks are a non- unique combination of two commonplace words, first being the names of popular castes /communities / languages / geographical places, i.e. TAMIL, TELUNGU, BENGALI, GUJARATI, KERALA etc. and the second being dictionary word, i.e. ‘MATRIMONY / MATRIMONIAL, which are synonyms to marriage are state of being married or relating to 36/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

21. In support of his contention he relied upon the following Judgments:

1· McCain International Ltd. Vs. Country Fair Foods Ltd. [1981 RPC 69]

2. British Vacuum Cleaner Company, Ltd. Vs. New Vacuum Cleaner Company, Ltd. [1907 2 ch.

312]

3. Jeryl lynn Trademark [1999 FSR 491 ]

4. In re Joseph crosfields & Sons Ltd. [1910 1 Ch.130] 5· Society of Motor Manufacturer and traders Vs. Motor Manufacturer and traders Mutual Insurance [ 1925 ch. 675]

22. It is relevant to note that the earlier round of litigation, the plaintiff herein has filed a suit. In the above suits, similar applications 37/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

23. The learned Single Judge of this Court after elaborate discussion, has not granted injunction. The above judgment has been reported in CONSIM INFO PVT LTD Vs. GOOGLE INDIA PVT LTD & FOUR OTHERS [2010 (6) CTC 813]. The same issue raised in the earlier litigation is also almost similar in the instant cases. In paragraph No.146, the learned Single Judge, at paragraph 146 has observed and held that the words “Tamil”, “Muslim”, etc., are descriptive items, indicating a race, language, ethnic group or a community and no one is entitled to monopolise the use of these words. Similarly, the word 'matrimony' is descriptive of the state of marriage of a person.

24. In paragraph 147, learned Single Judge has held that 38/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

25. In paragraph 148, learned Single Judge has recorded that the question as to whether the registered trade marks of the plaintiff have acquired secondary meaning or not, has to be tested only on the strength of the evidence let in.

26. Ultimately, the learned Single Judge refused to grant any injunction against which appeal was preferred before the Division Bench of this Court. The Division Bench has held that even assuming that the choice of the words “Tamil”, “Matrimony”, etc., in the keyword suggestion tool need not necessarily have happened deliberately, but the combination of two words with a space in between have happened only deliberately. This aspect can also only be examined at the time of trial by examination of witnesses and ultimately orders of the learned 39/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

27. SLP was filed against the abovesaid order. The Hon'ble Supreme Court did not interfere with the order passed by the Courts below. However, the Hon'ble Supreme Court continued with the interim orders, restraining the respondents from displaying their names in the website of the petitioner therein in the “Adwords” programme of the Google. The previous suit is still pending for trial and in the process of examination. Now, the present suits ae filed wherein the google is not made as defendant. The entire issue raised in this suit based on the programme of the google.

28. It is well settled that merely because the mark is registered, injunction will not automatically follow, when validity of registration is questioned in the written statement/pleadings. While deciding whether injunction should be granted or not, a tentative view is required to be taken on the question of validity of registration and principles for grant of injunction applied. However, final decision on validity of registration is to be taken by the authorities and not by the 40/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

29. Though the Plaintiff has registered the trademark in his name viz., "Tamil Matrimony" matrimony is descriptive word. Similarly, the word in Kannada, Malayalam and Telugu is also descriptive. In fact, all major Indian languages have registered as trade mark. There is no synonym for such word. For example the word Tamil is indicating language. Similarly, the word Muslim indicating religion and Kanada and Telugu also indicate the respective languages. The word matrimony is only relate to marriage in descriptive nature. When the words are descriptive in nature, merely because the registration is obtained by the plaintiff the same cannot be a ground to grant an order of 41/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

30. It is the main contention of the of the Plaintiff that the Defendant has deliberately used the plaintiff's trademarks as keywords and adwords on the search engines. It is the contention that one searches on the search engine, Google, by 42/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 inserting the keyword "Tamil matrimony", the website of the defendant appears in the search result with the title "Tamil matrimony" and by clicking on the link, it directs the user to the website of the defendant in which the defendant again misleadingly advertises the plaintiff's trademark "Tamil matrimony" in their webpage so as to completely deceive the internet users. Therefore, the defendant has optimised their website with SEO (Search Engine Optimization) by using the registered trademaks of the Plaintiff and is bidding for the Plaintiff's registered trademarks to advertise as SEM (Search Engine Marketing) as a tool for its SEO and in its webpages illegally so as to increase the visibility of the defendant's website in search engines to the specific keywords of the plaintiff. Such use by the defendant also amounts to trademark violation of the plaintiff. The defendants also optimized their website for ranking high and to increase visibility in the search results and is committing infringement of the plaintiff's registered trademark. 43/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

