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TMI Blog2010 (9) TMI 1223X X X X Extracts X X X X X X X X Extracts X X X X ..... 2. The case of the plaintiff, as reflected in the plaint, is that it is a company rendering online matrimonial services, using internet as a vehicle/platform. The plaintiff has several matrimonial web portals including 15 regional portals, catering to the needs of millions of Indians living in India and outside. Mr.Janakiraman Murugavel, promotor/ founder Director of the plaintiff adopted a host of trademarks and obtained registration thereof. The plaintiff-company also adopted a few trademarks and obtained registration thereof in its own name. By virtue of a Deed of Assignment dated 16.6.2006, the trademarks registered in the name of Mr.J.Murugavel were assigned in favour of the company by name Bharat Matrimony.Com Pvt. Ltd. In the year 2008, the name of the company was changed to Consim Info Pvt. Ltd., which is the plaintiff herein. 3. Therefore, by virtue of the Deed of Assignment and by virtue of the registrations made in its own name, the plaintiff-company has become the Proprietor of the registered trademarks, listed in column No.3 of the following table, with the registration numbers given against them each in column No.2 thereof, in respect of the goods and services falli ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rademarks 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) A direction to the defendants 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 are phonetically and/or deceptively identical and/or similar to the plaintiff's registered trademarks or in any other form whatsoever; (d) Award damages of ₹ 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 first defendant to ascertain the profits made by the first defend ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ts 2 to 4 raised preliminary objections that the plaint contained incorrect and misleading statements. The plaint as it was originally filed, proceeded on the basis that the plaintiff is the registered Proprietor of all the trademarks mentioned in the above table. But actually, it was Mr.Janakiraman Murugavel who was the registered Proprietor of a majority of those trademarks. The plaintiff was the registered Proprietor of only a few marks. Therefore, the second defendant People Interactive (I) Pvt. Ltd., came up with two applications in A.Nos.6382 and 6383 of 2009, seeking a stay of further proceedings in the suit and also seeking a rejection of the plaint under Order VII, Rule 11, CPC. Similarly, the fourth defendant Times Business Solutions Ltd., also came up with an application in A.No.6380 of 2009, seeking rejection of the plaint under Order VII, Rule 11, CPC. 9. In the meantime, realising the mistake committed in the pleadings, the plaintiff, of their own accord, came up with an application in A.No.6379 of 2009, seeking an amendment of the plaint and the original applications. The scope of the amendment sought for, was (i) to insert paragraph 8-A in the plaint so as to make ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ation. 13. Thus, there are actually 7 applications on hand viz., (i) O.A.Nos.977 and 978 of 2009 filed by the plaintiff for interim orders of injunction, (ii) A.No.6001 of 2009 filed by the plaintiff for punishing the first defendant for violating the interim orders. (iii) A.No.6380 of 2009 filed by the fourth defendant seeking rejection of the plaint. (iv) A.Nos.6382 and 6383 of 2009 filed by the second defendant seeking rejection of the plaint and stay of further proceedings and (v) A.No.247 of 2010 filed by the plaintiff for impleading Google Inc., USA as the 5th defendant in the suit. 14. All the above applications were taken up together and I have heard Mr.T.V.Ramanujun, learned Senior Counsel appearing on behalf of Mr.A.A.Mohan, counsel for the plaintiff, Mr.P.S.Raman, learned Senior Counsel appearing for the first defendant, Mr.Vineet Subramani, learned counsel appearing for the second defendant, Mr.Satish Parasaran, learned counsel for the third defendant and Mr.Arvind P.Datar, learned Senior Counsel for the fourth defendant. GRIEVANCE OF THE PLAINTIFF: 15. The plaintiff as well as its promoter Mr.Janakiraman Murugavel are the registered proprietors of about 2 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... typed by a surfer searching for results, the search engine google displays information about the plaintiff's websites, on the left hand side, as natural/organic results. But 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 plaintiff is not per se to the very display of advertisements of its competitors as sponsored links. Their objection 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, happen to be either the registered trademarks of the plaintiff or deceptively similar versions thereof. 19. For instance, when a websurfer types the word BHARAT MATRIMONY in the box appearing on the home page of the search engine, the links to the sites of the defendants 2 to 4 also appear on the right hand side under the column "Sponsored Links". When the ad titles and/or ad texts appearing in those links, of the respondents 2 to 4, contain either the combined word "BHARATMATRIMONY" or the individual words "BHARAT" and "MATRIMONY", it results in confusion, decepti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... it has an "adwords program" which allows advertisers to create and run advertisements through a simple process. The advertisements comprise of short commercial messages with an indication of the link to the advertiser's site. These links are presented under the heading "sponsored links" either at the top of the page against a yellow background or on the right hand side separated by a line from the organic results. Apart from these links, banner advertisements or pop-up advertisements also appear. However, the adwords program of the first defendant fixes responsibility upon the advertiser, under clause 4 of an Agreement normally entered into with the search engine, not to advertise anything illegal nor violate or encourage violation of any applicable laws or third party rights including intellectual property rights. 23. According to the first defendant, the advertisements on their website are governed by a defined set of policies. The advertisement policy of the first defendant, a copy of which is filed as a document, shows the policy line adopted by them with respect to trademarks vis-a-vis adwords. The relevant portion of the policy reads as follows:- &q ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... iff seeks to injunct, is something which the plaintiff himself is guilty of. Therefore, the plaintiff cannot be allowed to injunct others from doing what they themselves are doing in the same search engine. The second defendant has also given details of the prior litigations between them and the plaintiff, to highlight the trade rivalry and to show that similar issues form the subject matter of an earlier suit, about which no whisper is made in the plaint. It is the further contention of the second defendant that since 18 out of the 22 trademarks claimed to have been registered are in relation to goods in Class 16 and also since Class 16 relates to paper, cardboard, printed matter etc., with which the second defendant is not concerned, there was no question of infringement or passing off. Moreover, the plaintiff has not obtained registration of the words "tamil", "telugu", "matrimony" etc., individually and hence the use of these generic or descriptive words would not amount to infringement. The fact that these separate words form the constituent parts of the registered trademarks of the plaintiff, would not per se make the use of these words, an infri ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ter affidavit, the fourth defendant has resisted the plea for injunction, on similar grounds as the other defendants have done. In addition, they have also contended that a search engine is like a directory which displays the links to different websites that contain words which are typed in by the websurfer and hence the use of the words contained in such directory cannot be prohibited. The very registration of the trademarks in question in favour of the plaintiff by the Trademark Registry is contrary to law under Section 9(1)(b) of the Trade Marks Act, 1999. There is also no concept, according to