Policybazaar Insurance Web Aggregator & Anr. vs. Coverfox Insurance Broking Pvt. Ltd. & Ors.

* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 16.08.2023
Date of decision: 06.09.2023

+ CS(COMM) 259/2019
POLICYBAZAAR INSURANCE WEB AGGREGATOR
& ANR. ..... Plaintiffs
Through: Mr.Amit Sibal, Sr. Adv. with
Mr.Mohit Goel, Mr.Sidhant Goel,
Mr.Deepankar Mishra,
Mr.Abhishek Kotnala,
Mr.Karmanya Dev Sharma,
Mr.Rishabh Sharma, Mr.Saksham
Dhingra, Advs.
versus
COVERFOX INSURANCE BROKING PVT. LTD. & ORS.
..... Defendant
Through: Mr.Peeyoosh Kalra, Ms.V.
Mohini, Ms.Aarti Aggarwal &
Mr.Udayvir Rana, Advs. for D-1.
Mr.Arun Kathpalia, Sr. Adv. with
Mr.Aditya Gupta, Mr.Sauhard
Alung Advs. for D- 2.
Mr.Arvind Nigam, Sr. Adv. with
Mr.Neel Mason, Mr.Ankit Ratogi,
Mr.Vihan Dang, Ms.Aditi
Umapathy, Ms.Pragya Jain, Advs.
for D- 3 (Google LLC).

+ CS(COMM) 260/2019
POLICYBAZAAR INSURANCE WEB AGGREGATOR
& ANR. ..... Plaintiffs
Through: Mr.Sai Deepak, Mr.Mohit Goel,
Mr.Sidhant Goel, Mr.Deepankar
Mishra, Mr.Abhishek Kotnala,
Mr.Karmanya Dev Sharma, Advs.
versus

ACKO GENERAL INSURANCE LTD. & ORS. .... Defendants
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Through: Mr.Sandeep Sethi, Sr. Adv. with
Mr.Peeyoosh Kalra, Ms.V.
Mohini, Ms.Aarti Aggarwal &
Mr.Udayvir Rana, Advs. for D-1.
Mr.Arun Kathpalia, Sr. Adv. with
Mr.Aditya Gupta, Mr.Sauhard
Alung Advs. for D- 2.
Mr.Arvind Nigam, Sr. Adv. with
Mr.Neel Mason, Mr.Ankit Ratogi,
Mr.Vihan Dang, Ms.Aditi
Umapathy, Ms.Pragya Jain, Advs.
for D- 3 (Google LLC).
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
J U D G M E N T

I.A. 7213/2019 & I.A. 8129/2019 in CS(COMM) 259/2019
I.A. 7219/2019 & I.A. 8003/2019 in CS(COMM) 260/2019

1. The above Suit(s) have been filed by the plaintiffs seeking to
restrain the defendants from allotting and from using the trade
name, terms and phrases as keywords on the defendant nos.2‟s and
the defendant no.3‟s AdWords Program, which are identical to or
deceptively similar to the plaintiffs‟ trade marks „Policy Bazaar‟,
„PolicyBazaar‟ and „Policy Bazar‟ in any manner, form, variation
and/or combination, for its business through the Google
Ads/AdWords program operated and managed by the defendant
nos. 2 and 3.

Averments in the Plaint:
2. It is the case of the plaintiffs that the plaintiff no.1 is one of
India‟s largest aggregators of insurance products and specializes in
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making comparative analysis of insurance products and in assisting
its customers to make an informed decision about their insurance
policy needs. It is stated that the plaintiff no.1 is a wholly owned
subsidiary of the plaintiff no.2, which is a fin-tech marketing
company, providing technologically driven marketing services to
its customers. The plaintiff no.2 is the owner/registered proprietor
of the trade marks which are the subject matter of the above Suits.
It is claimed that the plaintiff no.2 had adopted and used the
„Policy Bazaar‟, „PolicyBazaar‟ and „Policybazar‟ word marks and
the logos

(hereinafter referred
to as the „Policybazaar marks‟), for all its business activities since
the year 2008. The domain name www.policybazaar.com was
registered in favour of the plaintiff no.2 in the year 2008. In 2014,
the user rights in the Policybazaar marks were licenced to plaintiff
no.1 through a licence agreement dated 15.12.2014. It is further
claimed that the plaintiff no.2 is the registered proprietor of the
following marks:-

