Madras High Court
Consim Info Pvt. Ltd vs Google India Pvt. Ltd on 10 September, 2012
Author: P.Jyothimani
Bench: P.Jyothimani
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATE: 10.09.2012
CORAM:
THE HONOURABLE MR.JUSTICE P.JYOTHIMANI
and
THE HONOURABLE MR.JUSTICE M.DURAISWAMY
O.S.A.NOS.406 AND 407 Of 2010 and
M.P.Nos.1, 1 and 2 of 2010 and
M.P.Nos.1 and 1 of 2012
Consim Info Pvt. Ltd.,
No.94, TVH Beliciaa Towers,
Tower II, 10th Floor,
MRC Nagar, Mandaveli,
Chennai -600 028,
rep. By its Director and Chief Executive Officer
Mr.Janakiraman Murugavel.
... Appellant in both the appeals
Vs.
1.Google India Pvt. Ltd.,
No.3, RMZ Infinity Tower E
3rd, 4th and 5th Floors,
Old Madras Road,
Bangalore 560 016.
2.People Interactive Pvt.Ltd.,
Shop No.33 -36, Door Nos.96 & 104,
Ground Floor, Kaveri Complex,
Nungambakkam High Road,
Nungambakkam,
Chennai-600 034.
3.Jeevansathi Internet Services P.Ltd.,
1-H, Gee Gee Emerald,
151, Village Road,
Nungambakkam,
Chennai 600 034.
4.Times Business Solutions Ltd.,
2nd Floor, Suprageet Complex,
New No.174, Old No.304,
TTK Road, Alwarpet,
Chennai 600 018.
5.Google Inc
1600 Amphitheatre Parkway
Mountain View, CA 94043.
. .. Respondents in both the appeals
Original Second Appeals filed against the common order dated 30.09.2010 made in O.A.Nos.977 and 978 in C.S.No.832 of 2009 on the Original Side of this Court.
For appellant : Mr.A.L.Somayaji Senior Counsel and
Mr.T.V.Ramanujan Senior Counsel for
Mr.A.Mohan in both the appeals
For respondents : Mr.P.S.Raman Senior Counsel for
Mr.Poovayya for R1 and R5
Mr.Vineeth Subramani for R2
Mr.Sathish Parasaran for R3
Mr.V.Niranjan for
Mr.Prashant Rajagopal for R4
JUDGMENT
(Judgment of the Court was made by M.DURAISWAMY,J) The appellant in both the appeals is the plaintiff in the suit in C.S.No.832 of 2009 on the file of this Court. OSA No.406 of 2010 arises against the common order passed by the learned Single Judge in OA No.977 of 2009 in C.S.No.832 of 2009 and the OSA No.407 of 2010 arises against the common order passed by the learned Single Judge in O.A.No.978 of 2009 in OS No.832 of 2009.
2. The respondents 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, TAMILMATRIMONY.COM etc., a list whereof is annexed hereto and marked as Annexure-A and/or its variants, by using as Adwords, Keyword Suggestion Tool, as a keyword for the internet search and/or as meta tags and thereby passing off and enabling others to pass off the business and services of the plaintiff's competitors including defendants 2 to 4 as that of the plaintiff or in any other manner whatsoever;
c) the defendants be directed to surrender to the plaintiff for destruction of all compact discs, master copy, advertising materials, pamphlets, brochures, etc., which bears the plaintiff's registered trademarks and/or any other variants which 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.10,05,000/- for infringing and/or for passing off and/or for enabling others to infringe and/or pass off the plaintiff's trademarks and domain names;
e) An order for rendition of accounts of profits in favour of the plaintiff and against the 1st and 5th defendants to ascertain the profits made by the 1st and 5th defendants on account of;
f) for costs of the suit; and
g) pass such further and other orders and issue directions, as this Hon'ble Court may deem fit and necessary in the circumstances of the case and thus render justice.
3. Along with the suit, the appellant/plaintiff also filed two applications in O.A.Nos.977 and 978 of 2009. The prayers in O.A.Nos.977 and 978 of 2009 read as;
i) an interim injunction restraining the respondents, by themselves, their directors, partners, men, franchisees, licensees and/or all other persons acting on their behalf from in any manner infringing and/or enabling others to infringe applicant's registered trademarks BHARATMATRIMONY, TAMIL MATRIMONY, TELUGUMATRIMONY etc., a list whereof is annexed hereto and marked as Annexure-A or its variants by including them jointly or severally as Adwords, Keyword Suggestion Tool or as a keyword for internet search or as meta tag in any other manner whatsoever, pending disposal of the suit; and
ii) an interim order of injunction restraining the respondents, by themselves, their directors, partners, men, servants, agents, broadcasters, representatives, advertisers, franchisees, licensees and/or all other persons acting on their behalf from in any manner diverting the 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's business happens through internet.
4.1 The first respondent namely Google India Private Limited, is an online search engine, wherein the internet user searches with a search term to locate information relating to the search term available in the internet and to locate the respective websites. The fifth respondent is the parent company of the first respondent. The first respondent is the Indian subsidiary of the fifth respondent. The respondents 1 and 5 offer an advertisement programme called AdWords.
4.2 A desirous internet user who looks for the appellant's online service for getting information would in all probability use the appellant's trademarks as key words in the 1st and 5th respondents search engine. Along with the organic search result for the term searched for by the user, an advertisement program offered by the first and fifth respondents would appear on the right hand side of the organic search result under the caption 'Sponsored Links'. The advertisement displayed under 'Sponsored Links' closely correspond to the term searched for. For example, if more internet users use the term ''Court, the first and fifth respondents offer the term Court for bidding as 'Key Word' to others. The KeyWord is a technical factor which triggers the advertisements in the 'Sponsored Links'. If the search term entered by a user corresponds to the KeyWord in the 1st and 5th respondents' AdWord Program, it would trigger an advertisement in the 'Sponsored Links' ad space. The 1st and 5th respondents allow the KeyWord to appear as a part of the advertisement as well. Therefore, the more the term searched for, the more chances are that it is a heavily demanded KeyWord. The competitors would bid for the KeyWords of the other players in their business to catch the attention of the user and thereby divert the business meant for such other players.
4.3 The 1st and 5th respondents suggest the competitors with a list of terms/trademarks which are heavily searched by the users in a program called KeyWord Suggestion Tool. This KeyWord Suggestion Tool provides all the details regarding such term/trademark. This enables the competitors to pick and choose the heavily searched term/trademark as their keyword to trigger advertisement in the sponsored Link ad space.
4.4 According to the appellant, the respondents 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 advertisements; that in this way, the appellant's trademark are misused by the respondents jointly and severally to enrich themselves unjustly. According to the appellant's such use without the consent/authorization is a clear case of infringement. The respondents 2 to 4 adopt the appellant's trademarks as their KeyWord in the 1st and 5th respondents Ad program with an intention to pass off their services as that of the appellant. The advertisement appears as a result of the search conducted by the internet user in the Sponsored Link Ad-Space would cause inevitable deception and confusion in their minds that those advertisement are in some way or the other associated with the search term/trademark entered by them.
