In the matter of Makemytrip
India Private Limited vs Booking.com B. V. & Ors., vide its order
dated 27th April 2022, Justice Pratibha M. Singh of Delhi High Court granted injunction in favour
of Make My Trip (hereinafter “MMT”.
MMT had filed the suit seeking protection of its registered
trademarks 'MakeMyTrip' and its variants used by Booking.com B.V. as keywords on the Google Ads Program for promoting its services as
advertisements when search results are displayed on the Google search engine. The
contention of MMT was that when a search is carried out for 'MakeMyTrip' in the
Google search bar, quite often the first advertisement which is displayed in
the search results in the advertisement category is that of Booking.com, who is
one of the major competitors of MMT. According to MMT, such use of its
registered mark would constitute infringement, especially when done by its
competitor such as booking.com.
Booking.com relied on the judgment of the European Commission in Case
AT.40428-GUESS dated 17th December, 2018 (“Guess” judgement), that there cannot be any
restriction on the use of a trademark on the Google Ads Program as a keyword,
including by competitors. Booking.com contended that apart from conducting
business in India, it is also a global player in the area of providing hotel
bookings, airline bookings etc. An injunction restraining it from bidding on
the trade mark of MMT would put it in contravention of the law of other foreign
jurisdictions such as the European Union. Therefore, it ought to be permitted
to file a reply in this matter, before any order is passed. It further
contended that any restriction which may be put on the use of MMT’s mark
'MakeMyTrip' as a keyword through the Google Ads Program would be contrary to
competition law. It was finally contended that the words 'make', 'my', 'trip'
can be used in a generic and descriptive fashion, which in any case ought not
to be injuncted in view of Sections 34 and 35 of the Act.
Court observed that the factual background of the present case is
distinct from those in the judgment of the European Commission in “Guess” case/judgement.
The European Commission was concerned therein with a case where authorised
distributors and retailers of 'GUESS' products were contractually being
prevented from using 'GUESS' brand names and trademarks as keywords or bidding on
the Google Ads Program. Court observed that the European Commission was dealing
with 'intra-brand' competition and partitioning national markets, being
restricted contractually. In the case at hand, the facts are entirely different
as MMT seeks to restrict Booking.com, which is its competitor, from using its
mark as a keyword through Google Ads Program.
Court observed that as per Kerly's Law of Trade Marks and Trade Names (15th Ed., p.628 & 629) a third party bidding on trademarks as
sponsored keywords for use by internet search engines can constitute
misrepresentation. The
"invisible" use of a mark as a keyword (metatag) can constitute
passing off as a matter of principle.
Court was prima facie of the opinion
that the use of MMT 's registered mark 'MakeMyTrip' on the Google Ads Program as a
keyword amounts to trademark infringement and would be detrimental to MMT's
monetary interest. Court opined that it is not permissible
to allow competitors such as Booking.com and even Google
to encash upon the reputation of MMT's mark for their own monetary advantage.
Court
restrained Booking.com as well as Google from using the mark 'MakeMyTrip'
together/ in conjunction, with or without spaces for the purpose of using it as
a keyword on the Google Ads Program till the next date of hearing.
Being
conscious of global repercussion of the interim injunction, court also clarified
that the injunction shall be restricted to the territory of India and granted
one week’s time to Booking.com and google to comply with/implement the order.
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