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3. The plaintiffs further claim that they enjoy enormous
goodwill and reputation in the abovementioned registered trade
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marks, as is evident from the yearly turnover generated by the
plaintiffs in India, as set out in paragraph 11 of the plaint. It is
further claimed that the plaintiffs make substantial investments in
the advertising and other promotional activities of the said marks.
The details of such marketing expenses incurred by the plaintiffs
have been mentioned in paragraph 12 of the plaint. The plaintiffs
claim that they also maintain an active and extensive presence on
several prominent social-media platforms, including Facebook,
Twitter, YouTube and Instagram. They state that the plaintiff
no.1‟s website www.policybazaar.com is one of the most accessed
and used online insurance aggregator service provider with an
ever-increasing number of internet visitors on the said website.
They give the internet hits on plaintiff no.1‟s website for the period
2009 to April 2019 in paragraph 17 of the plaint. They state that
more than 78 Lakh people have used the services of the plaintiffs
through plaintiff no.1‟s platform. They state that in 2014, plaintiff
no.1 developed and launched a Mobile Application under the
Policybazaar Marks. The said mobile application is available
through various platforms, including Google Play Store and
Apple‟s App Store, with a total of over 3.4 million downloads till
2019.
4. The plaintiffs submit that on account of extensive,
continuous and uninterrupted use of the Policybazaar marks, the
plaintiffs have acquired common law rights in the said marks and
are, therefore, entitled to the exclusive and undisturbed use thereof.
They submit that any use of the said marks by a third and unrelated
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party would amount to a violation of plaintiffs‟ rights in their
registered trade marks.
5. The plaintiffs state that the defendant nos.2 and 3 offer a
keyword trigger advertisement program called Google AdWords,
which is a self-serve online advertising service for businesses and
which allows anyone, by paying a fee, to adopt and use the
keywords or phrases, known as “ AdWords ”, that match the terms
or phrases that internet users are most likely to use/search for
through the popular search engine of the defendant nos. 2 and 3
located at the web address www.google.com.
6. The plaintiffs state that a business entity has to first
subscribe to the AdWords Program, construct campaigns and
submit its list of proposed keywords to the defendant nos.2 and 3,
after which the proposed keywords are allotted to such an entity by
the defendant nos.2 and 3. Only upon such allotment, an entity
would be able to bid for these keywords, and once such an entity
has successfully bid for an Ad-Word, the search engine will
display the website of such an entity in the search result under the
section of „Sponsored Links‟ as an advertisement, along with the
mark „
‟ with the link of the website of such entity. Therefore,
such an entity receives assistance from the keyword suggestion
tool of the defendant nos.2 and 3. Once an internet user clicks on
the sponsored link, the defendant nos.2 and 3 earn revenue by way
of the costs paid by the entity for displaying its advertisement in
the sponsored links. By bidding for frequently searched Ad-Words
through the Google AdWords Program, an entity strives to gain
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increased visibility on the search engine, leading to increased
traffic on its website and diversion of business from other entity‟s
websites. The website/search engine of the defendant nos.2 and 3
displays up-to three sponsored links immediately after the natural
search results and also displays the sponsored links to the right of
the search results. The advertisers purchase their keywords through
an auction where they bid competitively against each other for
page position on the search results page as generally, the users of
the internet are more likely to click on an advertisement that
appears higher up on the search result page.
7. The plaintiffs claim that they have also subscribed to
defendant no.2 and 3‟s AdWords Program and maintain an official
AdWords account. Through this AdWords account, the plaintiffs
bid for keywords, such as, „Policybazaar‟, „Policy bazaar‟, etc.,
which are the registered trade marks of the plaintiffs and are thus
proprietary to the plaintiffs under the Trade Marks Act, 1999
(hereinafter referred to as the „Act‟). It is stated that these
keywords when searched by the internet user through the search
engine, trigger and show the plaintiffs‟ website. The plaintiffs state
that by availing this AdWords Program, they have been able to
attract internet users to their website for their business of web
insurance aggregator and, therefore, it has become a key and
integral business medium for the plaintiffs. The plaintiffs gave the
list of some of the campaigns run by them through the AdWords
Program in paragraph 37 of the plaint.
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8. The plaintiffs claim that in CS (Comm) 259/2019, the
defendant no.1, that is, Coverfox Insurance Broking Pvt. Ltd. is a
company engaged in identical and/or allied and cognate business
services of insurance brokering under the marks Coverfox and
and operates a website under the domain
name „www.coverfox.com‟. While both plaintiff no.1 and
defendant no.1 are distributors of insurance policies/products,
however, as an insurance broker, the defendant no.1 carries on its
business in an online and offline mode, whereas the plaintiff no.1
carries on its business entirely in the online mode.
9. The plaintiffs are aggrieved of the defendant no.1 bidding
for the plaintiffs‟ Policybazaar Marks as AdWords through the
defendant nos. 2 and 3‟s AdWords Program, resulting in the
defendant no.1‟s website being displayed as a sponsored link on
the search engine of the defendant nos.2 and 3 when a person
searches for keywords containing the plaintiffs‟ Policybazaar
marks. The plaintiffs claim that the defendant no.1 is illegally
bidding and using the keywords identical to the plaintiffs‟
Policybazaar Marks with the intent of diverting business from the
plaintiffs‟ website by causing confusion and association with the
plaintiffs, thereby violating common law and statutory rights of the
plaintiffs in the said registered marks of the plaintiffs.
10. The plaintiffs submit that the defendant nos.2 and 3 increase
the „Cost Per Click‟ (in short, „CPC‟), that is, the cost incurred by
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the plaintiffs to get a single order or transaction due to such
unauthorized bidding and use of the plaintiffs‟ Policybazaar marks
by the defendants, thereby causing financial loss and burden on the
plaintiffs for use of their own marks.
11. In CS (Comm) 260/2019, similar allegations are made
against the defendants. It is stated that the defendant no.1 herein,
that is, Acko General Insurance Ltd., is a General Insurance
Company dealing in identical and/or allied and cognate business
services and offers its services under the marks Acko and
and operates a website under the domain
name „www.acko.com‟. It is stated that the defendant no.1 herein
creates insurance products/policies.
RELEVANT PROCEEDING IN THE SUIT(S):
12. This Court, by its ad interim ex-parte orders dated
16.05.2019, restrained the defendant no.1 in both the Suits from
adopting and using the plaintiffs‟ Policybazaar marks in any
manner, form, variation and/or combination as an Ad Word, an
AdWord Program, or any other Ad-Word/Keyword Program
through Google, in any manner whatsoever.
13. Thereafter, the defendant no.1 in both the above Suits
respectively, filed application(s) under Order XXXIX Rule 4 of the
Code of Civil Procedure, 1908, being IA No. 8129/2019 and IA
No. 8003/2019 respectively. In the said applications, the defendant
no.1 respectively, inter alia contended that the above ad interim
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ex-parte orders dated 16.05.2019 have been obtained by the
plaintiffs by concealing from this Court the fact that the plaintiffs
themselves were bidding for the registered trade marks of the
defendant no.1 as keyword in the Google AdWords Program of the
defendant nos.2 and 3 for their business activities.

