Google LLC Vs Make My Trip India Pvt. Ltd.

Use of Google Keyword Does Not Constitute Infringement of Trademark

Introduction:

The intersection of trademark law and digital advertising has given rise to several contentious issues, one of which revolves around the use of trademarks as keywords in online advertising platforms like Google Ads. The recent judgment by the Hon'ble High Court of Delhi in the matter of Booking Netherlands and Booking India vs. MIPL provides significant clarity on this subject.

Background:

The Respondent/Plaintiff sought a mandatory injunction against the Defendants, requiring them to refrain from using MIPL’s word trademarks as keywords in the Google Ads Program. The crux of the dispute was the alleged infringement of the mark ‘MakeMyTrip’ by using it as a keyword in the said program.

The Single Judge’s Order:

On 27th April 2022, the Hon'ble Single Judge, in Suit CS Comm No. 268 of 2022, granted an injunction restraining the Defendants from using the mark ‘MakeMyTrip’ as a keyword, with or without spaces, on the Google Ads Program. This order was based on the presumption that such use could lead to trademark infringement.

The Division Bench’s Analysis:

However, the Division Bench of the High Court of Delhi took a divergent view and set aside the Single Judge’s order. The Bench emphasized that the mere use of a trademark as a keyword in an online advertising program does not amount to trademark infringement. The core reasoning behind this conclusion is rooted in the fundamental principles of trademark law and its application in the digital era.

Analysis:

Nature of Trademark Infringement:

Trademark infringement traditionally occurs when a third party uses a mark in a manner that creates a likelihood of confusion among consumers regarding the origin of goods or services. The use of a trademark as a keyword, however, does not necessarily lead to such confusion. When users search for a particular keyword, they are presented with a list of results, and there's no guarantee that the advertised product or service originates from the trademark owner.

No Direct Application to Material:

The Court rightly observed that the use of a trademark as a keyword does not involve its application on any material for labeling, packaging, or advertising goods/services. Both Google and the advertiser do not physically apply the trademark to any material. Instead, the keyword merely triggers an algorithm that displays relevant advertisements.

Digital Landscape and Consumer Understanding:

In the digital age, consumers are accustomed to seeing multiple results when they search for a particular term. They can distinguish between organic search results and paid advertisements. Hence, the mere appearance of a trademark as a keyword does not inherently mislead consumers about the origin of goods or services.

Precedents and International Perspective:

Courts worldwide have grappled with the issue of keyword advertising and trademark infringement. Many jurisdictions, like the European Union, have adopted a nuanced approach, emphasizing the importance of consumer perception and the absence of direct confusion. The Delhi High Court's decision aligns with this global trend, recognizing the distinct nature of online advertising.

The concluding Note:

The Hon'ble High Court of Delhi's judgment in Booking Netherlands and Booking India vs. MIPL provides a balanced and forward-thinking approach to the evolving challenges posed by digital advertising in the realm of trademark law. By distinguishing between traditional notions of trademark infringement and the realities of online advertising, the Court has ensured that legal principles remain relevant and adaptable to technological advancements.

The Case Law Discussed:

Case Title: Google LLC Vs Make My Trip India Pvt. Ltd.

Date of Judgement/Order:14.12.2023

Case No. FAO(OS) (COMM) 147/2022

Neutral Citation No:2023:DHC;8960-DB

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Vibhu Bakhru and Amit Mahajan HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Glen Appliances Pvt. Ltd. Vs Kunal Singhm

Analyzing the Cancellation of the Trademark "GLEE" as Deceptively Similar to "GLEN"

Abstract:

This legal article provides a comprehensive analysis of a recent trademark dispute wherein the Respondent's mark "GLEE" was held to be deceptively similar to the Petitioner's registered trademark "GLEN." The decision resulted in the cancellation of the impugned trademark. The article examines the grounds for cancellation, focusing on the principles of deceptive similarity and the implications for trademark owners in protecting their intellectual property rights.