5. The appellant filed the suit in C.S.No.832 of 2009 for permanent injunction restraining the respondents from infringing their trademarks by using them in the ADWord Program and KeyWord suggestion Tool and also to restrict the respondents from passing off their services using the appellant's trademarks and their closely resembling variants.
6. According to the respondents, their use of the appellant's trademarks in the impugned Ad program would not amount to use in the course of trade and such use is an honest business practice; that the KeyWord Suggestion Tools automatically generates its list by considering the number of hits counted by the term/trademark; that there is no human intervention in the process of selection of the term/trademark as KeyWord by the search engine. The respondents contended that they never use the appellant's trademark in the sense of a trademark over the goods or services as contemplated under the Act. Therefore, such use would not amount to infringement or passing off.
7. Heard Mr.A.L.Somayaji, learned Senior Counsel and Mr.T.V.Ramanujan, learned Senior Counsel, for the appellant and Mr.P.S.Raman, learned Senior Counsel for the respondents 1 and 5 and Mr.Vineeth Subramani learned counsel for the second respondent and Mr.Sathish Parasaran learned counsel for the third respondent and Mr.V.Niranjan learned counsel for the fourth respondent.
8. It is not in dispute that the appellant as well as its promoter Mr.Janakiraman Murugavel are the registered proprietors of about 22 trademarks such as Bharatmatrimony, Tamilmatrimony, Telugumatrimony etc., On a perusal of the documents produced on 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 search engine Google displays information about the appellant's website on the left hand side, as organic results. Simultaneously the search engine also displays the advertisements of the respondents 2 to 4 on the right hand side as Sponsored Links. The objection of the appellant is that the words used by the respondents 2 to 4 in the Ad title and Ad text of the advertisements in the Sponsored Links, happens to be either the registered trademarks of the appellant or deceptively similar version thereof.
11. In the present case, when a Web surfer types the word BHARAT MATRIMONY in the box appearing on the home page of the search engine, the links to the sites of the respondents 2 to 4 appear on the right hand side under the column Sponsored Links. When the Ad titles and/or Ad texts contain either the combined word BAHARATMATRIMONY' or the individual words BHARAT' and 'MATRIMONY' which results in confusion, deception and diversion of business traffic.
12. That apart the case of the appellant is that whenever a Webserver through the search engine 'Google' using as KeyWords, any of their 22 trademarks or the constituent parts thereof such as Bharat, Assam, Tamil, Matrimony etc., the links to the websites of the respondents 2 to 4 also appear on the right hand side of the page, as Sponsored Links. Each sponsored link has i) an Ad title ii) an Ad text and iii) the URL (Uniform Resource Locator) of the advertiser's website. According to the appellant, when the trademark of the appellant or a mark, which is deceptively similar to it, is used in the Ad title or Ad text, by a competitor, whose advertisement appears on the Sponsored Links, an infringement happens. Since the choice of the keyword is made by the advertiser through the Keyword Suggestion Tool provided by the search engine, the contention of the appellant is that the search engine is guilty of aiding and abetting such infringement. The appellant charge the respondents 2 to 4 with direct infringement and passing off and the first respondent with indirect or contributory infringement. The Adwords used by advertisers in the Sponsored Links, as Ad title or Ad text, are selected by assistance from the Keyword Suggestion Tool provided by the search engine itself. The key word tool is search based and it generates ideas matched to the websites of the advertisers. If a person who wishes to choose appropriate keywords will have to enter into the KeyWord Suggestion Tool of the search engine and type one or more descriptive words or phrases 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 enabling the other respondents to choose them as their Adwords. In these circumstances, when a websurfer searches the engine, for the various websites of the appellant as organic results, the web page also displays in the column reserved for Sponsored Links, the details of the websites of the respondents 2 to 4 with the title and /or text of the advertisement, carrying the registered trademarks of the appellant or deceptively similar variations thereof. The appellant contended that this amounts to infringement of the trademarks.
14 (a). The learned Senior counsel appearing on behalf of the appellant submitted that the registered marks of the appellant contains a combination of generic and descriptive words. The appellant's claim is restricted only to the combination of words. Further, no monopoly of any individual word has been sought by the appellant. The issue of lack of synonyms was never raised by any respondent and the learned Single Judge ought not to have suo motu come to the factual findings on the 'secondary consideration'. The injunction is sought for only for the combination of words as registered, denying injunction on the basis of usage of individual words by the respondents is erroneous. The first respondent was aware of the appellant's registered trade mark due to Cease and Desist notice.
(b). In support of his contention, the learned Senior Counsel relied upon the provisions of Section 29 (6) of the Trade Marks Act, 1999 (hereinafter referred as the 'Act'). Section 29 of the Act speaks about the infringement of trade marks and explicitly states as to the various acts which constitute infringement. Sub-Clause (1) states the general proposition of the law in this respect and lays down that when a registered trade mark is used by a person who is not entitled to use such a trade mark under the law, it constitutes infringement. Sub Clause (6) lays down the circumstances when a person is considered to use a registered trade mark for the purpose of this clause. It includes inter alia affixing the mark to goods or packaging, offering or exposing the goods for sale or supply of service, importing or exporting the goods, the use of the mark as trade name or trade mark on business paper or in advertising.
(c). Mr.A.L.Somayaji, the learned Senior Counsel, who is also appearing on behalf of the appellant submitted that the 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 registration of a trade mark confers exclusive right to the use of the trademark taken as a whole and not separately to each of its constituent parts, if any. Section 31 states that registration including subsequent assignment and transmission, is prima facie evidence of validity.
(e). In support of his contentions, the learned Senior Counsel relied upon the following judgments:-
i) a Chancery Division judgment reported in 1960 RPC 206 (CARTER & PARKER LD. V. SCOTIAWOOLS LD.), wherein it has been held as follows:-
Then Mr.Sparrow suggests that there is no infringement. I find that very difficult to follow at all. I should have thought that, if this mark is valid and remains, it is plain that the name under which the Defendants are advertising their goods, namely, Fashion Fleck in two words instead of Fashionfleck in one, was likely to cause confusion. I certainly do not propose to give any interlocutory relief which would prevent the Defendants continuing to use until the trial their trade name Fashion or from using the word fleck in what is clearly a descriptive sense as descriptive of a certain type of wool; but it does seem to me that, as long as there is on the Register a trade mark FashionFleek, however wrongly it may be there I do not know what the rights or wrongs of that are it is not desirable that other people should use what is substantially exactly the same trade description.