14. The above applications, that is, IA No. 8129/2019 and IA
No. 8003/2019, were listed before this Court on 29.05.2019 and
28.05.2019, respectively.
15. This Court, taking into account the concealment of the fact
by the plaintiffs that the plaintiffs were themselves bidding for the
trade marks of the defendant no.1 in the two Suits as
Keywords/Ad-Words in the AdWords Program of the defendant
nos.2 and 3, suspended the ad interim ex-parte order dated
16.05.2019, vide its order dated 28.05.2019 in CS (Comm)
260/2019, and vide order dated 29.05.2019 in CS (Comm)
259/2019, while also imposing costs on the plaintiffs.
16. In both the Suits, the plaintiffs, thereafter, moved
applications, being IA No. 11953/2019 in CS (Comm) 259/2019
and IA No. 11955/2019 in CS (Comm) 260/2019, seeking to
amend their plaint, so as to now allege that the defendant nos.2 and
3 are also liable for infringing the trade marks of the plaintiffs.
17. On 14.07.2022, the learned senior counsel for the plaintiffs
insisted that the applications for interim orders be heard without
awaiting the outcome of the amendment applications. On such
submission, the following order was passed:-
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“At the outset, the learned senior counsel
appearing for the Defendant Nos. 2 and 3 points
out there is an application seeking amendment to
the plaint, filed by the Plaintiffs, being I.A. No.
11953/2019 in CS(COMM) 259/2019 and I.A. No.
11955/2019 in CS(COMM) 260/2019. He submits
that the hearing of the applications on interim
relief should be considered after the said
applications are decided.
The learned senior counsel appearing for
the Plaintiffs, on instructions, submits that no
interim relief is sought against the Defendant Nos.
2 and 3 and the same would not be sought even if
the amendment applications are allowed in favour
of the Plaintiffs. He submits that, therefore, these
applications have no bearing on the hearing of the
applications seeking interim relief. He further
submits that during the course of the arguments he
would not refer to the replication application for
the purposes of the interim injunction.
It is in view of the above statement that the
hearing in the applications seeking interim relief
has commenced.
Arguments heard in part. To come up for
remaining arguments on 5th August, 2022.”

18. Thereafter, hearings on the applications seeking interim
relief filed by the plaintiffs, and on the applications filed by the
defendant no.1 in the two Suits seeking vacation of the ad interim
order granted, were heard and judgment was reserved.
19. While the judgment was under preparation, a Division
Bench of this Court pronounced a judgment dated 10.08.2023 in
Google LLC v. DRS Logistics (P) Ltd. & Ors. , Neutral Citation:
2023:DHC:5615-DB, which dealt with the similar issues as
involved in the present commercial Suits.
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20. As the above judgment answers various issues that have
been raised by the parties in the course of their submissions before
this Court, this Court deemed it appropriate to list these
applications for directions on 16.08.2023. On the said date, the
learned counsels for the parties made their submissions on the
effect of the judgment pronounced by the Division Bench of this
Court in DRS Logistics (P) Ltd. & Ors. (Supra).

SUBMISSIONS OF THE LEARNED SENIOR COUNSEL
FOR THE PLAINTIFFS


21. The learned senior counsel for the plaintiffs submits that by
continuously bidding for the plaintiffs‟ Policybazaar marks, the
defendant no.1 is guilty of infringing and passing off the marks of
the plaintiffs and also causing loss to the plaintiffs as the plaintiffs
have to pay the increased CPC. It also leads to the blurring of the
distinctive character of the marks. The defendant no.1 also gains an
unfair advantage by the use of the marks in the form of increased
hits on its website and diversion of traffic from plaintiffs‟ website
to its own.
22. He submits that if an internet user types any of the
Policybazaar Marks, and the website of the defendant no. 1 appears
in the search results, the internet user would at once perceive an
association of the Defendant no. 1 with the Plaintiffs. The internet
user is likely to be confused. He submits that the selected keyword
is visible and perceivable to all internet users as it appears on the
Google Search Engine and in the URL of the sponsored links.
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23. He submits that the Google AdWords Program is an
advertising service and, therefore, use by the defendant no.1 of a
keyword, which is identical or similar to the plaintiffs‟
Policybazaar marks, would constitute „use‟ in terms of Section
2(2)(b), Section 2(2)(c), and Section 29 of the Act. He submits that
the defendant no. 2 and 3 also use the plaintiffs‟ marks by
triggering/transmitting the advertisement of the defendant no. 1 on
its Search Engine and by storing and aiding the selection thereof as
keywords.
24. He submits that such use would result in infringement of the
trade marks of the plaintiffs in terms of Section 29(2)(c) read with
Section 29(3) of the Act, as the services for which the plaintiffs‟
trade marks are used by the defendant no.1, are identical to those of
the plaintiffs. He submits that as the services of the plaintiffs‟ and
the defendant no. 1 are identical, the Court will not inquire whether
the infringement is such as is likely to deceive or cause confusion.
25. He submits that in terms of Section 29(7) of the Act, such
use will also amount to infringement of plaintiffs‟ trade marks by
the defendant no.1 inasmuch as the plaintiffs‟ marks are applied by
the defendant no.1, and are also permitted to be applied by the
defendant nos.2 and 3, to the web pages on the internet in order to
be used for advertising defendant no.1‟s services.
26. He submits that as such the defendant no.1 is guilty of
infringing the registered trade marks of the plaintiffs. He submits
that in terms of Section 29(8) of the Act, the use of the registered
trade mark by the defendant no. 1 provides an unfair advantage to
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the defendant no.1; and it is contrary to the honest practices in
industrial and commercial matters. It is also detrimental to the
distinctive character of plaintiffs‟ marks and causes dilution on the
part of the public.
27. He submits that the defence of the defendants that the use of
the trade marks is invisible is also incorrect, inasmuch as the same
is patently visible and perceivable to all internet users in a tangible
form. Even otherwise, such invisible usage of trade marks, such as
meta-tags, has also been held to constitute infringement of a trade
mark. He submits that mere diversion of internet traffic to
defendant no.1‟s website would also be actionable without the
requirement of any further proof of confusion. He submits that the
use of the trade marks as a keyword would cause initial interest
confusion or pre-sale confusion, which also is actionable.
28. He submits that the test to be applied in the present case is
that of a consumer of average intelligence having imperfect
recollection. Applying such a test, and keeping in view that the
services of the plaintiffs and the defendant no.1 are used by all
classes of consumers, in both urban and rural areas, confusion
being caused by the complained use is apparent, resulting in the
passing off of the defendant no.1‟s services as that of the plaintiffs.
29. On the question of suppression, the learned senior counsel
for the plaintiffs submits that the plaintiffs had made sufficient
disclosure in the plaint that they were not bidding for the defendant
no.1‟s marks at the time of the institution of the present Suits. He
further submits that the plaintiffs have also deposited the costs that
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were imposed by this Court and, therefore, the interim applications
should now be decided on merits. He submits that even otherwise,
the plaintiffs are claiming their statutory rights, which cannot be
defeated on grounds of equity.