the fourth defendant, of "secondary meaning" in the case of domain name protection. Moreover, the level of consumer sophistication is different in so far as internet is concerned and hence the likelihood of confusion cannot be treated as the same. According to the fourth defendant, the expression "use of a mark" is defined in Section 2(2)(b) and 2(2)(c) of the Trade Marks Act, 1999 and coupled with the provisions of Section 29(6), the Act does not confer protection against the use of a trademark as an adword. The protection applies only to another mark used in the cour ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 2 to 4 have also made it clear that they do not and would not use in their advertisements, the registered trade marks of the plaintiffs such as BHARATMATRIMONY etc., though the defendants claim a right to use the independent words BHARAT, MATRIMONY etc., separately. Therefore, two things are very clear viz., (i) that the defendants do not claim a right to use the registered trade marks of the plaintiffs as such in their advertisements and (ii) that in so far as the usage of the independent words (which constitute the registered trade marks of the plaintiffs) are concerned, the defendants assert that the plaintiffs have no right to injunct them. 30. In view of the above, there is fortunately less dispute on facts and more dispute on questions of law, pure and simple and is perhaps raised in an Indian Court for the first time in the history of the internet age. Hence, it may be useful to have a prelude about the manner in which the internet operates and the search engines function. The prelude has become necessary more for the purpose of distinguishing routine trade mark disputes operating in the real physical world, from the disputes of this nature, operating in the virtual world ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... a large database and which uses a system of ranking hits by relevancy (popularity). The search engines find out the popularity of a site through the "cookies" planted in the computers. These cookies actually indicate the sites visited by a person and they map the areas of interest of a person browsing the net. As a matter of fact, whether one leaves footprints on the sands of time or not, a websurfer, without even realising what is happening behind him, leaves a trail behind, whenever he visits a site. This enables the operators even to profile the surfing habits of browsers. So far, this profiling has been used predominantly for the purpose of advertising. It is also possible to block the installation of cookies or clean up the surfing history, in order to protect privacy. Each search engine has its own quirks, which, if not properly learnt, would lead to a lot of time being wasted, by weeding through poor results. The search through these search engines prove to be fruitful, only when one learns how to create a phrase, how to search on multiple phrases and how to exclude certain words. HOW SEARCH ENGINES OPERATE: 34. Normally, when one enters into the net and goes to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... laintiff as well as the respondents 2 to 4 advertise their services on the sponsored links by paying necessary charges to google. METHOD OF ADVERTISING IN THE SPONSORED LINKS: 37. The Internet Search Engine "Google" was estimated to index about 8 billion web pages and process over 200 million searches per day (statistics as of 2007). Due to the enormity of the number of visitors to their site, what was originally developed as a huge store house of information, slowly turned into a huge warehouse/supermarket of products and services that could be bought and sold or hired. The moment it was found that the Search Engine provided a huge meeting place, like a supermarket or mall or a Trade Fair Centre, of unimaginable size and proportion, in a virtual world, connecting the world of trade and commerce with the world of consumers, its potential as an online advertising agency was realised. This led to all Search Engines, selling space for those who wished to market their products and services, so that they could host advertisements in the space so sold or let on hire by the Search Engine. Recent newspaper reports suggested that the revenue from advertising crossed several bill ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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. 41. In order to enable the advertisers to select appropriate adwords, so that the links to their sites are advertised in appropriate locations, search engines themselves guide the advertisers, in the selection of adwords. While doing so, search engines provide an unlimited choice to the advertisers, to choose from millions and millions of words. If the keyword selected by the advertiser is not selected by anybody else, the search engine makes it available to the advertiser at a fixed rate. However, if the keyword selected by the advertiser is already in use by others, the advertisers who vie with one another are asked to bid upon a basic price fixed by the search engine. Though all the advertisers are allowed to use the same keyword as their adword, the highest bidder is given the top slot in the list of sponsored links. Therefore, in essence, an advertiser is entitled ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e IP address. But since IP addresses are expressed in terms of decimal numbers, impossible of memorising, a system of labelling the IP addresses with names known as domain names was developed. This is how the Domain Name System (DNS) got developed. In simple terms, the Domain Name System serves to translate an address expressed in numerals into an address expressed in words. The Interim Report of WIPO Internet Domain Name Process on "The Management of Internet Names and Addresses: Intellectual Property Issues" issued in 1998, points out that DNS serves the central function of facilitating users' ability to navigate the internet. A domain name is the human-friendly address of a computer that is usually in a form which is easy to remember or identify. When an internet user types a domain name into a software application such as a browser program, the software sends the name to one of a number of Domain Name Server Computers. It searches its data base for the IP address that matches the domain name and then returns the IP address to the requesting software application. Upon receipt of the IP address, a communication is established with the server. 43. Therefore, domain ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... er jurisdictions, where different persons may hold the mark. Due to this unique problem, persons with the same name in several jurisdictions may stake competing claims over the same name chosen as a trademark or as a domain name by a server. The resolution of such conflicts has thrown serious challenges to the legal systems all over the globe, in view of the fact that even if there is no actual infringement, there is always the danger of trademark dilution. However, serious attempts have been made in the form of legislations such as US Federal Trademark Dilution Act, 1995 and Anti-Cybersquatting Consumer Protection Act, 1999, to protect famous marks from getting diluted. 