Therefore, I propose to grant until the trial of the action an injunction restraining the Defendants from suing either the word Fashionfleck as one word or Fashion Fleck as two words one following the other, but I do not propose to make any order further than that."
ii) 2011 (47) PTC 49(Del.) (SUPER CASSETES INDUSTRIES LTD. V. MYSPACE INC. & ANR.), wherein the Single Judge of the Delhi High Court held as follows;-
"...acts of the defendants whereby they are offering the space over the internet, getting the works uploaded through users, thereafter saving in their own database with the limited licence to add, amend, or delete the content and thereafter communicating the said work to the public by providing some advertisements alongside the work or in the alternative gaining advertisements or sponsorships on the said basis thereafter would prima facie tantamounts to permitting the place for profit for infringement as envisaged under Section 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, therefore, that a domain name may have all the characteristics of a trade mark and could find an action for passing off. Further the Honourable Apex Court has held as follows;
"there is a distinction between a trade mark and a domain name which is not relevant to the nature of the right of an owner in connection with the domain name, but is material to the scope of the protection available to the right. The distinction lies in the manner in which the two operate. A trade mark is protected by the laws of a country where such trade mark may be registered. Consequently, a trade mark may have multiple registration in many countries throughout the world. On the other hand, since the internet allows for access without any geographical limitation, a domain name is potentially accessible irrespective of the geographical location of the consumers."
Further the Apex Court in paragraph 29 has held as follows;-
"Apart from the close visual similarity between "Sify" and Siffy" there is phonetic similarity between the two names. The addition of "net" to "Siffy" does not detract from this similarity."
In paragraph 32 of the judgment, the Honourable Supreme Court has held as follows;-
"Another facet of passing off is the likelihood of confusion with possible injury to the public and consequential loss to the appellant. The similarity in the name may lead an unwary user of the internet of average intelligence and imperfect recollection to assume a business connection between the two. Such user may, while trying to access the information or services provided by the appellant, put in that extra 'f' and be disappointed with the result. Documents have been filed by the respondent directed at establishing that the appellant's name Sify was similar to other domain names such as Scifinet, Scifi.com, etc. the exercise has been undertaken by the respondent presumably to show that the word "Sify" is not an original word and that several marks which were phonetically similar to the appellant's trade name are already registered. We are not prepared to deny the appellant's claim merely on the aforesaid basis. For one, none of the alleged previous registrants are before us. For another, the word "Sci'fi" is an abbreviation of "Science fiction" and is phonetically dissimilar to the word Sify."
iv) AIR 1967 MADRAS 381 (V 54 C 121) (D.C.S. BUREAU V. UNITED 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."
Ultimately, the Honourable Supreme Court in paragraph 92 held as follows;-
On consideration of the totality of the facts and circumstances of the case, we clearly arrive at the following findings and conclusions:
(a) The respondent Company's mark Eenadu has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. The respondent Company's products and services are correlated, identified and associated with the word Eenadu in the entire State of Andhra Pradesh. Eenadu literally means the products or services provided by the respondent Company in the State of Andhra Pradesh. In this background the appellant cannot be referred or termed as an honest concurrent user of the mark Eenadu;
(b) The adoption of the word Eenadu is ex facie fraudulent and mala fide from the very inception. By adopting the mark Eenadu in the State of Andhra Pradesh, the appellant clearly wanted to ride on the reputation and goodwill of the respondent Company;
(c) Permitting the appellant to carry on his business would in fact be putting a seal of approval of the Court on the dishonest, illegal and clandestine conduct of the appellant;
(d) Permitting the appellant to sell his product with the mark Eenadu in the State of Andhra Pradesh would definitely create confusion in the minds of the consumers because the appellant is selling agarbattis marked Eenadu as to be designed or calculated to lead purchasers to believe that its product agarbattis are in fact the products of the respondent Company. In other words, the appellant wants to ride on the reputation and goodwill of the respondent Company. In such a situation, it is the bounden duty and obligation of the Court not only to protect the goodwill and reputation of the respondent Company but also to protect the interest of the consumers;
(e) Permitting the appellant to sell its product in the State of Andhra Pradesh would amount to encouraging the appellant to practise fraud on the consumers;
(f) Permitting the appellant to carry on his business in the name of Eenadu in the State of Andhra Pradesh would lead to eroding extraordinary reputation and goodwill acquired by the respondent Company over a passage of time;
(g) The appellant's deliberate misrepresentation has the potentiality of creating serious confusion and deception for the public at large and the consumers 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 equated with a purchaser of goods in England. So far as the violation to the right of trade mark of the Plaintiff is concerned, there cannot be any dispute with respect to the phonetical similarity in the trade marks used by the plaintiff and the defendants because both are using same word "Fruit Beer", even it is in Hindi or in English but it is phonetically similar. Therefore, it is clear that the Trial Court has not looked into the matter from this angle whether the trade mark of the plaintiff as well as the defendants are phonetic similar or not and thereby committed serious illegality in deciding the application of the plaintiff. Above phonetic similarity with the trade mark of the plaintiff and in view of the fact that the plaintiff is a registered holder of the trade mark which is being used by the defendants, itself is a sufficient ground for grant of injunction in favour of the plaintiff. A customer will certainly ask for "Fruit Beer" from the seller who may be a small cabin-holder and the seller will give "Fruit Beer" which is product of the defendants without knowing that the customer had intention to purchase the product of the plaintiff only. This may result into not only loss to the trade of the plaintiff but may also result into the loss of goodwill and reputation of the plaintiff, if the product of the defendants is found to be of sub-standard which may cause serious irreparable injury to the plaintiff, which cannot be ascertained in the terms of money. Therefore, in my opinion, the plaintiff is entitled for grant of relief of injunction.
vii) 2011 (4) CTC 417 (Blue Hill Logistics v.Ashok Leyland Ltd.), wherein in paragraph 41 of the judgment it has held as follows:-
"In a passing off action, the Courts look to see whether there is misrepresentation; whereas in infringement matters, it is important to note that the Trade Marks Act gives the proprietary and exclusive right to use the mark which will be infringed in the case of an identical mark. The statutory protection in the case of registered trade mark is absolute. Therefore, infringement takes place not merely by exact imitation, but by the use of the mark merely resembling the registered mark as to likely to be deceptive. When the 1st defendant's mark "LUXURIA" is compared with the registered trade mark "LUXURA" , both in the positioning and phonetic similarity, in our considered 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 been initiated against them. Not initiating action against the other infringers is no defence by itself, the fact that Yahoo! was an investor in the appellant company makes the action to be suspected and the suppression of this fact would disentitle the appellant for any relief of injunction.
c) The appellant is guilty of suppression in not having disclosed in their plaint that all the subject marks to the suit are associated marks with a label mark over which disclaimers are attached and that they themselves have disclaimed expressly any exclusivity over the descriptive words except when used as a combination.
d) As soon as the suit and injunction applications were moved in September 2009, upon being served with interim injunction, the first respondent represented to the Court before the learned Single Judge that as per the AdWords policy for India, it is fully compliant with all domestic laws including trademarks. Google represented specifically that its AdWords policy will not allow any registered trademark to be used either in the Title, Text or URL (Uniform Resource Locator) of the advertisement. This statement was recorded and the injunction was accordingly vacated. The same has been finally reiterated by the learned Single Judge in the order. Therefore, after a passage of three years no case has been made out for the grant of any fresh injunctions as sought for in the present appeals.
e) The order of the learned Single Judge is neither perverse nor has it resulted in any grave miscarriage of justice requiring interference in appeal.