SUBMISSIONS OF THE LEARNED SENIOR COUNSEL
FOR THE DEFENDANT NO.1


30. On the other hand, the learned senior counsel for the
defendant no.1 submits that the plaintiffs are guilty of concealment
and have approached this Court with unclean hands. He submits
that this is a sufficient ground for denying any interim relief to the
plaintiffs. He further submits that the plaintiffs are also guilty of
acquiescence and their claim is barred by estoppel . He submits that
having voluntarily acceded to the Google AdWords Program by
themselves creating an AdWord account and bidding on the third
party marks, including the trade marks of the defendant no.1,
plaintiffs cannot now be allowed to raise any objections even to the
defendant no.1‟s use of the Policybazaar marks for the very same
program. The plaintiffs having utilized the Google AdWords
Program for their benefit, hence, cannot now accuse the defendants
of having committed any wrongful acts.
31. He submits that keywords for an internet search do not fall
within the scope of a trade mark, as defined under Section 2(1)(zb)
of the Act. It is merely a back-end trigger for triggering the pooling
of the advertisements and does not perform any trade mark
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function, such as, origin or source identification, and is, therefore,
not a trade mark under the provisions of the Act.
32. He submits that the same is also not a use of the mark as
defined under Section 2(2)(b) or Section 2(2)(c) or Section 29 of
the Act.

33. He submits that the use of the keyword also cannot amount
to an infringement of a trade mark under Section 29 of the Act. He
submits that the use of a trade mark as a keyword, on its own, does
not lead to any confusion, which is a sine qua non for trade mark
infringement or passing off. For determining confusion or
likelihood of confusion, the relevant or proper comparison ought to
be made between the resulting advertisements.
34. He submits that the Google Ads Program is merely a
medium for advertising, while the text of the advertisement
displayed shall be material of advertising. Therefore, Section 29(7)
of the Act shall be attracted only where in the text of the
advertisement itself, there is use of plaintiffs‟ trade marks.
35. He submits that the advertisements complained of in the
present Suits, do not contain any reference of plaintiffs‟ marks and
clearly identifiable as those relating to the defendant no. 1. He
submits that, therefore, Section 29(8) of the Act is not attracted in
the facts of the present Suits.
36. He submits that a mere diversion of consumers/users is not
actionable per se , without any confusion or likelihood of confusion
on the part of the consumers. Similarly, the mere generation of
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initial interest is not sufficient to hold the defendant no.1 guilty of
infringement or passing off of a trade mark.
37. He submits that the persons using the internet to look for
Insurance policies, are internet literate, having a basic
understanding of how a search engine functions and know the
difference between organic search results and the sponsored search
results and advertisements. They cannot, therefore, be confused by
the advertisements which clearly depict the source.

SUBMISSIONS OF THE LEARNED SENIOR COUNSEL
FOR THE DEFENDANT NOS.2 AND 3

38. The learned senior counsel for the defendant nos.2 and 3
submits that use of trade marks as keywords does not amount to
„use‟ of a mark under the Act. He submits that the use of keywords
as a backend trigger of an advertisement, which is invisible and can
neither be seen nor be understood by any user/consumer, is not
likely to be perceived as a trade mark being used, especially by the
defendant nos.2 and 3.
39. He submits that mere triggering of an advertisement by a
third party cannot per se give rise to an assumption of confusion
being caused in public. In the absence of any actual or visible use
of the trade mark within the text of an advertisement, no question
of likelihood, confusion, or deception arises.
40. He submits that the users of the Google Search Engine
understand how the search results are generated and also
understand the difference between the normal organic search
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results and the advertisements, as the advertisements/sponsored
links are visible under the mark „
‟ and, therefore, there is no
likelihood of confusion being caused in the public/users of the
search engine.
41. He submits that no case of infringement of the trade marks
of the plaintiffs is made out in the facts of the present case. He
submits that in the absence of confusion or misrepresentation, no
case of passing off is also made out.
42. He submits that even otherwise, the defendant nos.2 and 3
would be entitled to seek protection under Section 30(1) of the Act,
against the claim of infringement by the plaintiffs.

ANALYSIS AND FINDINGS:
43. I have considered the submissions made by the learned
counsels for the parties. In fact, I must state that the legal
submissions on the applicability of Section 2(2)(b), 2(2)(c) and
Section 26 and also Section 29 of the Act to the Google AdWords
Program of the defendant nos.2 and 3 have been answered by the
Division Bench of this Court in DRS Logistics (P) Ltd. & Ors.
(Supra) and, therefore, I can do no better but merely refer to the
relevant findings of the Division Bench to answer the submissions
made by the learned counsels for the parties herein.