46. Interestingly, the cases which appeared in the early stages of the internet age, related to the ordinary household names, getting registered as domain names and the individuals bearing such names and registering them, staking claims of infringement against leading multinationals. One of the earliest cases that came up before the German Supreme Court of Justice was in Deutsche Shell Gmbh vs. Andreas Shell. Though the individual by name Andreas Shell had obtained registration of his name, the Court decided in fa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ies of the Member States of WIPO (October 2001). In Chapter IV of the said paper, the SCT took note of the fact that practices such as unauthorised use of trade marks as key words by search engine operators constituted clear challenges to the traditional application of trade mark law. Annexure I to the document contains a summary of challenges regarding the use of trade marks on the internet as shown in a selective sample of cases across different jurisdictions, such as USA, UK, Argentina, China, India, Israel etc., Interestingly, the report refers to the contradictory views prevailing in China with regard to the legality of key word advertisement in the following words: "In China, two key word advertising law suits, one initiated against Google China and the other against Baidu, had yielded different outcomes. In Google vs. Guang Dong Ganyi Electrical Appliances Co. Limited, the plaintiff's registered trade mark NEPFON was sold by Google as a key word to a competitor. The Court rules that the competitor in question had committed trade mark infringement. However, Google itself was not held jointly liable for trade mark infringement. The Court determined that although the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eliminary injunction". But it appears that on September 21, 2004, the Court dismissed the suit. 53. However, other European courts have reached different conclusions. In Nemetschek AG vs. Google, LG Munich, No.33 O 21461/03 (Feb. 12, 2003), the Court held that an Internet search engine was not liable for direct or indirect trademark infringement when an advertiser placed ads based on trademarked keywords. And in Intershop comms. vs. Tietz, LG Hamburg, No.315 O 646/03 (Feb. 25, 2004), the same Court that decided Metaspinner found that the advertiser had not engaged in trademark use by selecting a trademarked keyword. 54. In DaimlerChrysler AG vs. Bloon {315 F.3d 932-2003}, the 8th Circuit held that a Tele Communications Company did not use the term "Mercedes" in a trademark sense merely by licensing a vanity phone number that spelled "1-800-Mercedes" to Mercedes dealers. The Court reasoned that the dealers themselves might engage in trademark use by advertising the phone number or otherwise presenting it as a brand to the public, but the company selling the phone number did not. 55. In Interactive Prods.Corp. vs. A2Z Mobile Office Solutions Inc. {326 F.3d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Court held that using another's trademark in one's metatags is much like posting a sign with another's trademark in front of one's store. Elaborating this illustration, the 9th Circuit Court said, "Using another's trademark in one's meta-tags is much like posting a sign with another's trademark in front of one's store. Suppose West Coast's competitor (say 'Blockbuster') puts up a billboard on a highway reading 'West Coast Video: 2 miles ahead at Exit 7' where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast's store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by West Coast. Nevertheless ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... interest itself; and (ii) that trademark infringement requires likelihood of confusion and not a mere likelihood of diversion.} 62. Extending the road sign metaphor used in Brookfield, the Court held in Playboy that in that case, the scenario was more akin to a driver pulling off the freeway in response to a sign that reads "fast food burgers" to find a well known fast food burger restaurant, next to which stands a bill board reading "better burgers: 1 block further". The Court also expressed concern that a finding of infringement might result in the loss of otherwise generic words from the English language at the expense of competitor need. The Court further pointed out that by seeking a prohibition on all advertisements that appear in response to the search words "playboy" and "playmate", the plaintiff would effectively monopolise the use of these words on the internet and that the same violated the First Amendment Rights of (a) Excite and Netscape (b) other trademark holders of Playboy and Playmate, and also (c) the members of the public who conduct internet searches. The Court pointed out that "internet is a unique and wholly new m ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n based on the use of the domain name peta.org to link to a site entitled "People Eating Tasty Animals", a parody of the "People for the Ethical Treatment of Animals" website that visitors were presumably trying to reach. Once visitors reached the page, there is no way they could have been confused given the very different title and the obviously parodic message of the page. Nonetheless, the Court found the instant of confusion created before visitors saw the content of the website to be actionable. 66. But, in Bihari vs. Gross {119 F.Supp.2d 309}, the Court said that the use of the highway bill board metaphor is not the best analogy to a metatag on the internet and that the harm caused by a misleading bill board on the highway is difficult to correct, while on the information super highway, resuming one's search for the correct website is relatively simple involving only one click of the mouse and a few seconds delay. In Bihari, the Court noted that the operator of internet website using the plaintiff's mark is merely providing a means of cataloging the plaintiff's site. 67. In Reed Executive plc and Another vs. Reed Business Information Ltd and O ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... as or not would depend solely on the site content, not the banner. If this had been an Art.5.1(a) case then the position might have been different. For then there would have been no requirement to prove a likelihood of confusion. The question would appear to turn on whether the use of the word "Reed" by Yahoo at the instance of RBI properly amounted to a "use in the course of trade" as to which, as I say, I reserve my opinion. It may be that an invisible use of this sort is not use at all for the purposes of this trade mark legislation the computers who "read" sets of letters merely "look for" patterns of 0s and 1s there is no meaning being conveyed to anyone no "sign". I can conveniently deal with passing off here too. The Judge held that there was passing off by substitution. I cannot agree. Passing off by substitution is where a trader having accepted an order for brand X supplies brand Y in such circumstances that the customer is unlikelly to notice the substitution and is thus misled, see e.g., Lever Bros vs. Mabro (1912) 29 RPC 225. That is a hundred miles from a consumer conducting a search under the name Reed and finding a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dismiss the complaint of Google, unsuccessfully. Later, American Blind not only answered Google's complaint but also made counter claims against Google as well as third party claims against several other search engines such as Ask Jeeves, Earthlink, AOL, Netscape and Compuserve, for trademark infringement and dilution, false representation, injury to business reputation, unfair competition and tortious interference with prospective business advantage. The defendants to the counter claim (Google and others) brought motions to dismiss American Blind's counter claims and third party claims. By an order dated 30.3.2005, the United States District Court for the Northern District of California, San Jose Division, allowed the motion only in so far as American Blind's claim of tortious interference with prospective business advantage, but disallowed the motion as to the other claims made by American Blind. It was found by the Court in that case that through adwords, Google had sold to American Blind's competitors, certain keywords, comprised in whole or in part, of the American Blind's marks. Moreover, through its adwords keyword suggestion feature, Google was found to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in favour of the respondents and remanding the matter for trial, the Supreme Court of the United States held that "one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, going beyond mere distribution with knowledge of third-party action, and is liable for the resulting acts of infringement by third parties using the device, regardless of the device's lawful uses". 73. The Court distinguished the decision in Sony, on the basis of patent law's traditional staple article of commerce doctrine, which absolved the equivocal conduct of selling an item with lawful and unlawful uses and limited liability to instances of more acute fault. The Court held that when a widely shared service or product is used to commit infringement, it may be impossible to enforce rights in the protected work effectively against all direct infringers, the only practical alternative being to go against the distributor of the copying device for secondary liability on a theory of contributory or vicarious infringement. The Court also pointed out that contributory infringement a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n an unpublished directory of terms that trigger delivery of WhenU's contextually relevant advertisements to computer users; or (ii) when it causes separate, branded pop-up ads to appear on a computer screen either above, below or along the bottom edge of the 1-800 website window. 