f) AdWords program enables advertisers in Google to sue the search engine by projecting their advertisement as sponsored links whenever relevant search words are entered by the internet users. The appearance of such sponsored links are purely based on relevance, quality score(popularity of the advertiser's site) and the bid (amount agreed to be paid to Google per click on their sponsored links). Google does not 'auction' keywords in the sense portrayed by appellant, but follows a bidding process, which is only for placement of the advertisement in the sponsored results; that the highest bid will not guarantee top spot unless it is coupled with relevance and quality scored. Admission to Adwords program and payment for the Ads includes unlimited use of keywords and the algorithm which runs the search engine 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 Section 29(1) to (4).
i) Google's act of permitting advertisers to use keywords which are trademarks of third parties does not constitute use in the course of trade 'in the identical or similar' goods or service as that of the appellant because Google is in the business of operating a search engine and not in the business of matrimonial services or allied activities. The appellant would at best, invoke Section 29 (4) of the Act, but there is no pleadings or evidence at this juncture for it to claim to be a 'well-known mark' so as to maintain an infringement action across classes or services. There is no deception or confusion likely in the minds of an internet user so as to grant injunction as prayed for by the appellant.
j) The internet user who feeds in the search query is either aware of the website of Bharat Matrimony and its various denominational sites or is wholly unaware of the same. In the former case, when the organic and Sponsored Links appear on keying in the trademark word, it is Bharat matrimony and its websites which prominently appear and the user could then get into their website and continue his search. No confusion is therefore caused. The internet user is not looking at sponsored links to look for another site when he has come specifically looking for any of the sites of the appellant. In the case of an user who is wholly unaware of the existence of the appellant and its various denomination with 'Matrimony' with a space in between, still is able to find the sites owned by the appellant appearing first, both in organic and sponsored links because of relevance factor. Further, other sites also appear in such Sponsored Links. In such cases, it is for the internet user to choose as to which site he wants to go into because he never came looking for the site of the appellant in the first instance.
k) Section 28(2) r/w Section 17(2) of the Act makes it clear that even as per the Act, though there is no provision for disclaimer, such disclaimer is contained in the statute itself. The words 'Bharat' or 'Tamil' etc with space bar in between and the word 'Matrimony' are generic words. The appellant cannot have exclusive right over the said words. The appellant had obtained two common words by joining them together. Therefore, they cannot claim exclusive right over the words independently.
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) In the U.S.District Court of California, in the case of Daniel Jurin vs. Google, wherein the AdWords program was tested against the Lanham Act (U.S. Equivalent of Indian Trademark Act) and held that the Plaintiff could not insist on an investigation of the keywords and that Google had not breached the implied covenant of good faith and fair dealing so long as it ensures non-usage of registered trademarks in the title text and URL;
iv) In the U.S. District Court of California in the case of Daniel Jurin vs. Google ( 768F Supp.ed 1064), the Adwords program was tested against the Lanham Act (U.S. equivalent of our Trade Mark Act), wherein the Court held that the plaintiff could not insist on an investigation of the keywords and the Google had not breached the implied covenant of good faith and fair dealing so long as it ensures non-usage of registered trademarks in the title, text and URL.
v) 414 F 3d 400, 75 U.S.P.Q.2d 1161 (1-800 Contacts v. Whenu.Com, Inc) in the United States Court of Appeals, Second Circuit, wherein the Court held that (1) Marketing company did not use website owner's trademarks when it included similar website address in unpublished directory of terms triggering delivery of advertising, and (2) Company did not use trademarks by causing separate, branded pop-up ads to appear on computer screens above, below, or along bottom edge of website window.
vi) In the United States District Court Southern District of New Your (Merck & CO, Inc vs. Mediplan Health Consulting, INC,) in this judgment also while dealing with sponsored links in the internet search engines operated by Google and Yahoo! The above policies were again upheld as not violating trademark laws of U.S. Following the judgment in 1-800 Contacts, referred supra.
m) In these circumstances, the learned Senior Counsel appearing on behalf of the respondents 1 and 5 prayed for dismissal of both the appeals.
16. Mr.Vineet Subramani, learned counsel appearing on behalf of the second respondent submitted that:-
a)The appellant has not satisfied the requirements of Section 29(1) of the Act and in the absence of any one of the three elements mentioned therein, the suit for infringement must fail, and the petition for interim injunction must be dismissed.
b) The appellant have registered its trademark under Class 16 in respect of stationery related products. The presumption 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.
f) To maintain a case for passing off, it is trite law that three elements must be proved i) goodwill in business; ii)misrepresentation, namely, passing off one's goods or services as the goods or services of another and iii) damage. In the present case since the appellant failed to lead any evidence to show even prima facie any of the above 3 mandatory elements, the passing off action, is also liable to be rejected.
g) The appellant's registered trade marks are invalid. Under Section 31(2) of the Act, the validity of the registered trade mark may be challenged in all legal proceedings and that the Court may hold such registration to be invalid, if it does not satisfy the requirements of Section 9 of the Act.
h) In support of his contention, the learned counsel relied upon the following judgments:-
i) Ramdev Food Products Pvt. Ltd. v. Arvindhbhai Rambuhari Patel, ((2006) 8 SCC 726), wherein the Honourable Supreme Court held as follows;
the grant of an interlocutory injunction is in the exercise of discretionary power and hence, the appellant Court will usually not interfere with it. However, the appellate Court will substitute their discretion if they find that discretion has been exercise arbitrarily, capriciously, perversely, or where the Court has ignored the settled principles of law regulating the grant or refusal of interlocutory injunctions.
ii) Real Executive v. Reed Business Information Ltd. ((2004) ECWA (Civ) 159), wherein the Court held that in case of either infringement or passing off would arise by such invisible use and/or such placement of advertisement.
iii) $1.199 Pvt.Ltd v. Lifestyle 1.99 Pvt.Ltd., ((2001) FSR 10 (CA, Sg) and Marcio Ltd. v. Agro Tech Foods Ltd., 2010 (43) PTC 39 (Del), In both the above cases, the Courts of appeal and Single Judge of Delhi High Court held that "Descriptiveness and distinctiveness is a defence available against registered marks as well"
iv) 2001 (2) SCR 743 (Cadila Health Care Ltd., v. Cadila Pharmaceuticals Ltd.,) the Honourable Supreme Court held that the class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care that they are likely to exercise in purchasing and/or using the goods" and further held that a relevant factor to be considered is "the mode of purchasing the goods or placing orders 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 averments of the appellants and also further make out a prima facie case on suppression and misrepresentation of material facts by the appellant.
(c) The appellant filed a counter affidavit and opposed the miscellaneous petitions. In the counter affidavit, they have stated that the second respondent has chosen to file the present applications after the completion of oral arguments advanced on behalf of the appellants and the respondents 1 and 5. The second respondent has chosen to file the applications with undue delay. Further according to the appellant, the second respondent is attempting to cast fresh allegations upon the appellant, when the same was not raised before the learned Single Judge. The malafide attitude of the second respondent is writ large in its attempt to introduce documents that are wholly irrelevant to the present proceedings and to attempt to justify the same vide arguments have no basis in law.