Introduction:

The case in question revolves around a dispute between the Petitioner, the owner of the registered trademark "GLEN," and the Respondent, who had adopted the mark "GLEE" for similar goods or services. The contention of deceptive similarity led the court to cancel the Respondent's trademark. This article delves into the legal intricacies surrounding the cancellation and the principles applied to determine deceptive similarity.

Principles of Deceptive Similarity:

Deceptive similarity is a fundamental concept in trademark law, wherein a mark is considered deceptively similar if it creates a likelihood of confusion among the consumers regarding the origin of the goods or services. Courts typically consider similarities between marks. The article explores how these principles were applied in the context of the "GLEN" and "GLEE" dispute.

Registration and Protection of Trademarks:

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Trademark registration confers exclusive rights to the owner, providing a legal basis to prevent others from using confusingly similar marks. The article discusses how the Petitioner's registered trademark "GLEN" played a pivotal role in asserting its rights and initiating the cancellation proceedings against the Respondent's mark "GLEE." The importance of registration in trademark disputes is highlighted as a crucial factor in establishing ownership and infringement claims.

Implications for Trademark Owners:

The cancellation of the "GLEE" trademark has significant implications for trademark owners seeking protection against potential infringing marks. The article discusses the heightened importance of conducting thorough trademark searches before adopting a new mark and the proactive measures trademark owners can take to safeguard their intellectual property rights.

The concluding Note:

This legal article provides an in-depth analysis of the cancellation of the "GLEE" trademark due to its deceptive similarity to the registered mark "GLEN." The case underscores the critical role of trademark registration and the principles of deceptive similarity in resolving disputes and protecting the rights of trademark owners.

The Case Law Discussed:

Case Title: Glen Appliances Pvt. Ltd. Vs Kunal Singhm

Date of Judgement/Order:11.12.2023

Case No. C.O. (COMM.IPD-TM) 364/2021

Neutral Citation No:2023:DHC;8986

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Prathiba M Singh HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

AGVA Healthcare Pvt. Ltd. Vs AGFA-Gevert NV

Distinction Between Reasonable Cause, Good Cause, and Sufficient Cause in Admitting Additional Documents

Abstract:

This legal article delves into a recent decision of the Hon'ble High Court of Delhi, where the court affirmed the trial court's order allowing the admission of additional documents in a commercial dispute. The article scrutinizes the distinctions made by the court between "reasonable cause," "good cause," and "sufficient cause" in the context of admitting supplementary documents. The court's reliance on precedents, particularly the Madanlal vs. Shyamlal case, and the nuanced interpretation of procedural rules, provides valuable insights into the liberal exercise of powers under Order XI Rule 1(5) of the Commercial Courts Act, 2015.

Introduction:

The case under consideration involves an appeal filed against an order of the Ld. ADJ in CS (COMM) No. 858/2022. The Ld. ADJ allowed the respondents' application under Order XI Rule 1(5) to admit additional documents. The primary basis for admission was the pending framing of issues and the relevance of the additional documents to the dispute.

The Hon'ble High Court of Delhi, in affirming the trial court's decision, undertook a meticulous analysis of the distinctions between "reasonable cause," "good cause," and "sufficient cause" in the context of admitting additional documents.

Legal Framework and Procedural Rules:

The court's analysis hinged on the language used in Order XIII Rule 2 CPC (now repealed) and its replacement under Order XI Rule 1(5) of the Commercial Courts Act, 2015. The court noted that while the former required the showing of "good cause," the latter necessitated a demonstration of "reasonable cause."

Drawing from the Supreme Court's pronouncement in Madanlal vs. Shyamlal, the court emphasized the lower threshold of proof required for "good cause" compared to "sufficient cause." The liberal exercise of powers under Order XI Rule 1(5) was underscored, given the usage of the term "reasonable cause."

The Madanlal Vs. Shyamlal Precedent:

The court's reliance on the Madanlal Vs. Shyamlal decision (2002) 1 SCC 535 played a pivotal role in shaping its perspective on the distinction between "good cause" and "sufficient cause." The Supreme Court, in that case, held that "good cause" demands a lower degree of proof than "sufficient cause." This precedent informed the court's approach in the present case, asserting that the power under Order XI Rule 1(5) should be exercised liberally, considering the even lower threshold of "reasonable cause."