31. It is the contention of the all the defendants that the trademarks registration obtained by the plaintiff is highly generic expressions, it would prevent any person from marketing or promoting their website at all and thereby illegally retain a monopoly which is against the principles of trademark law. The 44/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

32. The Plaintiff seeks to virtually eliminate the said words from the purview of common usage in internet with respect to 45/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 searching matrimonial alliances which is not a mere unfair trade practice but is clearly against all cannons of ethics and morality. During the course of the argument it is admitted by the Plaintiff's counsel that plaintiff cannot and does not claim any monopoly over the word matrimony. It is also relevant to note that in the reply statement to the counter affidavit the Plaintiff themselves have filed that they are not seeking injunction to restrain the respondent/defendant from using any of the words `Tamil`, `Malayalam', 'Telugu', 'Panjabi', 'Assamese', etc.,in the combination with any word other than 'matrimony'. It is also relevant to note that the word 'matrimony' the same cannot be substituted either as it is the most common and competent word for looking for alliances for marriages. Hence it is the main contention fo the Defendant that the plaintiff sought to restrain the defendant from using any of the words Tamil`, `Malayalam', 'Telugu', 'Panjabi', 'Assamese', etc. in combination with the particular word 'matrimony'. It is relevant to note that the word 46/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

33. In this regard, it is relevant to refer the judgment of the Full Bench of Bombay High Court in Lupin Limited vs. Johnson 47/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

"60. The question posed for consideration in the reference:

"Whether the Court can go into the question of the validity of the registration of the plaintiff's trade mark at an interlocutory stage when the defendant takes up the defence of invalidity of the registration of the plaintiff's trade mark in an infringement suit?" is answered thus:

In cases where the registration of trade mark is ex facie illegal, fraudulent or shocks the conscience of the Court, the Court is not powerless to refuse to grant an injunction, but for establishing these grounds, a very high threshold of prima facie proof is required. It is, therefore, open to the Court to go into the question of validity of registration of plaintiff's trade mark for this limited purpose, to arrive at a prima facie finding."

34. It is also relevant to refer the judgment of the Delhi High Court in Marico Industries vs. Agro Tech Foods Ltd. [2010 (43) PTC 39] 48/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

(i) The court can at an interlocutory stage take a prima facie view as to the validity of a registered trade mark. This view can be taken based on averments made in the written statement/ pleadings.

[Lowenbrau AG and Anr. v. Jagpin Breweries Ltd and Anr. MIPR 2009 (1) 356]. The pleadings in this regard, as in every other case, has to be read "meaningfully" (see Begum Sabiha Sultan v. Nawab Mohd. Mansur Ali Khan and Ors.

MANU/SC/1970/2007 : (2007) 4 SCC 343)

(ii) Some marks are inherently incapable of distinctiveness. [Asian Paints Ltd v. Home Solutions Retail (India) Ltd. MANU/MH/0699/2007 : 2007 (35) PTC 697 (Bom)

(iii) The rights under Section 28 are subject to other provisions of the Trade mark Act. Also the registered proprietor or the permitted user can exercise his rights if the registered mark 'is valid'. 49/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

(iv) A descriptive mark can be registered provided it has acquired secondary meaning [Godfrey Phillips India Ltd v. Girnar Food & Beverages (P) Ltd. MANU/SC/0541/2004 : 2004 (5) SCC 257]

(v) If a descriptive mark is one, which is, essentially a combination of common English words the user of the marks has to bear the risk of, some amount of confusion. No monopoly can be claimed by the user of the mark. [Cadila Health Care Ltd. v.

Cadila Pharmaceuticals Ltd. 2001 PTC 300 (SC) & JJ.R. Kapoor v. Micronix India 1994 Supp. (3) SCC 215;

(vi) The mark can be impugned both at the stage of registration and post registration. See provisions of Section 9(l)(a) to (c) of the Trade Marks Act for challenge at time of registration and Section 30 and 35 for challenge after registration.

(vii) If the registered mark and the rival mark are not identical; in other words the two marks are similar then the same test as in the case of passing off 50/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

MANU/SC/0304/1969 : AIR 1970 SC 1649.

