Delhi High Court granted injunction in favour of Make My Trip (hereinafter “MMT”.
registered trademarks 'MakeMyTrip' and its variants as advertisements when search results are displayed on the Google search engineThe 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.
judgment of the European Commission in Case AT.40428-GUESS dated 17th December, 2018 (“Guess” judgement), 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.