(d) Further in paragraph 6 of the counter affidavit, the appellant has stated that the second respondent has relied on documents which have been in Trade Mark Registry records on the internet for a long while, well before the first respondent commenced its oral arguments. Further in the counter affidavit, it is also stated that the allegations of suppression and misrepresentation have been imagined by the applicant to unduly present the appellant in bad light for the purposes of covering up for its acts of gross piracy of the appellant's registered trademarks. Some of the documents to be produced by the second respondent are post suit. Therefore, the question of material suppression does not arise.
(e) The learned counsel appearing for the second respondent submitted that the documents are necessary for proper adjudication of the matter. But, according to the appellants, the documents are filed at a belated stage, even though those documents were available at earlier stage. No reason has been assigned for not producing the documents before the learned Single Judge.
(f) The learned counsel for the second respondent in support of his contention with regard to production of additional evidence has relied upon the following judgments;-
i) Gopal Krishanji Ketkar v. Mohammed Haji Latif (AIR 1968 SC 1413), wherein the Honourable Supreme Court, has held that "Even if the burden of proof does not lie on a party the Court may draw on adverse 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 application under Order 41 Rule 27 CPC the Court has a duty to examine the relevance of the materials to the issues involved and held that "adducing additional evidence is in the interests of justice"
v) Mayil Traders v. Thiyagarajan ((2011 (6) CTC 747)), wherein this Court held that "the Appellate Court is a Court of Appeal in facts also. It has the power or jurisdiction to reappraise the evidence and come to its own conclusion on the basis of materials." Further, that the "ultimate aim of a judicial proceeding is to render justice and technicalities including application under Order 41 Rule 27 CPC are only hand mades of justice and it is not possible for the judicial mind to shut out or close its eyes when an important piece of evidence is brought to its notice."
(g) In these circumstances, the learned counsel for the second respondent prayed for allowing the petition in M.P.Nos.1 and 1 of 2012 in O.S.A.Nos. 406 and 407 of 2010 and for dismissal of both the appeals.
18. Mr.Satish Parasaran, learned senior counsel appearing for the third respondent submitted as follows:-
a) The trademarks in question are generic and not merely descriptive since the trademarks are the names of the service itself; satisfying "what are you?" test rather than "who are you?" test. The combination of two generic terms would also not bring about a distinctive or reliable trademark. The reputation of the trademark ought not to be confused with the popularity/reputation of the goods or service.
b) The test is not as to whether the English words appropriated by the appellant have substitutes, but whether the said words are indispensable and unavoidable.
c) Bharatmatrimony has created URLs with each of its competitors' trademarks and no explanation as to why similar trade practice of yahoo! is acceptable to the appellant.
d) Therefore, the allegation, viz., infringement of Registered Trademark is liable to be rejected. Since there is no deception, passing off/unfair competition is also liable to be rejected.
e) In support of his contention, the learned counsel relied upon the following judgments:-
i) Zatarains, Inc. v. Oak Grove Smokehouse, Inc, No.81-3573, dated 25.02.1983, wherein the Court of Appeals, Fifth Circuit, in paragraph 17 has held as follows;-
"17. The "imagination test" is a second standard used by the courts to identify descriptive terms. This 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 F.3d 1143 (9th Cir, 1999), wherein the U.S. Court of Appeals for the Ninth Circuit held as follows;-
"21.In determining whether a term is generic, we have often relied upon the "who-are-you/what-are-you? "test". "A mark answers the buyer's questions 'who are you?' 'Where do you come from?' 'who vouches for you?' "Official Airline Guides, Inc.v.Goss, 6 F.3d 1385, 1391 (9th Cir.1993) (quoting 1 J.Thomas McCarthy, Trademarks and Unfair Competition S 12.01 (3ded.1992). Under this test, "[i]f the primary significance of the trademark is to describe the type of product rather than the producer, the trademark [is] a generic term and [cannot be] a valid trademark." AntiMonopoly, Inc.v.General Mills Fun Group, 611 F.2d 296, 304 (9th Cir.1979)(emphases added)."
iii). *241 DKV Deutsche Krankenversicherung AG v Office for Harmonisation in the Internal Market (Case C-104/00 P), wherein in the Court of Justice of the European Communities (Fifth Chamber) in paragraph 7 held as follows;-
"7. The Court of First Instance found, first, in paragraph 26 of the contested judgments, that the sign for which registration had been refused was composed exclusively of the words "company" and "line", both of which are customary in English-speaking countries. The word "company" suggested that what was in point were goods or services intended for companies or firms. The Word "line" had various meanings. In the insurance and financial services sector it denoted, amongst other things, a branch of insurance or a line of goods or services for undertakings. Coupling them together without any graphic or semantic modification thus did not imbue them with any additional characteristic such as to render the sign, taken as a whole, capable of distinguishing the appellant's services from those of other undertakings. The sing COMPANYLINE was therefore devoid of any distinctive character."
iv) AD2000 TM case (1997) RPC 168, wherein it has been held as follows;-
Without any prior use on the part of the applicant, the capacity to communicate that fact must, if it existed, have existed by virtue of the nature and characteristics of the designation per se. A combination of two letters and a four-figure numeral may well possess a distinctive character if it is an idiosyncratic combination. However, the combination represented by the letters and numeral AD2000 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 Division has held as follows;-
This is a passing-off action somewhat similar to the Universal Winding Company v. Haltersley 32 R.P.C., 479, which I disposed of some time ago.
Before considering the facts in this particular action, I should like to consider a very simple case. Suppose there were a new article invented in America which becoming known and commonly used there, was manufactured and sold by various persons, and was called by a name not unmeaning and merely fanciful nor indicative of any particular make, but strictly descriptive and used to designate the article generally by whomsoever made-not any particular kind or species of it-and suppose an American manufacturer or merchant whom I will call A to introduce this article in the United Kingdom, and to import and offer it for sale here-if he be a manufacturer, most probably of his own make or if he be a merchant only, of his own selection- and suppose that some time afterwards another American manufacturer, most probably of his own make, or if he be a merchant only, of his own selection-and suppose that some time afterwards another American manufacture or merchant, or it may be someone here whom I will call Z is minded to compete in the trade here, which it would be lawful and for the benefit of the public that he should do, then A will have no legal ground of complaint if Z does this by manufacturing or selecting and offering for sale in this country a rival manufacture of the article in question under the ordinary trade name that it bears, which would be the same as that of the article A has been selling; unless perchance A has taken the precaution to prefix his own surname, or make some other addition to the ordinary designation of the article as dealt in by him, in order to distinguish or identify his own particular make or selection.
