Keyword linked advertising and infringement in India

Lex Orbis
Manisha Singh Nair
[email protected]

As the spectrum and prominence of the Internet widens, the issues that dwell out of its use also acquire greater significance. This pertinently owes to the fact that domain names and keywords have been recognised to have an identity similar to trade marks. In the case of Satyam Infoway v. Sifynet Solutions Pvt. Ltd, the Apex Court opined that the role of a domain name was not only to provide an address for a computer on the Internet but also to act as a means of carrying on commercial activity.

As the prominence of search engines rise in all spheres of a user's life, the controversy surrounding keyword advertising has increased. The latest in this respect is the dispute between Google and Chennai-based Consim India Pvt Ltd., owners of bharatmatrimony.com and indiaproperties.com. Consim accused Google of infringing its trade mark at the Madras High Court. According to news reports, the company alleged in its petition that Google ads are used in Bharat Matrimony's platform to sell space to its competitors.

While this issue is still sub judice, it is necessary to view the implications of keyword advertising, out of which the present dispute arises. Keyword advertising enables website advertisers to purchase 'keywords' from a search engine. When a user enters this 'keyword' into a query, an advertisement for the website is displayed with the results. The keywords are purchased by advertisers on the basis of a bid and the subsequent placement of the advertisement. Keyword matching options are different methods of targeting ads to users that help advertisers reach the most appropriate users for the best cost. This technique is a revenue-generating model for search engines, allowing customers to purchase multiple keywords that are descriptive of their goods and services. The paid search term or keyword may or may not be used in the sponsor's advertising text.

A key issue that may arise revolves around the concept of diversion of traffic from the site of the trade mark owner by use of the mark. This becomes a source of confusion in the mind of the visitor as to whether or not the site using such keywords is related to the site of the trade mark owner. Confusion is a key element of trade mark enforcement, and leads to the issue of comparative advertising. The crucial concern that arises is the level of protection that must be accorded to trade mark owners and Internet search companies in view of the advent and increasing use of the Internet.

The issue of liability should also be considered. Trade mark owners complain that because of the Internet user's lack of distinguishing ability vis-à-vis a search for domain names or trade marks, the onus for such infringement rests completely upon the Internet search engine. However, the concept of competitive websites showing up in search results is viewed as being analogous to competing brands having their billboard mounted across opposite sides of the street.

Looking at trade mark infringement jurisprudence as defined over time, the mark holder must establish (1) ownership of a valid mark that has been (2) used in commerce, (3) without the consent of the owner, in such a way as to (4) create a likelihood of consumer confusion (5) in connection with the sale of goods or services bearing the mark.

In response, the alleged infringer may assert various fair use defenses to rebut liability. In the context of infringement being caused vis-a-vis search engines, some of the critical legal issues surround the establishment of viable “use in commerce” and “likelihood of confusion” positions that are attributable to the search engine entity. The issue of trade mark dilution may also form a primary issue of contention in certain cases.

Via the decision of Rescuecom Corp. v. Google Inc., 2009 WL 875447 (2d Cir. April 3 2009), US courts held that a search engine's sale of keyword advertisements based on the trade marks of others may constitute a “use in commerce” sufficient to state a claim under the Lanham Act. While Indian Courts still await a concrete decision on the issue, it remains to be seen as to what extent the courts extrapolate the rationale of trade mark infringement onto the domain of keyword infringement. The Bharat matrimony case, being one of the first of its kind, shall set the trend for all such disputes likely to arise in this area.