No safe harbour for Google on misuse of trademark: Delhi HC

No safe harbour for Google on misuse of trademark: Delhi HC

Subject : Science and technology

Section: IPR

Context:

• The Delhi High Court Thursday ruled that Google’s use of trademarks as keywords under its Ads Programme may lead to infringement, making it ineligible for safe harbour status.

Details:

• This means Google will be legally bound if advertisers use another company’s trademark to improve their search ranking and that affects the trademark owner or confuses consumers. Besides, the ruling could affect Google’s advertising revenue.
• Being an intermediary, the tech giant enjoys legal immunity under Section 79 of the IT Act from actions of third-party companies on its platforms.
• However, the court said Google is the provider of the keywords and an active participant in the use of trademarks. It also selects the recipients of the information that were infringing links, and hence the safe harbor status will not be applicable.
• Case: Google LLC vs DRS Logistics case.

What is the Google Ads programme?

• Google runs an advertisement service (Ads Programme), under which sponsored links of advertisers are displayed along with the results of search queries. Under this, Google suggests keywords to its advertisers which can help them be featured higher on the search results page.
• Google lets its advertisers pay a higher amount and display their advertisements by using the logistics company trademark in the keywords.
• Such activities of Google constitute infringement of its registered trademarks.

Trademark:

• A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.
• Trademarks are protected by Intellectual Property Rights (IPR).
• In India, trademarks are governed by the Trade Marks Act 1999, which was amended in 2010.
• It legally differentiates a product or service from all others of its kind and recognizes the source company’s ownership of the brand.
• The Act guarantees protection for a trademark that is registered with the Controller General of Patents, Designs, and Trademarks, also known as the trademark registry.
• A trademark is valid for 10 years, and can be renewed by the owner indefinitely every 10 years.
• It serves as a badge of origin exclusively identifying a particular business as a source of goods or services.

What Constitutes a Trademark Violation?

• Using a registered trademark without authorisation of the entity that owns the trademark is a violation or infringement of the trademark.
• Trademark infringement in India is defined under Section 29 of the Trademarks Act, 1999.
• There are several ways in which a trademark can be infringed such as Deceptive similarity, passing off (Say, a brand logo is misspelt in a way that’s not easy for the consumer to discern).
• In such cases, courts have to determine whether this can cause confusion for consumers between the two.
• In such cases, the infringing products need not be identical, but similarity in the nature, character and performance of the goods of the rival traders has to be established.
• For example, Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited.

There are two types of infringement – direct and indirect infringement.

• Direct Infringement
  • Unauthorized person – this means a person who is not the owner or the licensee of the registered trademark.
  • ‘Identical’ or ‘Deceptively similar ‘– the test for determining whether marks are identical or not is by determining whether there is a chance for a likelihood of confusion among the public. If the consumers are likely to get confused between the two marks, then there is an infringement.
  • Registered Trademark – You can only infringe a registered trademark. For an unregistered Trademark, the common law concept of passing off will apply.
  • Goods/ Services – In order to establish infringement even the goods/ services of the infringer must be identical with or similar to the goods that the registered Trademark represents.
• Indirect infringement
  • Indirect infringement is a common law principle that holds accountable not only the direct infringers but also the people who induce the direct infringers to commit the infringement.
  • Indirect infringement is also known as secondary liability has two categories: contributory infringement and vicarious liability.
  • A person will be liable for contributory infringement in two circumstances:
    • When a person knows of the infringement
    • When a person materially contributes or induces the direct infringer to commit the infringement.
  • A person will be vicariously liable under the following circumstances:
    • When the person has the ability to control the actions of the direct infringer.
    • When a person derives a financial benefit from the infringement.
    • When a person has knowledge of the infringement and contributes to it.

For details on Intellectual Property: https://optimizeias.com/intellectual-property/