Summary of Google LLC v. DRS Logistics (P) Ltd.

(Assignment – Infringement of IPR in digital space)

Facts
DRS Logistics (P) Ltd (plaintiff in Original suit &The Respondent in appeal) provides
carriage for goods, passengers, merchandise etc. It alleged that the Google LLC (Defendant
in Original suit &Appellant in appeal) was using the respondent’s trademark- “AGARWAL
PACKERS & MOVES or DRS LOGISTICS” as a keyword in its Ad Program. It resulted in the
diversion of traffic from the respondent’s website to its competitors and amounted to
infringement under the TM Act. Thus DRS Logistics filed suit to restrain Google India,
Google LLC and Just Dial from using or permitting third parties to use its registered
trademark “AGARWAL PACKERS & MOVES or DRS LOGISTICS” either as a keyword or as
a meta tag or as a trademark.

Google LLC ’s contention

• The use of ‘Keywords’ (which is the same as the trademark) in its Ad Program does
not amount to ‘use’ under section 2(2)(b) of TM Act.

• since the keywords are invisible, the statutory test of confusion (based on the
marks perceptibility) is not met.

• It is an intermediary, it can claim safe harbour under S.79 of the IT Act

Single Judge’s decision:
The single judge had directed Google to investigate any complaint made by DRS
Logistics alleging use of its trademark and variations as keywords resulting in the
diversion of traffic from their websites to that of the advertiser.

The single judge held that Google cannot absolve itself from the liability of ensuring that
a keyword is not an infringement of trademark; that Google is not entitled to the defence
of an intermediary under Section 79 of the Information Technology Act, 2000.

Aggrieved by this decision, Google preferred appeal. In appeal, the division bench found
no infirmity with the single judge’s conclusion and held that Google’s use of the
trademarks as keywords amounts to use in advertising under the Trademarks Act.

Decision of the Division bench on the key contentions:

1. WHETHER use of ‘Keywords’ amounts to ‘Use’ within the TM Act?

The division bench of Delhi HC relied on the Supreme Court’s judgement in Hardie
Trading Ltd. v. Addisons Paint & Chemicals Ltd wherein it was held that S 2(2)(c)(i) of the
TM Act is couched in wide terms and ‘use’ of a mark, other than physical form, could also
be “in other relation whatsoever” to such goods. Additionally, the bench observed that
words “unless the context otherwise requires” at the beginning of S2(2) limit the section’s
applicability to where it is contextually relevant. Thus it was held that the use of a
trademark to trigger advertising of goods and services means the ‘use’ of the mark in
advertising.
 2. Whether there is TM Infringement?

The bench held that if an internet user is initially confused upon opening the sponsored
links containing the respondent’s mark, the indicia of infringement, as under S.29(2), will
stand fulfilled. Thus, infringement under S.29(2) was made out.

(Doctrine of Initial Interest Confusion)

3. Whether Use of TM as keyword is infringement?

The appellant’s contention that keywords are not visible and are merely used for
shortlisting the Ads was considered by the bench. But the bench upheld the decision of
the single bench by reasoning that ‘Meta-tags’ and ‘Keywords’ serve a similar purpose for
displaying advertisements and attracting internet traffic. Thus, the dicta of Indian
judgments where use of a trademark as a Meta-tag was considered infringement, would
be applicable to Keywords too.

4. Whether Google can claim safe harbour under S.79 of the IT Act?
Bench did not accept the view that use of trademarks as keywords in the Ads Programme
is used only by the advertisers and not Google. The bench held that Google is not a passive
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.