35. When the registration of Trademark ex facie illegal or shocks the consensus of the court, the courts are not powerless to refuse the injunction. Therefore from the above judgments the Court also at the time of interim relief can go into the question of allowing the registration of the plaintiff trademark for the limited purpose, to arrive at prima facie finding. Admittedly the word in Tamil, Kanada, Assam, Kerala and Telugu for generic nature. In fact it relate to a particular language. Similarly the word matrimony is also dictionary word and it is competent word for looking for alliances for marriage. When the advertisement was made through the virtual word in the internet the adwords / keywords sold by the Google, any competitor can enter internet with keyword. It is also relevant to note that the 51/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

36. The documents filed in the typed set from page Nos.161 to 182, when carefully perused, the registered trademark of the plaintiff namely Keralamatrimony is used in the search engine, only Keralamatrimony will appear first and others below their link. It is not in dispute that the plaintiff and the defendants are in same services. Once, they are paid for their advertisement, the advertisements were seen with the blue box containing the prefix 'AD'. The ranking of paid advertisements is based on the bidding which has to be paid for 52/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

37. The Google which is operating the entire programme in their search engine is not made a party in the suit. The Google having given an undertaking before this Court in an earlier occasion that the plaintiff's registered trade mark would be protected by ensuring that others do not use them in their 'AdWords'. Whether or not, those policies were implemented by the google, there is no evidence. Further, Google has not been arrayed as a party before this Court. Unless the Google is made a party and policy is implemented by them, as long as sufficient permission is granted to all the competitors, plaintiff cannot seek injunction merely based on their registration. The 53/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019; O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 word Tamil and matrimony are descriptive words and there is no synonyms for the words Tamil matrimony. Matrimony is a common word found in the dictionary. Both the words are descriptive in nature. The trademark of the plaintiff as Tamil matrimony, Kanada Matrimony, etc. The documents filed before this Court indicate that if the word matrimony alone is used, different kind of links will appear in their ranking as per their paid amount As long as Google is not made a party and people have no other choice of advertisements except through search engine, they cannot be prevented until the Google has implemented its policy in selling the registered trademark as Adwords. The plaintiff has placed much emphasis on the interim Order of the Apex Court stating that some of the defendants prevented from using Adwords programme of the Google. It is relevant to note that even if the word matrimony is used, the page will show according to the rates paid for the advertisement. Therefore, only when the Google is made a party in the suit and Google come before this Court, it can be ascertained how the entire programme has been made in the search engine and without the Google as a party, this Court cannot make roving enquiry.

54/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

38. It is also to be noted that during the course of the hearing, it was admitted by the learned Senior Counsel Mr.Arvind Pandian that the plaintiff cannot and does not claim monopoly over the word matrimony. It is to be noted that the document filed by the plaintiff particularly the registration certificates, clearly indicate that the description of the goods/services registered also mentioned word 'matrimony'. In the reply to the counter affidavit, the plaintiff himself admitted that it reiterated and clarified that the applicant is not seeking monopoly on making use of the individual word, Tamil, Malayalam, Telugu, Punjabi, Assami, matrimony etc. independently. The applicant is not even seeking injunction to restrain any of the words Tamil, Telugu, Malayalam, Assame, etc. in combination with any other word other than matrimony. The injunction is sought to prevent the respondent from using the words Tamil, Telugu, Malayalam, Punjabi, Assami etc. in combination with the particular word matrimony. The documents filed by the plaintiff in typed set from page Nos.157 to 181 in C.S.No.802 of 2017 indicate that search result will show Tamil matrimony and matrimony with space, the above search shows and Tamil matrimony, which does not have the same 55/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

39. The remedy sought for could be granted and effectively enforced only if Google is made a party to the present suit. The Plaintiff in the guise of claiming Injunction against infringement is trying to monopolize the Entire Online Matrimony business market which is against the provisions of the Constitution of India and Competition Act 2002. Plaintiff can claim ownership against rem only for the Trademarks. Plaintiff having itself used the variants of the TM 56/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

40. Considering the above aspects, when the trade marks of the plaintiff are descriptive in nature and free competition is a general rule, whereas exclusive right is an exception, online platform being contextual, a website has to necessarily use relevant keywords to remain visible and attract existing as well as new customers and the keywords were already auctioned by the Google and anyone can participate in the bid. Without making the Google as a party, injunction is granted in favour of the free competitors to bid the keywords, which amounts to restrain the trade in its entirety. Unless and until the Google is made as a party 57/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

20.12.2019 Index:Yes/No Internet:Yes/No vum/mvs/ggs/vrc 58/60 http://www.judis.nic.in O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018;

vum/mvs/ggs/vrc Common Order in:

O.A.Nos.1113, 1114 of 2018 in C.S.No.802 of 2018; O.A.No.427 of 2019, A.Nos.5099, 5100 of 2019 in C.S.No.277 of 2019; O.A.Nos.655, 656 of 2019, A.No.6521 of 2019 in C.S.No.418 of 2019;

O.A.Nos.530, 531 of 2019, A.Nos.5122, 5123 of 2019 in C.S.No.327 of 2019; and O.A.No.628 of 2019 and A.No.5248 of 2019 in C.S.No.395 of 2019 Delivered on:

59/60

http://www.judis.nic.in

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