Practical Implications and Application:

The article analyzes the practical implications of the court's distinction between "reasonable cause," "good cause," and "sufficient cause" in the admission of additional documents. The court's approach signifies a proclivity towards a lenient standard, allowing parties greater flexibility in introducing evidence. The lower threshold of "reasonable cause" is seen as a pragmatic response to the evolving dynamics of modern commercial litigation, ensuring a more efficient and expeditious resolution of disputes.

The concluding Note:

This article underscores the significance of the Delhi High Court's nuanced distinction between "reasonable cause," "good cause," and "sufficient cause" in the admission of additional documents. The court's reliance on the Madanlal Vs. Shyamlal precedent and its interpretation of procedural rules underlines the imperative of a liberal approach in exercising such powers.

The Case Law Discussed:

Case Title: AGVA Healthcare Pvt. Ltd. Vs AGFA-Gevert NV

Date of Judgement/Order:14.12.2023

Case No. FAO (COMM) 222/2023

Neutral Citation No:2023:DHC;8958-DB

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Yashwant Varma and Ravinder Dudeja, HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Body Cupid Pvt. Ltd. Vs MS VBRO Skincare Pvt. Ltd.

Res Ipsa Loquitur in Trademark Infringement

Abstract:

This legal article delves into the intricacies of a trademark infringement case, specifically focusing on the application of the doctrine of res ipsa loquitur. The case under consideration involves the Plaintiff, a prominent player in the toiletries industry using the trademark 'WOW,' and the Defendants accused of copying not only the mark but also the entire trade dress, get-up, and other distinctive elements associated with the Plaintiff's products. The Hon'ble Court, recognizing the apparent imitation, granted an injunction in favor of the Plaintiff. This article provides a detailed analysis of the case, exploring the principles of res ipsa loquitur and their application in the context of trademark law.

Introduction:

The Plaintiff in this case has been utilizing the trademark 'WOW' for toiletries and a diverse range of products, including supplements, herbal blends, creams, serums, lotions, shampoos, bath & body products, and essential oils since 2014. The legal dispute arose when the Plaintiff discovered the Defendants marketing their hair care products under the marks 'VBRO' and 'WQVV' on various e-commerce platforms. The crux of the Plaintiff's grievance lies in the alleged extensive imitation of not only the trademarks but also the entire trade dress, get-up, and writing style associated with the 'WOW' products.

Res Ipsa Loquitur: Unveiling the Doctrine in Trademark Infringement:

The Latin maxim "res ipsa loquitur" translates to "the thing speaks for itself." In legal terms, it is a doctrine often applied in negligence cases, where the very occurrence of an event implies negligence. In the realm of trademark law, res ipsa loquitur is invoked when the imitation is so blatant and evident that it requires no further explanation. The doctrine allows the court to infer wrongful intent based on the conspicuous similarity between the products or their packaging.

The Plaintiff's Allegations and Court's Observations:

The Plaintiff contends that the Defendants have not only copied the 'WOW' trademarks but have also replicated the entire trade dress, get-up, lay out, color combination, and writing style associated with the Plaintiff's products. The Hon'ble Court, in granting the injunction, explicitly noted that the case is one of res ipsa loquitur, where the imitation is unmistakably clear. The containers and products offered by the Defendants were deemed almost complete imitations of the Plaintiff's products.

Establishing Infringement Through Res Ipsa Loquitur:

For the doctrine of res ipsa loquitur to apply in trademark infringement, the similarities between the Plaintiff's and Defendants' products must be so striking that it raises a presumption of intentional copying. The court, in this case, acknowledged the apparent likeness in trade dress, get-up, and color combination, reinforcing the idea that the imitation was so evident that no further evidence of intent was required.