WHETHER USE OF A MARK AS KEYWORD AMOUNTS
TO ‘USE’ UNDER SECTION 2(2), 2(3), AND 29(6) OF THE
ACT

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44. In DRS Logistics (P) Ltd. & Ors. (Supra), the Division
Bench of this Court has held that the expression „use of a mark‟ is
to be understood, as instructed by Section 2(2)(b) or Section
2(2)(c) of the Act, depending on the context in which the said
expression is used. The Court held that Section 2(2)(c)(i) of the Act
is couched in wide terms. Any reference to the use of a mark in
relation to goods is not only limited to use in any physical form but
also „ in other relation whatsoever ‟ to such goods. The Court
further held that it is difficult to accept that the use of a mark in
relation to services must be construed in a narrower sense than the
use of the mark in respect of goods, however, the same would
depend on the context in which the expression „ use of the mark ‟ is
used.
45. It has been further held by the Division Bench that the words
of Section 2(2) of the Act do not control the width of Section 29(6)
of the Act. Thus, if any action falls within the scope of Section
29(6) of the Act, the same would necessarily have to be construed
as use of the mark for ascertaining whether the trade mark is
infringed in terms of Section 29 of the Act.
46. The Division Bench on the „ use of a trade mark ‟ in relation
to Google AdWords Program has held as under:-
“90. Indisputably, the Ads Programme is
Google‟s commercial venture to monetize the use
of the Search Engine for advertising by displaying
the sponsored links of various advertisers, who
seek to display their advertisements on the SERP
pursuant to search queries initiated by an internet
user. The use of a trademark as keywords for
display of advertisements in respect of goods or
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services clearly amounts to use of the trademark
in advertising within the meaning of Section 29(6)
of the TM Act.
91. The expression “in advertising” as used in
Section 29(6)(d) of the TM Act is not synonymous
to the expression „in an advertisement‟. It is not
necessary that the registered trademark physically
appears in an advertisement for the same to be
used “in advertising”. The use of a trademark as
a keyword to trigger display of an advertisement
of goods or services would, in plain sense, be use
of the mark in advertising.
92. The conclusion of the Court of Justice of the
European Union in Google France SARL and
Google Inc. v. Louis Vuitton Malletier SA& Ors.
that use of a sign by an advertiser, which is
identical to the trademark as a keyword, in the
context of an internet referencing service, would
be the use of the same in relation to goods or
services, is persuasive on this aspect, our view is
similar.
93. It is important to distinguish between use of
a mark as a trademark, and its use other than as a
trademark. The use of a trademark as a keyword
by an advertiser for the purposes of displaying its
advertisements on the Search Engine, is use of the
mark in relation to the goods and services offered
by an advertiser. But it is not use that mark as a
trademark.”
(Emphasis supplied)

47. The Division Bench also rejected the submission of
defendant nos.2 and 3 that as the keyword is not visible to the
internet user, the same would not amount to a use of the trade
mark. The Court observed as under:-
“98. There is merit in the contention that meta
tags are materially different from keywords used
in the Ads Programme. For one, the paid
advertisements in the Ads Programme are
displayed as sponsored links. Meta tags are
embedded by proprietors of websites in the source
code to take advantage of the internet search
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engine‟s process of indexing. The internet search
engine would index links to sites associated to the
search query and the use of meta tags relevant to
the search query, result in the advertiser‟s website
being displayed as a part of the organic search.
This may give an impression to the internet user
that that the links displayed have a connection
with the search query. However, the learned
Single Judge had referred to meta tags and the
decisions rendered in cases relating to use of meta
tags, to address the contention whether use of
trademarks which is not visible to the internet user
may in given circumstances amount to
infringement of the trademarks.

99. We find no infirmity with the reasoning of
the learned Single Judge in considering the use of
trademarks as keywords analogous to using the
same as meta-tags, for the limited purposes of
examining whether use of a trademark, which is
not visible may infringe the trademark. Merely
because the meta-tags may be visible to a person
who examines the source code of a website is not
material. The use of meta-tags and keywords, in
one sense, serves similar purpose for displaying
advertisement and attracting internet traffic.

100. As noticed above, meta-tags serve as a tool
for indexing the website by a search engine. Thus,
if a trademark of a third party is used as a meta-
tag, the same would serve as identifying the
website as relevant to the search query that
includes the trademark as a search term. The use
of keywords in the Ads Programme also serves the
same purpose. It, essentially, in a manner of
speaking, tags a link of an advertiser (sponsored
link) with the keyword(s). The same are used as a
device to catalogue the sponsored link. The fact
that using a keyword may not necessarily lead to
display of the advertiser‟s link as a sponsored link
on the SERP, pursuant to a search query that
includes a keyword as a search term, makes little
difference. Admittedly, the use of the keywords
enables an advertiser for placing its sponsored
link in the short list, which is finally considered
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for display on the SERP. There may be other
parameters that are relevant for determining the
final list of sponsored links that are displayed on
the SERP pursuant to a search query that includes
the keyword as a search term. But that does not
dispel the fact that keywords are used to index the
sponsored links for the purposes of displaying the
same on the SERP.
xxxxxx
106. As discussed earlier, we are unable to
accept that merely because the trademark is not
visible, its use as a keyword in the Ads
Programme would not amount to use of the
trademark under the TM Act. The advent of
internet and e-commerce have added new
dimensions to trade and commerce. Thus, the
provisions of the TM Act would necessarily have
to be read in an expansive manner to address the
novel issues thrown up by the advancement of
technology.”
(Emphasis supplied)