vii) King-Seely Thermos Co. V. Aladdin Industries Incorporated 138 USPQ 349 wherein the Court of Appeal, the second Circuit has been held as follows;-
3. Since in this case, the primary significance to the public of the words thermos is its indication of the nature and class of an article rather than as an indication of its source, whatever duality of meaning the word still holds for a minority of the public is of little consequence except as a consideration in the framing of a decree. Since the great majority of those members of the public 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. Indeed, the similar expressing MONEYMAKER is to be found in the dictionary. The fact that honest traders have a number of alternative ways of describing a product which will make profits is no answer to the criticism of the mark. If it were, then all those other ways could, on the same argument, also be the subject of registered trademarks. The honest trader should not need to consult the register to ensure that common descriptive or laudatory words, or not unusual combinations of them, have been monopolised by others.
ix) Lowenbrau Ag & Another vs. Jagpin Breweries Ltd & Another, in I.A.Nos.11355/2007 and 13772 of 2007 in CS(OS) No.1810 of 2007 dated 14.01.2009, wherein a learned Single Judge of Delhi High Court has held as follows;-
Legal proceedings will include Suits filed by the registered owner of the mark against third parties. Section 32 of the Act, states that if a mark stands registered contrary to Section 9(1) of the Act and registration is bad for lack of distinctiveness on the date of registration, the party can defend the challenge by showing that they have acquired a distinctive character after registration but before commencement of the legal proceedings. These Sections also show that question of distinctiveness can be examined at the stage of grant of interim injunction by the Courts.
x) Marico Limited v. Agro Tech Foods Limited in FAO (OS) No.352/2010 dated 01.11.2010, wherein the Delhi High Court has held as follows;-
21.(iii) A civil Court in a suit filed for infringement of a registered trademark is entitled (if there is no earlier judgment which has achieved finality in cancellation proceedings) to consider the validity of registration for the purpose of passing an interlocutory order including of grant or refusal of an interim injunction- once the objection, as to invalidity of registration, is taken up in the pleading/written statement.
xi. The Vision Center v. Opticks Inc.202 USPQ Inc.202 USPQ 333, 340 (5h Cir.1999), wherein the Court of Appeals, fifth Circuit has held as follows;-
18.Although a statutory presumption of validity accorded to marks registered under the Lanham Act, 15 U.S.C.$$1057(b), 1115(a), this presumption is rebuttable and may be overcome by establishing the generic or descriptive nature of the mark. Flexitized, Inc. v. National Flexitized Corp., 335 F.2d 774, 779, 142 USPQ 334 (2d Cir.1964), cert.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 search for the appellant's trademark. So far as the second claim is concerned there is no cause of action because nobody can claim immunity from free competition, whether by virtue of trademark law or otherwise and because the purchase of trademarks as keywords from search engines does not constitute trademark use.
b) The fourth respondent namely 'SimplyMarry' is entitled to display sponsored links under Section 30(2) of the Act.
c) The selection of trademarks as AdWords does not constitute use because there is no visual representation to any consumer. The use of a registered trademark to distinguish one's own goods is not use of the mark in a trademark sense and therefore outside the infringement laws.
d) The essential function of a trademark is its liability to distinguish the goods of one trader from those of another. A mark which lack the ability to distinguish the goods or services of one person from those of another cannot be registered and if it is registered, cannot lead to the grant of an injunction because it is prima facie invalid.
e) Section 9 of the Act provides that a trademark which is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person or which is purely descriptive shall not be registered. The marks that appellant has registered namely BharatMatrimony, TamilMatrimony, GujaratiMatrimony are devoid of any distinctive character because they describe the class of goods or services, rather than appellant's service.
f) The consequence of allowing a person to acquire a trade mark over purely descriptive words is that these words are unlawfully appropriated by him although they belong to the common stock of language. Nobody can have any monopoly over words like Tamil and Matrimony.
g) Injunction cannot be granted in respect of purely descriptive mark and the effect granting injunction relief in respect of a purely descriptive mark, is that the registered proprietor obtains a monopoly over common and generic words. If the respondent questions the prima facie validity of the mark by demonstrating that it is purely descriptive. An order of injunction cannot be granted because the mark itself is prima facie invalid.
h) The elements of Section 29 of the Act are not satisfied, because the words Gujarati Matrimony, 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) To the proposition that injunction cannot be granted in respect of purely descriptive marks, because it will lead to the very monopoly that trademark law seeks to prevent, the learned counsel relied on the judgment, The European Limited v. The Economist Newspaper Ltd (1998) FSR 283.
iv) With regard to the preposition Who are you and What are you, the learned counsel relied upon the judgment in Filipino Yellow Pages v Asian Journal Publications 198 F 3d 1143.
v) Marico Ltd v. Agro Tech Foods Ltd (2010) PTC 736 and Clinique Laboratories v Guffic (2009) 41 PTC 41 (Del) In the above two judgments, the Delhi High held that the respondent in an injunction application is entitled to contest the prima facie validity of the mark by demonstrating that it is purely descriptive and that the injunction cannot be granted because the mark itself is prima facie invalid.
j) In these circumstances, the learned counsel for the fourth respondent prayed for dismissal of both the suits.
20) On a careful consideration of the materials available on record, the submissions made by the respective counsels and the judgments relied upon by them, it could be seen that a search engine is an information retrieval system designed to help find information stored on a system. It is a data base of 'web page extracts' that can be queried to find reference to something on the net. Search engines provide a way to search the contents of millions of web pages simultaneously. There are several search engines such as Yahoo!, the first respondent etc.
21. The first respondent is one such search engine which has a large database and which uses a system of ranking hits by relevancy. When one enters into the net and goes to a search engine, the first page that opens up on the screen of the computer is the Home Page. The home page contains a box in which, the person making the search has to type the key words or the search terms. Just below the box, two options will be indicated. One is an open search option, which is actually a wild search. Another is a limited search option, indicated by the phraseology I'm feeling lucky. The moment one clicks the keyword in the open search option, two types of results are thrown open. The results that appear on the left hand side are known as organic results and those that appear on the right hand side are known as sponsored links.
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 the advertiser for a price. If the keywords selected by the advertiser is already in use by the others, the advertisers who vie with one another are asked to bid upon a basic price fixed by the search engine. The highest bidder is given the top slot in the list of sponsored links. An advertiser is entitled to choose any number of keywords for advertising his website on the sponsored links, but the slot allotted to him in the list of sponsored links, depends upon the price offered by him for the keyword, in comparison to the price offered by others for the very same key word.
24. The dispute in the present case relates to the infringement of trademarks, by advertisements posted in the search engines. These advertisements could either be banner advertisements/pop-up advertisements or advertisements which appear as sponsored links.
25. It is needless to state that the foreign judgments relied upon by the learned counsels for the respective parties, which are referred above, can be of persuasive value to the extent, the laws in India are similar. The dispute on hand is in the context of the provisions of the Trade Marks Act, 1999. Section 28 of the Act enumerates the right conferred by registration of trademarks. Sub Section (1) of Section 28 of the Act confers upon the registered proprietor of the mark--
(i) The exclusive right to the use of the trade mark,
ii) In relation to the goods or services in respect of which the mark is registered and
iii) To obtain relief in respect of infringement in the manner provided under the Act.
