New Delhi: The Delhi High Court has determined that Google cannot claim safe harbour protection under the Information Technology Act, 2000, or be exempt from liability for trademark infringement when using a trademark as a keyword in its ads programme.
On Thursday, a bench comprising of Justices Vibhu Bakhru and Amit Mahajan also acknowledged that the ads programme functions as a commercial venture by Google and consequently, employing a trademark as a keyword in advertisements for products or services constitutes the utilisation of the trademark in advertising according to Section 29(6) of the Trademarks Act.
Nonetheless, the court clarified that employing these trademarks as keywords wouldn’t amount to infringement if there is no confusion, dilution, or compromise of the trademark’s integrity.
On the subject of safe harbour and Google’s liability under Section 79 of the Information Technology Act, the court emphasised that the tech giant is an active participant, not a passive intermediary, in its ads programme.
Therefore,it highlighted that the protection of safe harbour won’t be applicable to Google if it’s found to be infringing on trademarks.
The court was hearing Google’s appeal against a decision made by a single judge on October 30, 2021.
The initial ruling stated that Google couldn’t evade responsibility for ensuring that a keyword didn’t violate trademark rights.
The single judge determined that Google couldn’t claim the intermediary defense provided by Section 79 of the Information Technology Act, 2000.
The lawsuit was initiated by DRS Logistics with the aim of restraining Google India, Google LLC, and Just Dial from using their registered trademark “AGARWAL PACKERS & MOVES or DRS LOGISTICS”.
This included use as a keyword, meta tag, or trademark by either the companies or third parties.
“Undisputedly, the trademarks are monetized by Google by using the same as keywords for displaying the paid ads on the SERP. In one sense, Google effectively sells the use of the trademarks as keywords to advertisers. Prima facie, it encourages users for using search terms, including trademarks, as keywords for display of the ads to the target audience,” the court said in its order on Thursday.
“It is difficult to accept that Google is entitled to exemption under Section 79 of the IT Act from the liability of infringement of trademarks by its use of the trademarks as keywords in the ads programme. It can hardly be accepted that Google can encourage and permit use of the trademarks as keywords and in effect sell its usage and yet claim the said data as belonging to third parties to avail an exemption under Section 79(1) of the IT Act.”
The court further said that “prior to 2004, Google did not permit use of trademarks as keywords”.
“However, Google amended its policy, obviously, for increasing its revenue. Subsequently, it introduced the tool, which actively searches the most effective terms including well known trademarks as keywords.
“It is verily believed that in the year 2009 Google estimated that use of trademarks as keywords would result in incremental revenue of at least $100 million. Google is not a passive intermediary but runs an advertisement business, of which it has pervasive control. Merely because the said business is run online and is dovetailed with its service as an intermediary, does not entitle Google to the benefit of Section 79(1) of the IT Act, in so far as the Ads Programme is concerned,” the court added.
–IANS