WHETHER DEFENDANT NO. 2 AND 3 CAN
ALSO BE SAID TO BE USING THE MARK

48. Though the learned senior counsel for the plaintiffs herein
had, as recorded in the order dated 14.07.2022 of this Court
reproduced hereinabove, stated that no interim relief is sought
against the defendant nos.2 and 3, as the Division Bench of this
Court has already answered the issue as to whether the defendant
nos.2 and 3 can be made liable on an action of infringement or
passing off, I deem it appropriate to refer to the same.
49. The Division Bench has held that the role of the defendant
nos.2 and 3 in the Google AdWords Program is anything but
passive. Its program is designed to attract maximum revenue by
display of sponsored links. It is an active participant in the use and
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selection of the keywords as the responsibility for the selection of
Ads displayed by it and the process used for the same,
substantially, if not entirely, rests with Google, that is, the
defendant no.2 and 3 herein. The Court has held as under:-
“128. Prima facie, we are unable to accept the
view that use of trademarks as keywords in the
Ads Programme is use only by the advertisers and
not Google. We reject the substratal premise that
Google‟s participation in the Ads Programme is
limited to merely providing the tools and the
technical framework for advertisers to use the
keywords. As stated before, Google actively
encourages and suggests use of the keywords. It
determines, albeit by use of its software and
algorithms, the Ads that are displayed on the
SERP. It auctions use of keywords, including
trademarks, as it is not disputed that the
advertiser that bids the higher Cost Per Click
amount is accorded a higher priority for display
of its Ads. It is difficult to accept that whilst
Google, in a manner of speaking, sells keywords
for use in its proprietary software; it does not use
it.

129. As noted above, in Google France SARL
and Google Inc. v. Louis Vuitton Malletier SA.,
the Court was of the view that a referencing
service provider (such as Google) allows its
clients to use signs, which are identical with or
similar to trademarks “without itself using those
signs”. We are unable to subscribe to this view.

130. As noted above, the role of Google is not a
passive one; Google actively promotes and
encourages the use of trademarks identified with
the leading goods and service providers – which
apparently yield a higher incidence of search
queries in respect of a particular category of
goods and services – as keywords by suggesting
the same and further monetizing their value. In
our view Google‟s PPC model, which actively
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uses keywords, derives a distinct advantage by use
of trademarks as keywords.
xxxxx
174. In a given case, if it is found that Google
has actively participated in the infringement of the
trademarks by use of the trademark as keywords
and had taken no remedial steps on being made
aware of the same, an action for holding Google
contributorily liable for infringement may be
permissible. Google‟s policy to permit the use of
trademarks as keywords heightens the level of its
responsibility to take steps that such use does not
amount to infringement. It is difficult to accept
that Google has no responsibility if the Ads
prioritized by it on the basis of use of trademarked
terms as keywords, are found to be infringing the
trademark.”
(Emphasis supplied)

50. The Court also rejected the submission of the defendant
nos.2 and 3 herein, that it is entitled to claim exemption against an
action complaining of infringement, under Section 79 of the
Information Technology Act, 2000. I may quote from the
judgment as under:-
“182. Whilst it is undisputed that an intermediary
is not liable for any third-party information, data
or communication link available or hosted by it in
terms of Section 79(1) of the IT Act, the said
exemption is not available if the function of the
intermediary is not limited to merely providing
access to the communication system over which
information made available a by third-party is
transmitted or hosted. The safe harbour is also not
available to the intermediary if he selects the
receiver of the transmission. Further, the
exemption is provided if the intermediary observes
due diligence while discharging its duties under
the IT Act.

183. Sub-section (3) of Section 79 of the IT Act
also makes it amply clear that restriction of
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liability is not available where an intermediary
has conspired, abetted, aided or induced the
commission of an unlawful act. The limitation of
liability under Section 79(1) of the IT Act is lifted
if an intermediary fails to expeditiously remove or
disable access to the material on receiving actual
knowledge that the information controlled by the
intermediary is being used to commit an unlawful
act.
184. In the facts of the present case, the
allegations of infringement are in relation to the
Ads Programme which is run by Google. Prima
facie, Google is an active participant in use of the
trademarks of proprietors and was selecting the
recipients of the information of the infringing
links.

185. 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. Given the
aforesaid allegations, 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. 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 US
Dollar100 million. Google is not a passive
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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.

186. We concur with the prima facie view of the
learned Single Judge that the said benefit would
be unavailable to Google if its alleged activities
are found to be infringing DRS‟s trademarks.”
(Emphasis supplied)


WHETHER USE OF MARK AS A KEYWORD PER SE IS
INFRINGMENT

51. Having held the above, however, the Division Bench has
answered the key question as to whether the use of trade marks as
keywords, in absence of any confusion, unfair advantage, dilution
or compromise of the trade marks, is an infringement, in the
negative. The Court held that the keyword does not perform any
primary function of identifying the source of the goods or services,
and its use cannot be perceived as a „ use of trade mark ‟. Thus,
Section 29(1) of the Act is inapplicable.
52. It was further held that unless it is established that in a
particular case, the use of a trade mark as a keyword has resulted in
the internet user being confused, the action of infringement of a
trade mark under Section 29(2) of the Act would also not lie.
53. The Court held that Section 29(4) of the Act is applicable if
the use of a mark is identical or similar to the registered trade
mark, and is used in respect of goods not covered under the
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registered trade mark and its use takes unfair advantage of or is
detrimental to, the distinctive character or repute of the registered
trade mark. Use of a trade mark as keywords is, essentially, to seek
the attention of the internet users who may find information
relating to goods and services covered under the said trade mark as
relevant. It is not illegal to seek out such internet users as targets
for advertisements that they may find relevant. The Division Bench
has held as under:-
“139. There has been an exponential increase in
customers shopping online and using the internet
for securing information relating to products and
services. This has obviously thrown up various
issues in trade and commerce. This also includes
the extent of protection that may be available in
relation to a trademark. We are of the view that a
balance must be struck, and it would be essential
to anchor the protection available to trademarks
based on the core functions of a trademark; both
for the purpose of protecting the public as well as
preserving the investment value of the trademark.
It is relevant to note that DRS also avails the Ads
Programme. Thus, it is also required to bid for its
own trademarks as a keywords to ensure that its
sponsored link appears on the SERP, which is
displayed as a result of a search query comprising
of its trademarks or containing the same. There
may be other advertisers who may outbid DRS for
its trademark to ensure that their links are
reflected on the same SERP. According to DRS,
Google‟s activity in permitting others to bid for its
trademark as keyword is an infringing activity.
Prima facie, we are unable to accept the same.
We find nothing illegal in Google using
trademarks as keywords for display of
advertisements if there is no confusion that the
links or Ads displayed are not associated or
related to DRS. If the Ad or link displayed does
not lend itself to any confusion, DRS‟s grievance
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regarding use of its trademarks as keywords in the
Ads programme is not actionable.”

