Heta Panchal’s Post

Continuing the discussion on the 2023 Google AdWords cases, Malak argues against the courts' approach in establishing trademark use vis-à-vis keywords. In Part II of the post, he explains how the use of a trademark in the digital world cannot be viewed through the same lens as assessing their use in the physical world. https://lnkd.in/dbgbR4Hm #trademark #GoogleAdwords #Keywords #TrademarkUse #SupremeCourt #DelhiHighCourt #SpicyIP

Trademark Infringement or Digital Advertising? Insights from Google v. MakeMyTrip Authored by: Yashica Dhawan Read the full article here: https://lnkd.in/gyyYp6YB #theippress #ipholics #google #makemytrip #ipr #iprights #iplawyers

Google challenged the order of ad-interim injunction by a single-judge bench of the Delhi High Court in the case of Google LLC v. MakeMyTrip. The single-judge bench had restrained the use of ‘MakeMyTrip’ in different forms as a keyword on Google Ads. The division bench overruled the judgment and held that the use of ‘MakeMyTrip’ as a keyword by Booking.com would not amount to trademark infringement and is not violative of Section 29(4)(c) of the Trade Marks Act, 1999. To explore in detail, read our full blog: https://lnkd.in/guaQ23JY #google #keywords #trademarkregistration #googleads #infringement #delhihighcourt #trademarkinfringement #aumirah #intellectualproperty #aumirahip #iplaw

Delhi High Court directs Google to actively address Trademark Infringement in Ads In a significant legal development, the Delhi High Court has ruled against Google's claim to safe harbour protection under the Information Technology Act, 2000, and immunity from liability for trademark infringement in its Ads Programme. The division bench comprising Justices Vibhu Bakhru and Amit Mahajan emphasized that Google cannot absolve itself from liability for using trademarks as keywords in its Ads Programme, indicating a major blow to the tech giant's defense. The court's decision came during an appeal filed by Google challenging an earlier single-judge order issued on October 30, 2021. The original order held that Google cannot evade responsibility for ensuring that keywords used in its Ads Programme do not infringe trademarks. The suit was initiated by DRS Logistics to prevent Google India, Google LLC, and Just Dial from using its registered trademark "AGARWAL PACKERS & MOVES or DRS LOGISTICS" as keywords, meta tags, or trademarks. The division bench found no fault with the single judge's conclusion and supported the stance that Google's use of trademarks as keywords equates to advertising under the Trademarks Act. The bench highlighted that Google's role goes beyond that of a passive intermediary, as its Ads Programme actively suggests keywords that maximize clicks, indicating Google's proactive involvement in keyword selection. Furthermore, the court rejected Google's claim of being a passive service provider and noted that the tech giant actively encourages and suggests the use of keywords. It also questioned Google's assertion that using trademarks as keywords does not impact their character or reputation. The court maintained that while not inherently detrimental if advertisements displayed undermine a trademark's character, an infringement action could be initiated. The Delhi High Court's ruling directs Google to actively monitor and remove ads that infringe trademarks. This verdict holds the tech company accountable for ensuring that keywords used in its Ads Programme respect trademark rights. The decision could have far-reaching implications for Google's operations in India, potentially requiring the company to implement additional screening measures to prevent trademark infringement. #giip #giipindia #news #ipnews #dhc #delhihighcourt #google #trademark #TrademarkInfringement #ads #keywords #metatags #ip #ipr #intellectualproperty #intellectualpropertyrights

Read my latest article describing how Meta Tags have long played a role in internet trademark infringement lawsuits when people have tried to optimize their websites to rank in search engines when competitor's brand names are searched for, and how they can actually factor into increasing associated damages awards. #infringement #trademarkinfringement #SEO #searchengineoptimization #brandnames #webdevelopment #liability #lanhamact

In his latest article, RPJ’s Gregory P. Feit discusses the recent ruling in 1-800 Contacts, Inc. v. JAND, Inc. (Warby Parker), where the Second Circuit held that purchasing a competitor’s trademarks as search engine keywords in advertising does not, by itself, constitute trademark infringement, emphasizing that actual use of the trademark is necessary to support such claims. Read the full article here: https://bit.ly/4fmz1JF

PSA for business owners -- it is not trademark infringement to use your competitor's trademark as a search engine keyword. I have seen several cases that are consistent with the Court in the Warby Park case. At first, I thought it was crazy that you could use your competitor's trademarks as a key word and get away with it. When you understand the purpose of search engine keywords though, it makes sense. As long as a website is clearly indicative of what company it is for and no competitor marks are used on the website, then it is hard to see how any reasonable consumer would be confused by the results of a search. And, without a likelihood of confusion, there cannot be trademark infringement.

Yet again, a court has held that purchasing advertisements linked to keywords is not trademark infringement, even if the keyword is a trademarked term. I have never personally agreed with this conclusion, as making sure your stuff comes up when potential customers look up a competitor seems to strike at the heart of the intent of trademark law, however time and time again (including in the 2nd Circuit case, below) such activities are not deemed to be infringement. The court stated plainly "We now reiterate that the mere act of purchasing a search engine keyword that is a competitor’s trademark does not alone, in the context of keyword search advertising, constitute trademark infringement." Thus, Warby Parker was able to avoid liability for running ads which came up when potential purchasers searched for 1-800-Contracts. Super interesting (at least to a law nerd like me)!

Trademark terms and Google Adwords On Thursday, March 7, the Supreme Court of India declined to consider MakeMyTrip's appeal against the Delhi High Court's decision to lift interim restraining orders against Google and Booking.com. These orders pertained to the use of the 'MakeMyTrip' (MMT) mark, with or without spaces, as a keyword on the Google Ads Program. The Court highlighted the absence of any evident confusion as per Section 29 of the Trade Mark Act 1999. Google's guidelines say this: We abide by local trademark laws and protect the rights of trademark owners, so we don’t allow ads that infringe trademark rights. However, advertisers may use trademarks that belong to others in certain situations as described below, such as when they are identifying a product that they resell. If a trademark owner submits a complaint to Google about the use of their trademark in Google Ads ads, we will review it and may restrict use of the trademark. Here is a simple summary of Google's policy which decides clearly mentions the criteria for decison on Trademark usage: In evaluating a complaint from a trademark owner, google determine whether to limit the use of the trademark in advertisements is to be allowed. Restrictions applicable for below cases: - Use of the trademark in an ad by a direct competitor. - Employment of the trademark in a manner that is confusing, deceptive, or misleading. Allowed usage in below cases: - Use of trademarks as keywords. - Trademarks used in the second-level domain of the ad's display URL. What to do if you find a trademark violation in google ads/adwords? You can submit a trademark violation complaint to google via this link: https://lnkd.in/d6R3_Pxt #intellectualproperty #google #googleads #adwords #PPC #trademaks #legal #brands #campaigns #digitalmarketing 

Automattic, the company behind WordPress, recently issued a cease-and-desist to WP Engine, claiming trademark infringement due to their use of "WP" in branding. This case underscores the importance of protecting intellectual property and setting clear boundaries around widely recognized industry terms. Automattic’s action reflects the growing focus on enforcing IP rights as competition intensifies in the tech space. For startups, this is a reminder of the critical need to safeguard their brand and understand the fine line between common terminology and trademark infringement. Read the full article on our blog 👇