Thus, there are 3 limbs to section 28(1) of the Act. However, the right recognised by sub-section (1) is made subject to the other provisions of the Act. Section 28(1) indicates both (i) the right as well as (ii) the remedies.
26. In the present case, the appellant as well as the respondents 2 to 4 are engaged in the business of rendering the same type of services, namely, matrimonial services. The appellant is the registered proprietor of the trademarks in question. By virtue of Section 28(1) of the Act, the appellant have i) the exclusive right to the use of the trade marks in question ii) in relation to the services in respect of which, registration is made. Insofar as the respondents 2 to 4 are concerned, there is a dispute about what constitutes the use of the trade mark, within the meaning of Section 28(1) of 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 connection with which it is used as a mark. Such a term may be descriptive of a desirable characteristic of the goods. A 'generic name' as 'a word used by a majority of the relevant public to name a class or category of product or service'. A generic name is incapable of exclusive appropriation or registration as a protectable trademark or service mark.
30. In the present case, the words 'Tamil', 'Gujarathi', 'Muslim' etc., are descriptive terms, indicating a race, language, ethnic group or a community and no one is entitled to monopolise the use of these words. The word 'matrimony' is descriptive of the state of marriage of a person. Since both the words are descriptive in nature, the appellant cannot claim monopoly over the individual words namely 'Tamil', 'Telugu', 'Gujarathi', 'matrimony' etc. However, the appellant registered a combination of these two words i.e. by registering as 'Tamailmatrimony' 'Malayalammatrimony', Gujarathimatrimony etc. By registering these two words, the appellant contended that they are entitled to forbear others from using these words in such manner, as would mislead the customer about their origin.
31. According to the appellant, if these two individual words are combined together with or without a space in between and if the respondents used the same, it causes confusion in the minds of the consumers. Further, the appellant contended that despite the combination of words, which constitute their registered trade marks, they have acquired secondary meaning and hence, they are entitled to prevent the infringement thereof. However, the appellant is not aggrieved by the use of these words by the respondents independently and individually and the appellants are aggrieved only by the combination of these two words. But, the respondents are using these two words with a space in between like Bharat Matrimony, Tamil Matrimony etc.
32. The learned Single Judge in his order, in paragraph 148, has stated that in spite of leaving a space in between the two words, it certainly provides a likelihood of confusion. However, the learned Judge found that the respondents 2 to 4, are also dealing in the same services i.e. matrimony services as that of the appellant would be left with no other choice to advertise their services, in case if the use of the 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 respondents from making use of the individual words 'Tamil', 'Malayalam', 'Gujarathi', etc. in combination with any word other than 'Matrimony'. The injunction they seek is to prevent the respondents 2 to 4 from suing any of these words 'Tamil', 'Telegu', 'Malayalam' etc. in combination with the particular word 'Matrimony'.
33 (a) According to the respondents, the use of words 'Tamil', 'Telugu', 'Gujarathi' etc. in their advertisements, is not in the trade mark sense, but in the descriptive sense. According to the respondents , their use of the words do not constitute the 'use of a mark' within the meaning of Section 2(2)(b) or 2(2)(c) of the Act and therefore, it could not be termed as an infringement, within the meaning of Section 29 of the Act.
34) It is pertinent to extract Section 2(2)(b), 2(2)(c) and 29 of the Act hereunder;
"2(2). In this Act, unless the context otherwise requires, any reference-
(a)........
(b) to the use of a mark shall be construed as a reference to the use of printed or other visual representation of the mark"
"(c) to the use of a mark,-
(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provisions or performance of such services."
35) Section 29 reads as follows:-
"29. Infringement of registered trade marks:-(1) 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 is identical with, or deceptively similar to, the trade mark is relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) 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 because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark;
(b) its similarity 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 his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purpose of this section, a person uses a registered mark, if, in particular, he -
(a) affixes it to goods or the packaging thereof.
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising -
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character, or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly."
36) As per Section 29(1) of the Act, when a person uses in the course of trade an identical or a deceptively similar mark, in relation to the same goods or services and in such a manner as to render the use of the mark, likely to be taken as being used as a trade mark an infringement happens. Under Sub Section (2) of the Act, an infringement happens when a person uses, in the course of trade, a mark similar to or identical with a registered trade mark, on similar goods or services, which likely to cause confusion on the part of the Public. Sub.section (3) raises a presumption in favour of likelihood of confusion, if the mark used by a person in the course of trade has identity with the registered trade mark and the goods or services, on which such mark is used, also have identity with the goods or services in respect 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) is against the reputation of the trade mark.
39) Therefore, on a careful reading of Section 29 of the Act, it could be seen that the Section brings within its fold, (i) the use of the mark (ii) the application of the mark and (iii) the advertisement of the mark.
40) As per Section 2(2)(b) of the Act, the use of the mark as or as part of any statement about the availability, provision or performance of certain services would tantamount to 'the use of the mark in relation to such services'.
41. It is not in dispute that the respondents 2 to 4 used the combination of two words in the course of their trade which are registered trademarks of the appellant on their advertisements. The issue whether a mere use by a person, of someone else's registered trademark, would constitute infringement was decided by various Courts internationally. However, the Courts have not uniformly deemed all unauthorised uses of trademarks in metatags, to be actionable. If the respondents 2 to 4 uses the individual words constituting the registered trade marks of the appellant in their advertisements in the sponsored links column, then such use would certainly fall within Section 2(2)(c)(ii) and Section 29(6)(d) of the Act.
42. Section 30 of the Act prescribes on effect of registered trade mark. It is also relevant to extract Section 30 of the Act which reads as follows;-
30. Limits on effect of registered trade mark -
(1) Nothing in Section 29 Shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying the goods or services as those of the proprietor provided the use-
(a) is in accordance with honest practices in industrial or commercial matters, an
(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.
(2) A registered trade mark is not infringed where -
(a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;
43. In the Trade Marks Act, Section 29(8)(a) and Section 30 (1)(a) of the Act speak about "honest practices". The learned Judge held that the use by the respondents would be a use in the course of trade and an use in advertising, such use 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 evident from page 45 of the document typed set produced by the second respondent. Excepting the space in-between the two words, the other words are identical and deceptively similar which would cause confusion in the mind of Public.
45. On the contrary, if one goes to the web site of the respondents 2 and 4 on the right hand side sponsored links, no doubt the appellant's key word is also shown along with the respondents' key word. But, in that case if one clicks the appellant's key word, it goes only to the appellant's web site and not to the respondents' web sites. Therefore, this would clearly establish that the respondents 1 and 5 had discriminated the appellant and also arbitrarily used the trademark words as key words in the 'sponsored links' causing loss to the appellant business. If the same yard stick is applied even for the respondents 2 to 4, the same cannot be termed as arbitrary or discriminatory, since the appellants are popular in the field of matrimonial services, by adopting such practices as stated above would affect their business considerably.