xxxx
166. Google uses keywords for shortlisting of
Ads to be reflected on the SERPs, and in one sense
its use is in connection with selection of Ads and
the order of priority, in which they are reflected
on the SERPs. However, we do not accept that the
keywords are not used in relation to the goods and
services of the advertiser. The very selection of a
keyword is based on enterprise and the goods and
services offered by the Advertiser. The use of
trademarks as keywords is, plainly, in relation to
the goods and services offered by the Advertiser.
The same may or may not be similar to the goods
or services covered by the registered trademark,
which is used as a keyword. If the goods or
services are similar to those covered under the
registered trademark, Section 29(4) of the TM Act
is inapplicable. However, if the goods are
dissimilar to those covered under the trademark
and the trademark has a reputation, it is
necessary to determine whether such use amounts
to unfair advantage and is detrimental to the
distinctive character or repute of the registered
trademark. This would depend upon the facts of
each case. However, the contention that use of
trade marks, absent anything more, would amount
to infringement of the trademark simply for the
reason that the same is used to display
advertisements, is erroneous. The use of
trademarks as keywords in the Ads programme
does not, per se, amount to without cause, taking
an unfair advantage of the trademark; nor can be
construed as detrimental to the distinctive
character or repute of the trademark. Keywords
are, essentially, used to identify the persons who
may be interested in the sponsored Ads.
Undoubtedly, Google and the advertisers draw
certain advantage by using keywords, which are
similar to trademarks, in as much as they use the
same to identify users, who are probably
interested in the goods and services covered by
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the registered trademark. However, every
advantage drawn by use of a trademark cannot be
termed as drawing, unfair advantage of the
trademark, without cause. As discussed above,
identifying customers, who may be looking for
goods or services of a particular brand, for
offering them alternatives is not unfair.
xxxxx
168. The use of trade marks as keywords to
identify the internet users who may be interested
in the Ads is not per se deceitful. As noticed
above, the proprietor of a trademark does not
have any extended right for interdicting any and
all use of marks, which are similar to his
trademark.
169. We are also unable to accept that the use of
a trademark as keyword, absent any element of
blurring or tarnishiment of the trademark, is
detrimental to the character or repute of the
trademark. However, if in a given case, the Ads
displayed are found to be detrimental to the
distinctive character or repute of the registered
trademark, an action for infringement of the
trademark would lie.

170. It is also relevant to bear in mind that fair
use of a trademark by a person who is otherwise
not the owner or otherwise authorized to use the
same, is also permissible.”
(Emphasis supplied)

54. The Division Bench also rejected the submission that since
the search query is also reflected on the Search Engine Results
Page (in short, „SERP‟), the internet user could get confused that
the advertisement shown is associated with the search query as
they appear on the same page. The Court held that any person
using an internet search engine, such as the one operated by
Google, for finding information relating to a search query, is
obviously aware that all search results may not be relevant. The
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Court held that it would be erroneous to extend the test of a person
of average intelligence and imperfect recollections, for assuming
the knowledge or prowess of a person using the electronic,
mechanical or other devices or processes, in regard to such devices
or processes. The person using a device to browse the internet is
aware of not only the functioning of the device but also its
application. A person using the search engine not only knows how
to put in a search query, but is also aware of the nature of results
the search engine is likely to display. It would, therefore, be
erroneous to hold that the use of a trade mark as a keyword, itself,
would result in confusion from the perspective of a person who is
ignorant of the functioning of the search engine.
55. I may quote from the finding of the Division Bench, as
under:
“152. In such cases, if the SERP displays an
advertisement, which the internet user is led to
believe is associated with the trademark, which is
entered as, or is a part of, the search query, the
use of the trademark as keyword would infringe
the trademark. This is notwithstanding that on
accessing the website, the internet user realises
that it is not the website which he intended to
access and that the goods and services are not
those as associated with the trademark which is
keyed in as a search term or is a part, thereof.
Although, there is no scope for any of the internet
users being misled or deceived into entering into
any transaction in relation to goods and services
believing the same to be associated with the
trademark, the use of the trademarks may be
actionable. The courts, in such cases, found the
use of meta-tags, which are similar to the
trademarks, for deceiving or confusing the
internet user to click on the web link as an
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infringement of the trademark and have
accordingly interdicted the same.”

INITIAL INTEREST CONFUSION
56. On the plea of „ initial interest confusion ‟, the Division
Bench has held that if the advertisements displayed would lead the
internet user to believe the same to be associated with the trade
mark, then the use of the trade mark as keyword would infringe the
trade mark, notwithstanding that on accessing the website, the
internet user realises that it is not the website which he intended to
access and that the goods and services are not those as associated
with the registered trade mark. There should, however, be a real
likelihood of confusion. If there is no deception or confusion, mere
generation of interest in the sponsored link, without any likelihood
of confusion, cannot be construed as an infringement of a
registered trade mark. The Court also held that the facts of each
case are required to be considered in determining whether in a
given case use of a trade mark as a keyword amounts to
infringement under the Act.
57. I may quote the relevant finding of the Division Bench, as
under:-
“156. The Doctrine of „Initial Interest Confusion‟
has been applied where the courts have found
material confusion albeit at an initial stage,
resulting from the display of the use of meta-tags,
keywords and domain names for reflecting results
which are identical or similar to registered
trademark. In cases, where the internet users are
deceived, to access the websites other than the
websites offering goods, services and information
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as may be associated with the trademark, the use
of the trademark in internet advertising may be
actionable.
xxxxx
162. Under Section 29(2) of TM Act, a registered
trade mark is infringed by a person who not being
a registered proprietor or a person permitted to
use the same, uses the mark which is identical or
similar to the registered trade mark in respect of
goods “which is likely to cause confusion on the
part of public or which is likely to have an
association” with the registered trade mark.
Section 29 of the TM Act does not specify the
duration for which the confusion lasts. The trigger
for application of Section 29(2) of the TM Act is
use of a mark, which would result in confusion or
indicate any association with the registered
trademark. Thus, even if the confusion is for a
short duration and an internet user is able to
recover from the same, the trade mark would be
infringed. Once the applicability of Section 29(2)
of the TM Act is triggered, it would be no defence
to state that the interest user was not deceived in
entering into the transaction and/or in fact, did
ascertain that there was no association of the
advertiser or its goods with the trademark.

