Trap Purchases and Manufactured Jurisdiction in Indian IP Litigation A study of SML Ltd. v. M/s Happy Agro Chemicals and the doctrine of trap transactions Introduction In intellectual property disputes, few procedural issues matter as much as deciding where a case can be filed. The choice of court often shapes the entire journey of the case — from how quickly interim orders are granted, to the attitude of the local lawyers, to the practical burden placed on a defendant who must fight far from home. Because the forum is so important, plaintiffs sometimes try to influence it. The most common method is the trap purchase : a test buy arranged by the plaintiff, where an investigator pretends to be a regular customer, purchases the allegedly infringing product, and keeps the invoice and packaging. Later, this evidence is used not only to show infringement but — more controversially — to argue that the cause of action arose within the territory of the chosen court. Tra...
Keyword Advertising and Trademark Infringement: MakeMyTrip India Pvt. Ltd. v. Booking.com B.V. & Ors.
Background
By order dated April 27, 2022, Justice Pratibha M. Singh of the Delhi High Court granted an interim injunction in favor of MakeMyTrip India Private Limited ("MMT") in its suit against Booking.com B.V. and others.
MMT had sued to protect its registered trademarks "MakeMyTrip" and its variants, which Booking.com was using as keywords on Google's Ads Program to trigger its own advertisements in Google search results. MMT's grievance was that a search for "MakeMyTrip" frequently displayed, as the very first result in the advertisement category, a sponsored listing for Booking.com — one of MMT's principal competitors. MMT argued that such use of its registered mark by a direct competitor amounted to trademark infringement.
Booking.com's Defense
Booking.com resisted the injunction on several grounds:
- It relied on the European Commission's decision in Case AT.40428 — Guess, dated December 17, 2018 (the "Guess decision"), arguing that there is no basis for restricting the use of a trademark as a keyword on the Google Ads Program, including by competitors.
- It argued that, being a global player in hotel and airline bookings and not merely an Indian operator, an injunction restraining it from bidding on MMT's mark would place it in conflict with the law of other jurisdictions, including the European Union — and that it should therefore be permitted to file a reply before any order was passed.
- It contended that any restriction on using "MakeMyTrip" as a keyword would run contrary to competition law principles.
- Finally, it argued that the constituent words "make," "my," and "trip" are generic and descriptive in nature, and that their use in that manner ought to fall outside the scope of infringement in view of Sections 34 and 35 of the Trade Marks Act, 1999.
The Court's Reasoning
Distinguishing the Guess Decision
The Court held that the factual matrix before it was materially different from that considered by the European Commission in Guess. The Guess decision concerned authorized distributors and retailers of GUESS-branded products who were contractually barred from using the GUESS brand name and trademarks as keywords or for bidding on the Google Ads Program. The European Commission's concern in that case was with intra-brand competition — namely, the artificial partitioning of national markets through contractual restrictions imposed on a brand's own authorized distributors and retailers.
The present case, the Court observed, was fundamentally different: MMT was not seeking to restrain its own authorized dealers or licensees, but rather a direct competitor — Booking.com — from using its registered mark as a keyword to divert search traffic and sales to itself. The Guess decision, concerned as it was with intra-brand restrictions, offered no support for permitting this kind of inter-brand use by a rival business.
Keyword Bidding as Potential Misrepresentation
The Court referred to Kerly's Law of Trade Marks and Trade Names (15th ed., pp. 628–629), noting that a third party's bidding on another's trademark as a sponsored keyword on an internet search engine can, in principle, amount to misrepresentation. Even the "invisible" use of a mark as a keyword or metatag — one that a searcher never directly sees on the page — can, as a matter of principle, constitute passing off.
Prima Facie Finding of Infringement
On this basis, the Court formed a prima facie view that Booking.com's use of MMT's registered mark "MakeMyTrip" as a keyword on the Google Ads Program amounted to trademark infringement, and that it was causing detriment to MMT's commercial interests. The Court was of the opinion that competitors such as Booking.com — and, by extension, Google itself — could not be permitted to trade upon the reputation and goodwill built up in MMT's mark for their own commercial advantage.
Relief Granted
The Court restrained both Booking.com and Google from using the mark "MakeMyTrip" — whether together, in conjunction, with or without spaces — as a keyword on the Google Ads Program, until the next date of hearing.
Mindful of the potentially global reach of such an order, the Court expressly clarified that the injunction would operate only within the territory of India, and granted Booking.com and Google one week's time to comply with and implement the order.
This article is intended for general informational purposes and reflects commentary on an interim order. It does not constitute legal advice, and readers should consult a qualified trademark attorney for guidance on specific matters, including any subsequent developments in this litigation.
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