76. For holding so, the Second Circuit reasoned that "a company's internal utilization of a trademark, in a way that does not communicate it to the public, is analogous to a individual's private thoughts about a trademark. Such conduct simply does not violate the Lanham Act, which is concerned with the use of trademarks in connection with the sale of goods or services in a manner likely to lead to consumer confusion as to the source of such goods or services. A fortiori, a defendant who does not sell, but merely uses internally within his own company, the trademarked product of another, is not a trademark infringer or unfair competitor by virtue of such use. 77. In EDINA REALTY, INC. vs. THE MLSONLINE.COM {0:04-cv-04371-JRT-FLN}, the plaintiff was the largest real estate brokerage firm. The defendant was also a full service real estate brokerage firm, directly competing with the plainti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... goods makes such placement impracticable, then on documents associated with the goods or their sale and the goods are sold or transported in commerce". 81. Following the decision of the Court of Appeals Second Circuit in 1-800 Contacts, the District Court further held as follows:- "Here, in the search engine context, defendants do not "place" the ZOCOR marks on any goods or containers or displays or associated documents, nor do they use them in any way to indicate source or sponsorship. Rather, the ZOCOR mark is "used" only in the sense that a computer user's search of the keyword "Zocor" will trigger the display of sponsored links to defendants' websites. This internal use of the mark "Zocor" as a keyword to trigger the display of sponsored links is not use of the mark in a trademark sense." 82. In Rescuecom Corp. vs. Google Inc. {Docket No.06-4881-cv}, Rescuecom, sued Google for trademark infringement, false designation of origin and dilution under the Lanham Act. The District Court for the Northern District of New York dismissed the action invoking Rule 12(b)(6) of the Federal Rules of Civil Procedure (equivalent ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Pages". The District Court for the Central District of California granted summary judgment in favour of the defendants. While affirming the said decision, the Ninth Circuit pointed out that the law recognises four different categories of terms with respect to trademark protection. They are (i) generic (ii) descriptive (iii) suggestive and (iv) arbitrary or fanciful. A generic term is one that refers or has come to be understood as referring, to the genus, of which the particular product or service is its species. The test to determine whether a term is generic or not, was spelt out by the Court in the following lines:- "In determining whether a term is generic, we have often relied upon the "who-are-you/what-are-you" test: "A mark answers the buyer's questions "Who are you?' 'Where do you come from?' 'Who vouches for you?' But the generic name of the product answers the question 'What are you?' ". Under this test, "if 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." 86. Holding that t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nt time appear, if one typed in the words "Mr.Spicy". There is a reference to Sainsbury's. It does not say that all the food sold at Sainsbury's has Mr.Wilson's trade or business as an origin. It is not pretending that Sainsbury's food all comes from Mr.Wilson's trade or business, MR. SPICY. It does not even say that Sainsbury's, amongst the many brands they stock, stock Mr. Wilson's foods under the brand name "Mr.Spicy" or under the trade mark MR. SPICY. I do not begin to see how what is described in the search response with reference to Sainsbury's has any impact of an adverse character on Mr. Wilson's rights as proprietor of the Community Trade Mark. The same comments apply to the reference to Pricegrabber." 91. After pointing out that the search engine yahoo can make available any word, probably in any language, the Court considered the issue of use of the mark in relation to the goods or services rendered by Yahoo and held as follows:- "It seems to me that this is a million miles away from Yahoo using Mr.Wilson's mark in relation to goods or services which are identical to those protected by the mark or w ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rence to the Link Marks. e-Bay Europe admittedly chose the keywords based on the activity on the site and paid a certain amount for each click-through of each keyword. 95. After referring to Articles 5, 6 and 7 of the Trade Marks Directive (First Council Directive 89/104), the Chancery Division of the High Court of Justice, London, in its decision rendered on 22.5.2009, pointed out that the proprietor of a registered trademark can succeed in a claim under Article 5(1)(a) of the aforesaid Directive, only if six conditions are satisfied viz., "(i) there must be use of a sign by a third party; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trademark; (iv) it must be of a sign which is identical to the trademark; (v) it must be in relation to goods or services which are identical to those for which the trademark is registered; and (vi) it must affect or be liable to affect the functions of the trademark, in particular its essential function of guaranteeing to consumers the origin of the goods or services." 96. On the question as to whether the online service provider e-Bay was jointly liable for the inf ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... -Bay Europe liable as joint tortfeasors. By taking such a view, the learned Judge held that e-Bay Europe were not liable as joint tortfeasors on account of two factors viz., (i) that they were under no legal duty to prevent infringement and (ii) that e-Bay's facilitation with knowledge and an intention to profit, were not enough. 100. After holding e-Bay to be not under any legal obligation to prevent infringement by third parties, the Court then took up the question as to whether e-Bay could at least be injuncted from being made use of as a platform for others to commit infringement. In other words, the question was whether the proprietor of the trademark was entitled to a remedy under Article 11 of the Enforcement Directive. 101. While considering this question, the attention of the learned Judge was invited to three decisions of the Bundesgerichtshof (Federal Court of Justice of Germany known by its acronym "BGH"). Those decisions are popularly known as Internet Auction I, Internet Auction II and Internet Auction III cases. The first case related to a complaint by Rolex SA (manufacturers of Rolex watches) against another company which provided an online auction s ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f the product. The Court also held that Google's key word suggestion tool is covered by 230CDA, which merely helped third parties to refine their content. The Court further opined that Google merely provided neutral tools and its ad words program simply allowed competitors to host their digital fliers where they might be most readily received in the cyber market place. 105. In Video Professor Inc. vs. Amazon.com (1:09-CV-00636-REB-KLM), Amazon used the words "VIDEO PROFESSOR" as the key word to trigger its advertisements. On some occasions, a click on the advertisement led users to land up on pages on which the competitor's products were advertised. But, the Court rejected the claim in view of the express stipulations in the vendor manual (an agreement between Video Professor and Amazon) whereby Video Professor granted a non exclusive, world wide, perpetual and royalty free license to Amazon to use all trade marks in the product information. 