163. We, thus, accept the contention that even
confusion for a brief period of time would offend
Section 29(2) of the TM Act.

164. Having stated the above, it is necessary to
state that the use of the trademark as a keyword
coupled with the display of a sponsored link must
have real likelihood of confusion. Mere
generation of interest in the sponsored link
without any likelihood of confusion cannot be
construed as infringement of a trademark. It is
necessary to be careful to not conflate initial
interest with the Doctrine of „Initial Interest
Confusion‟. Thus, sponsored links may be
relevant to the search query and what the internet
user is searching for. It may thus generate interest
that would obviously not constitute infringement
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of a registered trademark under Section 29(2) of
the TM Act, if there is no deception or confusion.”

58. The Division Bench has, therefore, held that mere use of a
trade mark as a Keyword sans further material to show that it
causes confusion or deception, would not amount to infringement
of the trade mark.

APPLICATION OF ABOVE PRINCIPLES TO THE FACTS
OF THE PRESENT SUITS
59. Applying the above principles, enunciated by the Division
Bench in DRS Logistics (P) Ltd. & Ors. (Supra), to the facts of the
present cases, I am of prima facie opinion that the plaintiffs have
been unable to make out a case of infringement or passing off of
their trade marks by the defendants.
60. The relevant extracts from the display of the search engine
of the defendant nos. 2 and 3, as complained of by the plaintiffs in
the plaints, are as under:-

i. Keyword-Policy bazaar (with spaces)

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ii. Keyword Policybazaar (Without Spaces)



iii. Keyword Policybazaar (Without Spaces)


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iv. Keyword Policy bazaar (With Spaces)



v. Keyword Policybazar (without spaces)



vi. Keyword Policy bazar (without spaces)

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61. The Suits are based on the allegations of mere use of
plaintiffs‟ registered trade marks as keywords by the defendant
no.1 in the two Suits in the Google AdWords Program run by the
defendant nos.2 and 3. It is not the case of the plaintiffs that the
advertisements as they appear on the search engine under the
sponsored link or under the advertisement/sponsored links are per
se deceptive or may result in confusion in the mind of the internet
user. In fact, these search results shown by the plaintiffs in their
plaint clearly depict the website of the defendant no.1 in the two
Suits as a sponsored link with a mark „
‟ and under the own
name of the defendant no. 1. They do not also reflect, in their brief
summary as it appears on the front page, any connection with the
plaintiffs.
62. It may be true that use of such keywords may have added to
the cost of advertisement for the plaintiffs and may even result in
additional hits on the website(s) of the defendant no.1 in the two
Suits, however, as held by the Division Bench, the same itself is
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not sufficient to find the defendants guilty of infringing the
registered trade marks of the plaintiffs or passing off the same. In
my prima facie view by mere appearance of the website(s) of the
defendant no.1 in the two Suits as advertisements or as sponsored
link is not sufficient to hold that the internet user will be confused
thereby.
63. Coupled with the above, is the fact that the plaintiffs,
themselves, were admittedly using the registered trade marks of
the defendant no.1 in the two Suits as keywords till before the
filing of the present commercial Suits. They, therefore, have
accepted this as a fair and honest commercial practice. They
cannot now be heard to be complaining against the same merely
because they have now realised that others may be gaining more
advantage of their trade marks rather than in the reverse.
64. I also find that the plaintiffs having concealed in the plaint,
the fact of them using the trade marks of the defendant no.1 in the
two Suits as a keyword in the Google AdWords Program, have,
even otherwise, disentitled themselves to grant of any
discretionary relief from the Court. Mere payment of costs
imposed by this Court vide orders dated 28.05.2019, would not
wash away the taint and the effect of such concealment by the
plaintiffs.

CONCLUSION:
65. I accordingly, find no merit in the applications filed by the
plaintiffs, that is, IA No. 7213/2019 in CS (Comm) 259/2019 and
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IA No. 7219/2019 in CS (Comm) 260/2019. The same are
accordingly dismissed.
66. Correspondently, IA No. 8129/2019 in CS (Comm)
259/2019 and IA No. 8003/2019 in CS (Comm) 260/2019 filed by
the defendant nos.1 respectively in the two Commercial Suits are
allowed. There shall be no order as to costs.

POST SCRIPT


67. I must re-emphasise that any and all observations made by
me hereinabove are merely prima facie in nature and should not be
read as a conclusive and binding opinion.
CS(COMM) 259/2019
CS(COMM) 260/2019

68. List the suits before the learned Joint Registrar (Judicial) for
th
further proceedings on 10 October, 2023.


NAVIN CHAWLA, J
SEPTEMBER 6, 2023/ rv / am /AS
Signature Not Verified
Digitally Signed By:SUNIL
Signing Date:06.09.2023
20:16:26
CS(COMM) 259/2019 & CS(COMM) 260/2019 Page 38 of 38