Implications and Precedent:

The decision in WOW Toiletries v. VBRO-WQVV sets a precedent for cases involving blatant trademark infringement. The application of res ipsa loquitur in the realm of trade dress and product imitation serves as a powerful tool for protecting the rights of trademark owners. The ruling emphasizes that when the evidence of copying is so apparent, the court may rely on the doctrine to expedite the resolution of trademark disputes.

The Concluding Note:

The case under discussion highlights the potency of res ipsa loquitur in trademark infringement cases, particularly when the imitation is glaringly evident. The court's decision to grant an injunction in favor of the Plaintiff reinforces the significance of protecting the distinctive elements associated with a trademark.

The Case Law Discussed:

Case Title: Body Cupid Pvt. Ltd. Vs MS VBRO Skincare Pvt. Ltd. and Ors

Date of Judgement/Order:13.12.2023

Case No. CS Comm 883 of 2023

Neutral Citation No:2023:DHC;8969

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Prathiba M SIngh HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Berger Paints India Limited Vs JSW Paints Private Limited

The Use of a Mark in a Non-Trademark Sense

Abstract:

This legal article examines a case where the Plaintiff, claiming to be the registered proprietor of the trademark "SILK" since 1980 in relation to paints and related products, sought legal redress against the Defendant's use of the term "SILK" in conjunction with the trademark "HALO." The central question addressed by the court was whether the Defendant's use of "SILK" amounted to a violation of the Plaintiff's trademark rights.

Introduction:

The case at hand involves a dispute between a Plaintiff, associated with the trademark "BERGER" and "SILK," and a Defendant utilizing the term "SILK" in conjunction with the trademark "HALO." The Plaintiff asserted ownership of the "SILK" trademark dating back to 1980, specifically in connection with paints and allied products. On the other hand, the Defendant argued that its use of "SILK" was merely descriptive of the finish or sheen of the paint sold under the mark "HALO," and it had not sought separate registration for the term.

Defendant's Position:

The Defendant contended that its products were marketed under the well-established mark "HALO," with "SILK" serving as one of several descriptive terms indicating the finish or sheen of the paint. The Defendant emphasized that "SILK" was used alongside other terms like matt, satin, and gloss, all falling under the umbrella of the "HALO" mark. Crucially, the Defendant asserted that it had not applied for a standalone registration of the term "SILK."

Court's Analysis:

The court, in its analysis, considered the distinctiveness and similarity between the Plaintiff's and Defendant's marks. It was observed that the Plaintiff's use of "SILK" was in conjunction with the "BERGER" mark, while the Defendant's use was in association with the "HALO" mark. The court highlighted the absence of actual similarity between the marks "SILK" of both parties, considering the entirety of the trademarks used by each.

The court acknowledged the Defendant's argument that "SILK" was utilized to describe a specific attribute of its paint finish under the "HALO" mark. The fact that the Defendant had not sought separate registration for "SILK" was a key factor considered by the court.

The concluding Note:

Ultimately, the court refused to grant an injunction in favor of the Plaintiff. The decision hinged on the court's finding that the trademarks of the Plaintiff and Defendant were entirely different, and there was no substantial similarity between their respective uses of the term "SILK." The court's recognition of the descriptive nature of "SILK" in the Defendant's context, along with the absence of a standalone registration, played a pivotal role in shaping this decision.

The Case Law Discussed:

Case Title: Berger Paints India Limited Vs JSW Paints Private Limited

Date of Judgement/Order:12.12.2023

Case No. CS 64 of 2020

Neutral Citation No:N.A.

Name of Hon'ble Court: Calcutta High Court

Name of Hon'ble Judge: Krishna Rao HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Calvin Klein Trademark Trust Vs Guru Nanak International

Relief pertaining multiple trademark in one Suit

Introduction:

In a recent legal development, a significant trademark infringement case emerged wherein the plaintiff asserted trademark rights against a range of well-known brands, including 'Calvin Klein', 'CK', 'TOMMY HILFIGER', 'TOMMY', 'TOMMY SPORT', and 'TOMMY GIRL'.