106. In the case of Organizacion Veraz vs. Open Discovery, (Which arose in Argentina and about which there is a reference in the paper submitted by SCT of WIPO) the plaintiff, a financial services company, sued the defendant ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Ltd., was cited as the third defendant in the case. The plaintiff as well as the first defendant in that case were runing women fashion retail chains. The grievance of the plaintiff was that Google offered to the first defendant, the registered trade marks of the plaintiff as keywords, resulting in the advertisements of the first defendant appearing aongside the search results of the plaintiff's sites and that the same constituted infringement. But the court analogized the situation to that of a shoe shop owner 'K', hanging the advertisement posters of his shop, on the walls of an escalator or in the exit from the parking lot of a Mall where the shop of his competitor 'M' is located. After adopting such an analogy, the court posed a few questions, which read as follows:- "What is the ground for preventing such advertising in a market that values free competition and praises the freedom to choose and practice occupation? Would hanging advertisement of K's business nearby M's shop or even opening a shoe business in close proximity, violate trade mark rights of 'M' ? Would it be reasonable to argue that such advertising, which lacks any menti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... #39;s trademarks and hence when these trademarks are keyed in, Google's search engine triggered the display of advertisements for sites offering counterfeit versions of LV's products. The Regional Court, Paris (known as Tribunal de grande instance de Paris) found the search engine guilty of infringement and the same was upheld on appeal by Cour d'appel de Paris (Court of Appeal, Paris). The further appeal filed by Google on points of law to the Cour de Cassation was referred to the European Court of Justice for a preliminary ruling on three questions. (b) The second reference arose in the context of proceedings between Google on the one hand and Viaticum SA and Luteciel SARL on the other hand. The complainants were the proprietors of the French trademarks "bourse des vols", "bourse des voyages" and "BDV". Their grievance was that entering these trademarks into the search engine triggered the display of ads for sites offering identical or similar products and that Google offered advertisers, the possibility of selecting keywords which corresponded to these trademarks. Google was found guilty of trademark infringement by the Regional Court, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ssation asks, in essence, whether Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Regulation No.40/94 are to be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit a third party from displaying, or arranging for the display of, on the basis of a keyword identical with, or similar to, that trade mark which that third party has, without the consent of that proprietor, selected or stored in connection with an internet referencing service, an ad for goods or services identical with, or similar to, those for which that mark is registered." The second part of the discussion of ECJ focussed on the following questions:- "By its second question in Case C-236/08, the Cour de Cassation asks, in essence, whether an internet referencing service provider which stores, as a keyword, a sign corresponding to a reputable trade mark and organises the display of ads on the basis of that keyword uses that sign in a way which the proprietor of that mark is entitled to prohibit under Article 5(2) of Directive 89/104 or, in the case where that sign is identical with a reputable Community trade mark, under Article 9(1)(c) of Regulation ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark." 115. After considering the scope of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No.40/94 in relation to Community trademarks, the Court held that the proprietor of a trademark is entitled to prohibit a third party from using, without the proprietor's consent, a sign identical with that trademark, when that use is in the course of trade, is in relation to goods or services which are identical with or similar to those for which that trade mark is registered and affects or is liable to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the above mentioned provisions, the ECJ then took up for consideration, the question whether the conditions relating to "use in relation to goods or services" were satisfied. On this question, the Court held that in most cases an internet user, entering the name of a trademark as a search term, would be looking for information covered by that trademark. Therefore, when advertising links to sites offering goods or services of competitors of the proprietor of that mark are displayed beside or above the natural results of the search, the internet user may perceive those advertising links as offering an alternative to the goods or services of the trademark proprietor. In such a situation, the ECJ held that since a sign identical with a trademark is selected as a keyword by a competitor, with the aim of offering internet users, an alternative to the goods or services of the proprietor of the trademark, there was use of that sign, in relation to the goods or services of that competitor. 119. The ECJ then went to the extent of holding that even in cases in which the advertiser does not seek, by its use, as a keyword, of a sign identical with the trade mark, to present its go ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dvertiser is a third party vis-a-vis the proprietor of the trade mark or, on the contrary, economically linked to that proprietor, the conclusion must also be that there is an adverse effect on that function of the trade mark." 121. Taking up then, the question of adverse effect on the advertising function, the ECJ accepted that the use by internet advertisers of a sign identical with another man's trademark as a keyword for the purposes of displaying advertising messages, is liable to have certain repercussions both on the advertising use of that mark by its proprietor and on the latter's commercial strategy. However, having regard to the facts and the findings recorded by the Cour de Cassation, the ECJ held in para 98 of its opinion that the use of a sign identical with another person's trademark in a referencing service such as that at issue, in the cases in the main proceedings, was not liable to have an adverse effect on the advertising function of the trademark. 122. Taking up the second part of the discussion, relating to the second question in the first reference, the ECJ concluded that an internet referencing service provider, which stores as a keyword, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ferencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party. (2) An internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No.40/94. (3) Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market ('Directive on electronic commerce') must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... coring a march over the laws, just as crimes always march ahead of law enforcement. Therefore, the road so far travelled appears to have been bumpy and as Austrotrabant's blog put it, the law on the issue has become as confusing as the statement of the Oracle of Delphi could be. In any case, the decisions of various courts cited above, have to be read only in the context of the laws with reference to which they were rendered and hence let us now see the relevant laws in the backdrop of which, those decisions were rendered. 129. In U.S., the Lanham Act is a federal trade mark Act of 1946, to which several amendments have been made in the past three decades. They are (1) The Trademark Counterfeiting Act of 1984; (2) The Trademark Law Revision Act of 1988, making major revisions and creating an "Intent to Use" system; (3) legislation in 1993 and 1994 implementing the provisions of the NAFTA treaty and the GATT agreement; (4) a 1996 enactment which added an anti-dilution prohibition to federal law; (5) the 1999 "Anti-cybersquatting Consumer Protection Act," directed at preventing the Cybersquatting on the Internet of domain names that are confusingly similar to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark." "6. Limitation of the effects of a trade mark 1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, (a) his own name or address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts; provided he uses them in accordance with honest practices in industrial or commercial matters. 2. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognized by the laws of the Member State in question and within the limits of the territory in which it is recognized." 131. Subsequently, the European Union recognised that the barrier of territoriality of the rights conferred on pro ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... course of trade: (a) his own name or address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he uses them in accordance with honest practices in industrial or commercial matters." 132. However, Regulation No.40/94 was repealed by Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community Trade Mark (codified version) {(OJ 2009 L 78, p. 1)}, which entered into force on 13 April 2009. But Articles 9, 10 and 12 did not undergo any change. 133. On 8.6.2000, the European Parliament and the Council of European Union issued Directive 2000/31/EC on certain legal aspects of information society services, and in particular electronic commerce, in the Internal Market (Directive on electronic commerce). Article 14 of the said Directive, reads as follows:- "14. Hosting.-1. Where an information society service is provided that consists of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... services. Though there was an initial dispute about the proprietorship of the trade marks, the same got cleared by virtue of the amendments to the pleadings. Therefore, the plaintiffs are the registered proprietors of the trade marks in question, viz., those listed in the table in paragraph -3 above. Consequently, by virtue of section 28 (1), the plaintiffs have (i) the exclusive right to the use of the trade marks in question (ii) in relation to the services in respect of which, registration is made. Thus, 2 limbs of section 28(1) stand satisfied in the case on hand, in so far as defendants 2 to 4 are concerned. Nevertheless, there is a dispute about what constitutes "the use of the trade mark", within the meaning of section 28 (1). 137. Similarly, the liability of the first defendant (search engine) is also in question since the search engine is not engaged in the same line of business as the plaintiff and the alleged infringement by the search engine is not "in relation to the same type of goods or services". However the allegation against them is that of "contributory infringement" or "ancillary infringement" and they are alleged to hav ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ion 2(2)(c) of the Act, in view of the provisions of Section 29(6). (iv) The plaintiffs themselves are making use of the same keywords suggestion tool and are advertising their services in the search engine, in the same manner in which the defendants 2 to 4 do. When the websurfers search for the sites of the respondents 2 to 4, advertisements of the plaintiff's sites also appear on the right hand side as sponsored links. Therefore, they are guilty of what they are seeking to injunct and hence they are estopped from questioning the policy of the search engine, after having submitted to the same (v) The very registration of the trademarks of the plaintiff is contrary to Section 9(1)(b) of the Trade Marks Act, 1999. (vi) The suit is not maintainable in view of the Uniform Domain Name Resolution Policy adopted by ICANN (vii) Since a search engine is like a directory, the reference to certain words in the directory cannot be termed as infringement. The use of the words constituting the registered trademarks of the plaintiff in the keyword suggestion tool, is not a use in the course of trade. 140. One more dispute was sought to be raised by the counsel appearing for the seco ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Juris Secundum, Vol.87 in paras 34 and 35, at pages 271 as follows : 'The true test in determining whether a particular name or phrase is descriptive is whether, as it is commonly used, it is reasonably indicative and descriptive of the thing intended. In order to be descriptive within the condemnation of the rule, it is sufficient if information is afforded as to the general nature or character of the article and it is not necessary that the words or marks used shall comprise a clear, complete and accurate description. The meaning which should be given is the impression and significance which are conveyed to the public. Whether words or marks claimed as trade marks are descriptive or whether they are suggestive or arbitrary and fanciful must be decided with respect to the articles to which they are applied and the mark must be considered as a whole.' 144. Courts have held that when descriptive words are involved, even a small distinguishing element in the use would be regarded as adequate. In Office Cleaning Services Limited Vs. Westminister Window and General Cleaners Limited (1946 (63) RPC 39), the Court of Appeal held that where the name of the business consists of w ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed to monopolise the use of these words. Similarly, the word 'matrimony' is descriptive of the state of marriage of a person. The words 'marriage', 'wedding', etc., may all signify the same meaning, though the origin of these words are from different sources. While the word 'wedding' is an english word denoting a marriage ceremony, the word 'matrimony' is derived from the Latin word 'matrimonium' meaning thereby a rite or state of marriage. On the other hand, the word 'marriage' is derived from the French term 'marier' meaning both a legal union of a man and a woman as well as the act or ceremony marking this. The World Book Dictionary states that while the term 'marriage' emphasises the legal union of a man and woman, the term 'matrimony' is a formal and religious word, applied to the religious bond established by the union and the term 'wedding' is the common word for the ceremony or celebration. 147. Therefore, it is needless to point out that the plaintiff cannot claim monopoly over the individual words 'Tamil', 'Malayalam', 'Telugu', 'Punjabi', 'Assamese ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ing the word 'Tamil' in their advertisements. Similarly if the defendants use the words 'Bharat' or 'Punjabi' or 'Muslim' etc., in conjunction with any word other than 'Matrimony', the plaintiff cannot maintain an action. But the objection of the plaintiff is to the use of the very same combination of words by the defendants, as contained in the registered trademarks of the plaintiff. 149. Though the objection of the plaintiff to the use by the defendants, of the very same combination of words, is well founded prima facie, the same cannot take them to the desired destination. It is on account of a subsidiary question that would then automatically arise for consideration. That question is as to whether the defendants 2 to 4 would be left with any other choice, to advertise their services, if the use of the combination of the above words is prohibited. 150. We have already seen that the defendants 2 to 4 are also in the same line of business as the plaintiff. Therefore, they have no alternative except to advertise their services, only in a manner descriptive of such services. For instance, in a website providing services to men and women look ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ;expressively generic" if society wishes to appropriate them for cultural use. Similarly, Prof. Wendy Gordon stated in his article "On Owning Information: Intellectual Property and the Restitutionary Impulse" {78 Va. L.Rev.149} that "culture could not exist if all free riding were prohibited within it". 153. Even before the advent of this issue in the internet age, the Supreme Court (of USA) allowed, in Saxlehner vs. Wagner {216 US 375 (1910)}, a natural water producer to use its competitor's mark to identify the product that it was copying. Justice Holmes explained that as long as the defendants did not create confusion about the real source of their product, they were free "to tell the public what they are doing and to get whatever share they can in the popularity of the trademarked product by advertising that they are trying to make the same article and think that they succeed". The Court held that by flagging its product as an imitator of the original, they are not trying to get the goodwill of the name but the goodwill of the goods. 