46. The respondents 1 and 5 could have used some other words as key words on the sponsored links. The action of the respondents 1 and 5 would only create confusion in the mind of the Public. According to the respondents 2 to 4 when ever the web surfer attempts to access the sites of the respondents 2 to 4, the links to the sites of the appellant are automatically displayed on the right hand side on the sponsored links. But, as stated above, the privilege or benefit given to the respondents 2 to 4 were not given to the appellant.
47. In our view, it is clear discrimination on the part of the respondents. Further, this aspect i.e. how far it affects the business of the appellant can be known and assessed only at the time of trial of the suit. The respondents 2 to 4 contented that the very registration of the mark is in violation of Section 9(1)(b) of the Act. Therefore, it is relevant to extract Section 9 of the Act hereunder;-
"9.Absolute grounds for refusal of registration.-
(1) The trade marks-
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
(b) which consists exclusive of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
(c) which 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. Therefore, the contention raised by the respondents 2 to 4 is liable to be rejected. Accordingly the same is rejected.
50. According to the respondents, the words which constitute the registered trademarks of persons, in the keyword suggestion tool would not amount to an use in the course of trade of the search engine and would not in any case constitute infringement. In respect of advertisements, search engines offer various choices in the form of keywords to enable service providers and manufactures to display or hang their advertisements, in as may as locations as possible.
51. According to the first respondent, Google, their relationship with a person advertising his products and services in the search engine is governed by 1) Advertising Program Terms 2) Advertising Policy and Editorial Guidelines and 3) Adwords and Adsense Trademark Policy. In the "Advertising Program Terms", Google has made the advertiser solely responsible for ad targeting options and keywords and all ad content, ad information and ad URLs. In their Advertising Policies also a copy of which was produced by them before the learned single Judge. Google has stated as follows;-
"Trademarks Google recognizes the importance of trademarks. Our AdWords terms and Conditions with advertisers prohibit intellectual property infringement by advertisers. Advertisers are responsible for the keywords they choose to generate advertisements and the text. Google takes allegations of trademark infringement very seriously and, as a courtesy, we investigate matters raised by trademark owners. Trademarks are territorial and apply only to certain goods or services. Therefore, different parties can own the same mark in different countries or different industries. Accordingly, in processing complaints, Google will ask the trademark owner for information regarding where the mark is valid and for what goods or services. Please note the following about our complaint process:
The trademark owner doesn't need to be a Google Adwords advertiser in order to send a complaint. Any such investigation will only affect ads served on or by Google. Google's trademark policy does not apply to search results. Our investigations only apply to sponsored links. For trademark concerns about websites that appear in Google search results, the trademark owner should contact the site owner directly. In the case of an AdSense for Domains trademark complaint, an investigation will affect only the participation of the domain name in question in our AdSense for Domains program. Because Google is not a third party arbiter, we encourage trademark owners to resolve their disputes directly with the advertisers, particularly because the advertisers may have similar ads running via other advertising programs."
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. When ever a Web surfer types a search term, which matches the adwords selected by the advertiser, the advertisements in the search engine is triggered. It is no doubt that the search engine may have a control over the selection of keywords by the advertiser. It may be not possible for the respondents 1 to 5 to be aware of all the trade registered in all the jurisdictions in respect of all the goods and services. In normal course, it is true that the number of visitors that a site has on a daily basis, may induce the search engine to include the whole or part of the name or title of the site, in the keyword suggestion tool to enable the competitors of the site to choose those words as adwords. In this aspect the learned Single Judge held that there cannot be a presumption that the inclusion of those names in the keyword suggestion tool, happened with the knowledge of the search engine, about the registration of those words as trademarks. The learned Judge also held that the benefit of doubt would go the search engine since choice of the words "Tamil", "Matrimony" etc., in the keyword suggestion tool need not necessarily have happened deliberately.
54. As already held by us, the respondents 1 and 5, Google has been adopting double standards, since the benefit given to the respondents 2 to 4 were not given to the appellant. Had Google adopted uniform standard for appellant on par with the respondents 2 to 4, one can say that the Google has not adopted double standards. But, in the case on hand, there is a clear discrimination between the appellant and the respondents 2 to 4. However, as stated by the learned Judge we are also of the opinion that this issue can be examined only at the time of trial.
55. Though, the learned Judge has given the benefit of doubt to Google with regard to choice of the words "Tamil", "Matrimony" etc., in the keyword suggestion tool, we are of the considered view 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.
56. The learned Judge though found prima facie case in favour of the appellant, found that there is no balance of convenience and irreparable hardships. For the reasons stated above by us, we find that balance of convenience is also in favour of the 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 and the matter is posted for further hearing on 04.11.2009."
59. Further, in the counter affidavit, first respondent has stated that they did not allow the registered trademark of any one from being used as adwords by any other person and that the impression "Adword" as used in the industry would mean the use of the words in the title and text of the advertisement. In paragraph 9 of the counter, the first respondent has reiterated its commitment that they would adhere to the present business policy and also indicated that its current adwords policy does not permit the use of any trademarked term in the ad text, i.e., the title and text of the advertisement. Therefore, it is clear from the order dated 07.10.2009, by recording the undertaking given by the first respondent, the injunction was vacated. The arrangement made on 07.10.2009 is continuing till date.
60. While dismissing both the applications i.e. O.A.Nos.977 and 978 of 2009, the learned Judge made it clear that dismissal of these applications shall not be construed to mean that the first respondent (Google) may henceforth deprive the plaintiff (appellant) of the benefit of their Adwords Trademark Policy, as reflected in documents filed by them. As already stated we are of the considered view that the appellant has established their case with regard to prima facie case and balance of convenience. As such, the appellants are entitled for injunction. So far as the irreparable hardship is concerned, the same can be decided only in the trial. That apart, even the other issues have to be decided only in the course of the trial. Though, we are of the view that the appellant is entitled for injunction, the present arrangement based on the undertaking given by the respondents, which is in force for nearly 3 years, should not be disturbed or deviated at this stage. We are not inclined to unsettle the settled arrangement till the disposal of the suit. Therefore, we are not interfering with the impugned common order. Further, we make it clear that the undertaking given by the first respondent, Google, shall continue till the disposal of the suit and they also should ensure that the appellant (plaintiff) is not deprived of the benefit of their trademark policy. Since most of the issues have to be decided only in the suit, we request the learned Single Judge to dispose of the suit, as expeditiously as possible, 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 subject to the proof and relevancy of the same.
62. In these circumstances, we confirm the common order passed in O.A.Nos.977 and 978 of 2009 in C.S.No.832 of 2009 and both the appeals stand dismissed. M.P.Nos.1 and 1 of 2012 are also dismissed. The connected miscellaneous petitions i.e. M.P.Nos.1, 1 and 2 of 2010 are closed. However, there shall be no order as to costs.
(P.J.M.,J) & (M.D.,J) 10.09.2012 Index :Yes Internet :Yes JIKR P.JYOTHIMANI,J and M.DURAISWAMY,J Pre Delivery Judgment in O.S.A.NOS.406 AND 407 Of 2010 and M.P.Nos.1, 1 and 2 of 2010 and M.P.Nos.1 and 1 of 2012 10.09.2012