This case is notable for being the single suit in which multiple trademark rights were simultaneously asserted against various distinctive marks. The outcome of the case was a decree in favor of the plaintiff, as the defendant failed to appear. Additionally, the court, relying on the Local Commissioner's report, issued a decree that included damages amounting to Rs. 10 Lakhs.

Case Analysis:

1. Assertion of Trademark Rights:

The plaintiff's decision to assert trademark rights against a range of marks demonstrates the importance of protecting the distinctiveness and reputation associated with their brand. The inclusion of iconic brands like 'Calvin Klein' and 'TOMMY HILFIGER' suggests a comprehensive effort to safeguard against potential dilution and consumer confusion.

2. Default Judgment:

The defendant's failure to appear in court resulted in a default judgment in favor of the plaintiff. In legal proceedings, when a party fails to respond or defend against the claims, the court may issue a default judgment. This emphasizes the significance of timely legal representation and defense in intellectual property cases.

3. Local Commissioner's Report:

The court relied on the report submitted by the Local Commissioner, indicating the importance of evidence and investigative procedures in trademark infringement cases. The report likely played a crucial role in establishing the plaintiff's case and supporting the decree.

4. Decree of Damages:

The court's decision to award damages amounting to Rs. 10 Lakhs reflects the severity of the infringement and its impact on the plaintiff's business. Damages in trademark cases are typically awarded to compensate the aggrieved party for financial losses incurred due to the unauthorized use of their mark.

The concluding Note:

This trademark infringement case stands out not only for the assertion of rights against multiple well-known trademarks in one suit but also for the default judgment and the consequential damages awarded. The legal analysis underscores the importance of legal diligence, evidence gathering, and the potential financial repercussions for infringing on established trademark rights.

The Case Law Discussed:

Case Title: Calvin Klein Trademark Trust Vs Guru Nanak International

Date of Judgement/Order:08.12.2023

Case No. CS Comm 75 of 2020

Neutral Citation No:2023: DHC: 8868

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Prathiba M Singh HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Loreal Vs Ravi Gandhi

Entitlement of Injunction against Trade Name on the Strength of Trade Mark

Abstract:

This legal article delves into a recent appellate decision by the Hon'ble Division Bench of the High Court of Delhi, addressing the entitlement of an injunction against the use of a trade name based on the strength of a registered trademark. The case in question revolves around the trademark "MABELLE," where the appellant sought relief against the respondent's use of the mark as part of their company name. The article analyzes the court's reasoning, focusing on the interplay between trademark rights and corporate nomenclature, with particular emphasis on Section 16 of the Companies Act, 2013.

Introduction:

The dispute in question arises from an appellate challenge against an order dated 22.02.2023, where the Ld. ADJ permitted the respondent to use the trademark "MABELLE" as part of their company name. The crux of the decision rested on the premise that the inclusion of "MABELLE" in the corporate name granted the respondent the right to use the mark. The appellant contested this decision, arguing that Section 16 of the Companies Act, 2013, had been overlooked.

Trademark Act Implications:

In granting the appeal, the Hon'ble Division Bench delved into the Trade Marks Act, particularly Section 29(6)(d). The court reasoned that the use of "MABELLE" in the respondent's corporate or business name, including on invoices and business communications, fell within the ambit of this section. Notably, the court found that such use constituted solicitation and an attempt to derive benefits associated with the mark, thus violating the provisions of the Trade Marks Act.

The concluding Note:

The appellate decision in this case sets a significant precedent regarding the entitlement of an injunction against the use of a trade name based on the strength of a registered trademark. The court's careful analysis of Section 16 of the Companies Act, 2013, and its alignment with the provisions of the Trade Marks Act showcases the necessity of protecting established trademark rights even in the context of corporate nomenclature.

The Case Law Discussed:

Date of Judgement/Order:07.12.2023

Case No. FAO (COMM) 116/2023

Neutral Citation No:NA

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Yashwant Verma and Ravinder Dudeja HJ

Case Title: Loreal Vs Ravi Gandhi

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539