154. In Health & Glow Retailing Pvt Ltd. Vs. Dhiren Krishna Paul [2007(35) PTC 474], a similar question c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ) Notwithstanding anything contained in Sub.Section (1), when a trade mark - (a) contains any part - (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the while of the trade mark so registered.' 157. But, the second defence taken by the defendants, on the basis of Sections 15 and 17, cannot be sustained for one simple reason. The plaintiff does not seek an injunction restraining the defendants from making use of the individual words 'Tamil', 'Malayalam', 'Telugu', 'Punjabi', 'Assamese', 'Matrimony' etc., independently. The plaintiff does not even seek an injunction to restrain the defendants 2 to 4 from using any of the words 'Tamil', 'Malayalam', 'Telugu', 'Punjabi', 'Assamese', etc in combination with any word other than 'Matrimony'. The i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (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 th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , the mark is registered. Sub.Section (4) speaks of infringement in relation to trade marks which have acquired transborder reputation. Sub.Section (5) seeks to prevent a person from adopting someone else's trade mark as part of his trade name or business name. 162. However, Sub.Section (6) clarifies that for the purpose of Section 29, a person uses a registered mark, (i) if he affixes it to goods or the packaging thereof; (ii) if he offers or exposes those goods or services for sale under the registered trade mark; (iii) if he imports or exports the goods under the mark; or (iv) if he uses the registered mark on business papers or in advertising; 163. Under Sub.Section (7), even the application of a registered trade mark on a material intended to be used for labelling or packaging goods or as a business paper or for advertising goods or services, would constitute infringement. Sub.Section (8) goes a step further, by prescribing that a trade mark is infringed even by advertising that trade mark, if such advertising------- (i) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters or (ii) is detrimental to its distinctive ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Australia in Shell Company of Australia Ltd., Vs. Esso Standard Oil (Australia) Ltd.,{(1961) 1 B IPR 523}. The question which arose in that case was as to whether the use of an animated cartoon oil-drop character in a television commercial, amounted to use of the constituent pictures of a trademark. The court was called upon to decide whether in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer, as possessing the character of the devices or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating or so as to indicate, a connection in the course of trade between the petrol and Shell. The High Court held that "the use of a mark in an advertisement of goods is a use in the course of trade and is of course a use in relation to the goods advertised." However, Kitto,J., ultimately held that the use of the oil-drop character was to convey a message that it is that the chemical composition of Shell petrol gives it advantages over its rivals and that since the mark was being used descriptively rather than as a badge of origin, the action for infringement s ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s reasonably necessary to identify the product or service; and (iii) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. {see New Kids on the Block vs. News Am. Publ'g Inc., 971 F.2d 302, 308 (9th Cir. 1992); Caims vs. Franklin Mint Co. 292 F.3d 1139, 1153-55 (9th Cir. 2002)}. 170. Nominative fair use and initial interest confusion were at the center of the dispute in J.K.Harris & Co. vs. Kassel. In this case, J.K.Harris and Kassel were rendering the services of negotiating reductions in tax assessments and resolution of past due tax obligations for clients. Both of them promoted their services online. On its website, taxes.com, Kassel began publishing negative information about Harris on a page that was designed so as to be prominently featured in the search engine results of those seeking information about Harris. Kassel did this by creating "keyword density" on the page in question: Harris' trade name was used seventy-five times, header and underline tags were placed around sentences containing Harris's trade name, the font size was increased, and links to websites containing inform ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rade name. 174 However, in the context of the statutory provisions in India, there are only 2 questions which are relevant in this context. They are:- (1) whether the defendants are using the registered trade mark in the course of trade or using it in advertisements within the meaning of section 2(2)(b) and (c) and 29(6); and (2) whether such use or application constitutes infringement within the meaning of section 29(8). If the defendants 2 to 4 use the individual words constituting the registered trade marks of the plaintiff, in their advertisements in the sponsored links column, then such use would certainly fall within section 2(2)(c)(ii) and 29(6)(d). 175. Therefore we have to see if such use in advertising, satisfies the ingredients of sub-section (8) of section 29 also, so as to constitute infringement. 176. In the case on hand, it is the contention of the defendants that even if they use the individual words or parts of the plaintiff's registered trade marks in their advertisements, such use will not be an use in the trade mark sense, but only in a descriptive sense. This contention has to be viewed in the light of the fact that a web portal rendering online matri ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of what constitutes honest conduct in trade, which may be applied by the Courts without great difficulty and without any excessive danger of greatly diverging interpretations..." The Court further described the concept as "expressing a duty to act fairly in relation to the legitimate interests of the trade mark owner, and the aim as seeking to "reconcile the fundamental interests of a trade-mark protection with those of free movement of goods and freedom to provide services in the common market" in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the Treaty seeks to establish and maintain". 179. The European Court further referred to Article 10bis of the Paris Convention for Protection of Industrial Property which uses the very same expression "honest practices in industrial or commercial matters". Article 10bis defines an "act of unfair competition" as one which is contrary to such practices. The said Article runs thus: The following in particular shall be prohibited: 1. all acts of such a nature as to create confusion by any means whatever with the establishme ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... atters. The ingredients of section 29(8)(b) and (c) are also not satisfied, since it is not shown that the use is detrimental to the distinctive character of the mark or against the reputation of the mark. Therefore, i hold that though the use by the defendants would be an use in the course of trade and an use in advertising, such use does not amount to an infringing use, in view of the reasons stated above. DEFENCE IV (ESTOPPEL) 182. The fourth contention of the defendants 2 to 4 is that the plaintiff is equally guilty of what the defendants 2 to 4 are alleged to be. According to them, whenever the web surfers attempt to access the sites of the defendants 2 to 4, the links to the sites of the plaintiff are automatically displayed on the right hand side under the sponsored links. Therefore, the defendants 2 to 4 contend that under the law relating to grant of injunctions, a person, who himself is guilty of something, is not entitled to seek a prohibitory order restraining others from doing what he is also guilty of. 183. Interestingly, the third defendant has filed a print-out of an interview given by Janakiraman Murugavel, Founder and CEO of the plaintiff to MediaNama, probab ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... one person from those of another person; (b) which consist exclusive of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service; (c) which consist exclusive of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark. 188. But, unfortunately, the contention based on the validity of registration, cannot be accepted in view of Sections 31 and 32. Under Section 31(1), the registration of a trade mark is considered prima facie evidence of its validity. Under Sub.Section (2) of Section 31, a registered trade mark cannot be held to be invalid in a legal proceeding on the ground that it was not registrable under Section 9. By virtue of Section 32, it is open to the plaintiff to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nces to the manufacturers of those products and providers of services. Therefore, according to the defendants, the use of the words which constitute the registered trademarks of persons, in the keyword suggestion tool would not amount to an use in the course of trade of the search engine and would not in any case constitute an infringement. 192. But analogizing a search engine to a directory, may not be appropriate for various reasons. In a directory, the name of a person would invariably appear in one or two locations or sites. Say for instance, the name and address of a timber merchant or his advertisement may appear in a directory, at the location where the names and addresses/advertisements of all timber merchants are grouped and displayed. At the most, it may appear (not very often) also at a location where wood products are listed. The reason for this is (i) that there is a constraint of space in a directory and (ii) that the listing in various locations unconnected with the advertiser's products or services would not be of any utility value. But in a search engine, there is no constraint of space, since it operates in the virtual world. Moreover, the selection of locati ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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. 194. By adopting the policy extracted above, the search engine appears to have shown concern, about the possible infringement of trademarks by the potential advertisers. It has also provided a mechanism for redressal of complaints. What is important is that the second paragraph of the policy extracted above, shows that even a person who is not an adwords advertiser in Google, is welcome to send a complaint. In other words, the policy to honour registered trademarks, is not merely confined to those who advertise ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 97. The reason for adopting different policies in different regions, is actually not very clear. However, in document No.6 filed by Google, containing sample printouts, depicting the component of an ad and explaining the process of search in Google, the first defendant has stated that in accordance with their adwords policy, the plaintiff's registered trademarks, would not appear in the adtext i.e., the title or the text of the ad of others. 198. However, in the screen shots of the defendant's webpages, showing sponsored links ads, filed by the plaintiff as document Nos.48, 49, 50, 51, 52 and 53, the terms 'Tamilmatrimony', 'Sindhimatrimony', 'Punjabimatrimony', 'Bengalimatrimony', 'Assamesematrimony' etc., are shown to have appeared in the ad title of the advertisements released by the defendants 2 to 4, in the sponsored links column. In some of those webpages, the ad title contains the term as one single term and in some, they appear as separate words such as 'Tamil Matrimony' etc. 199. As I have pointed out elsewhere in the judgment, the appearance of the separate words cannot be taken exception to, in this particular case, in view of the peculiar nature of the combina ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... uld go to the search engine, since the choice of the words Tamil, Matrimony etc., in the keyword suggestion tool, need not necessarily have happened deliberately. 201. One more contention of the plaintiff is that the search engine is guilty of double standards, in the sense that sponsored links do not appear for certain categories of persons, products and services such as Aircel, HDFC, Microsoft, Nike, ICICI Bank, Oracle, Facebook etc. In support of the said contention, the plaintiff has also filed the print-outs of the relevant webpages as part of document No.69. However, the first defendant has denied this. The first defendant has also filed as document No.16 series, the screen shots of the webpages, where multiple sponsored links appear for HDFC, Oracle, Microsoft and even Google. Therefore, the question as to whether the search engine is adopting double standards, has to be examined only at the time of trial and as on date, the match is equally poised on this issue. 202. Therefore, I hold that the inclusion of the words 'Tamil', 'Matrimony' etc., in the keyword suggestion tool of the search engine, would not amount to an infringing use, nor would it amount to a contributo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 10.2009 without any order. On 06.10.2009, the Court heard the matter in part and adjourned it to 07.10.2009 and also extended the interim order till then. 206. On 07.10.2009, the Court heard the arguments on both sides. After adverting to the prayers made and the rival contentions in paragraphs 1 to 8, in its order dated 07.10.2009, the Court pointed out in paragraphs 10 and 13 that the plaint as it stood on that date, required modifications and that therefore, the plaintiff was not justified in seeking exparte injunction with those defective pleadings. Thereafter, the Court referred to the policy of the search engine on the issue and held in paragraphs 19 and 20, which constitute the operative portion of the order, as follows: "19. As of now, in view of my discussion supra, it is suffice to direct that R1 Google India Private Limited would adhere to its present business policy as put forth by the learned senior counsel for R1 that the plaintiff's registered trade marks would be protected by ensuring that others do not use them in their "ad words". 20. As such, the interim injunction already granted on 17.09.2009 shall stand vacated and the matter is posted ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the second defendant. The second defendant relies upon the provisions of Order VI, Rule 14A (5)(a) of the Code of Civil Procedure, for seeking stay of the suit. 212. However, I do not think that there is any necessity to stay the suit. The second defendant has entered appearance through counsel and has also filed counter affidavits to the applications for injunction. The second defendant has also come up with substantial applications for stay of suit and rejection of plaint. Therefore, the stage at which the provisions of Order VI, Rule 14A(5) are to be invoked, has already passed. As a matter of fact, a careful perusal of the provisions of sub rules (5), (6), (7) and (8) of Rule 14A of Order VI would show (i) that at any time, the plaintiff can seek the setting aside of the order of stay, after furnishing the true address of the defendant; and (ii) that as per sub rule (8), nothing in Rule 14A shall prevent the Court from directing the service of process at any other address. 213. Now that the second defendant has effectively defended itself, there is no occasion to invoke the said provision. We have already crossed the stage at which the provisions of Order VI, Rule 14A(5) c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in the applications for injunction and in the suit. I have noted this in paragraph 10 of this order, even while providing the reasons which persuaded me to allow the amendments. 217. Therefore, all that the defendants 2 and 4 can claim is that these objections can be taken note of in deciding the applications for injunction and in deciding the suit. But, it does not mean that the suit can be thrown out at the threshold, on the ground of defective pleadings, especially after the amendments were allowed. 218. Order VII, Rule 11 enables this Court to reject a plaint (i) where it does not disclose a cause of action; (ii) where the relief is under valued; (iii) where the relief is properly valued, but the plaint is insufficiently stamped; (iv) where the suit appears from the statement in the plaint to be barred by any law; (v) where it is not filed in duplicate; and (vi) where the provisions of Rule 9 are not complied with. 219. A reading of the averments in the affidavits in support of the applications for rejection of plaint would show that the defendants 2 and 4 are attempting to bring the applications within clauses (a) and (d) of Order VII, Rule 11. But, the plaint does actually ..... X X X X Extracts X X X X X X X X Extracts X X X X
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