Supreme Court grants interim relief in AdWords case

In Consim Info Private Limited v Google India Private Limited, the Supreme Court has granted interim relief restraining certain matrimonial websites from infringing Consim Info Private Limited's registered trademarks. 

Consim is a pioneering Indian conglomerate which runs numerous websites, including matrimonial web portals such as 'BharatMatrimony.com' and 'TamilMatrimony.com'. The unarguable leader in the Indian internet space, Consim brought India’s first case on contextual advertising (through Google AdWords) and contributory trademark infringement in 2009.

The ex parte relief granted by the Madras High Court was vacated almost immediately after being given, and the case made its way to the Supreme Court.

Consim’s grievance stemmed from the use by competing matrimonial portals of its registered trademarks as AdWords on Google's search engine (all of Consim’s trademarks consist of the combination of a generic term relating to the region, language or religion of a prospective suitor or bride, and the word 'matrimony'). Users typing Consim’s registered trademarks in Google's search engine would be led to the websites of competitors, where Consim’s registered trademarks (eg, TELEGUMATRIMONY and URDUMATRIMONY) were also displayed.

Consim filed a civil suit against four of its competitors and Google before the Madras High Court, alleging infringement of its registered trademarks.

On October 19 2012 the Supreme Court granted interim relief preventing Consim's competitors from displaying their names in the sponsored links section when users searched for Consim's trademarks on Google's search engine. The Supreme Court will hear arguments from both sides in the coming months (counter-petitions appealing the order of the Division Bench of the Madras High Court have been filed); it will decide whether Google is liable for contributory infringement and whether the use of registered trademarks as AdWords constitutes trademark infringement.

Consim’s petition before the Supreme Court follows an order dated September 10 2012 in which the Division Bench of the Madras High Court had refused to grant an interim injunction to Consim. The basis for denying the injunction was that three years had passed since the first interim order in favour of Consim was issued, and that there were several factual issues which required a full trial. The Division Bench directed that the trial court dispose of the matter by 2013. 

A brief overview of the questions before the Supreme Court, in light of the findings of the Division Bench of the Madras High Court, is given below:

• Are Consim’s trademarks descriptive? Consim argued that there had been infringement of its registered trademarks, including TELEGUMATRIMONY and URDUMATRIMONY. The terms 'Telugu' and 'Urdu' originate from Indian regional languages and their use in the trademarks is descriptive, not arbitrary. The same stands true for the second element of the marks, which is 'matrimony'. The Division Bench had applied Section 31 of the Trademarks Act, under which all registered trademarks are presumed to be valid; however, it remained silent on the descriptive nature of Consim’s trademarks. Interestingly, in the single judge's order before the Division Bench, one of the key factors weighing in favour of Google and Consim’s competitors was that Consim’s trademarks are highly descriptive. The Division Bench stated that Consim was “popular in the field of matrimonial services”, and noted that the issue of whether Consim’s trademarks have acquired secondary meaning would be examined at trial.
• Is there any confusion among consumers? The Division Bench found that there was confusion due to the manner in which the sponsored links were being displayed by the Google AdWord program and the fact that competing trademarks were chosen as keywords. It further stated that the competing matrimonial websites could have used other terms as keywords - while also implying that the same was true for Google’s Keyword Suggestion Tool. Although the Division Bench stated that Consim’s business might be adversely affected, it left the question open to be decided at trial. Another issue was whether there was confusion arising from the fact that the sponsored links appeared on the right hand side of the generic search results. The Division Bench found in favour of Consim, holding that Google's AdWords policy was discriminatory towards it; it also noted that, while the use of the words 'Tamil' and 'Matrimony' in the Keyword Suggestion Tool need not necessarily have been deliberate, the combination of the two words with a space in between could only have been deliberate.
• Is the use of Consim’s trademarks by competitors infringing or is it covered by exceptions under the Trademarks Act? The Division Bench held that the use of the individual words constituting Consim's registered trademarks in the sponsored links section would certainly fall within Sections 2(2)(c)(ii) and 29(6)(d) of the Trademarks Act (ie, such use constituted infringement of Consim’s trademarks). By stating that other words could have been used as AdWords by Consim's competitors, the Division Bench overruled the single judge’s finding that there were no other synonyms that could honestly describe their services. Therefore, the Division Bench found that the Section 30 defence (which allows “honest practices in commercial matters”) was not applicable in this case.
• Is Google liable for contributory trademark infringement? The Division Bench did not agree with the single judge's finding that Google was not liable for contributory trademark infringement. Unlike the single judge, who had given Google the benefit of the doubt, the Division Bench was suspicious that the combination of two words with a space in between (eg, 'Tamil' and 'Matrimony') was a deliberate act by Google’s Keyword Suggestion Tool. However, this issue was also left open to be adjudicated at trial. If, before the Supreme Court, Consim is able to establish that Google suggested the marks deliberately in its Keyword Suggestion Tool with a view to infringing Consim’s trademarks, Google will be held liable for contributory infringement. However, this is subject to Consim’s trademarks being found distinctive, rather than descriptive.
• Is Consim being discriminated against by Google’s AdWord policy? The Division Bench stated that the privileges or benefits given to Consim’s competitors were not extended to Consim: when users searching for 'Bharat Matrimony' in Google's search engine clicked on the sponsored links, they were led to the websites of competing matrimonial portals such as 'shaadi.com', 'jeevansathi.com' and 'simplymarry.com'. The Division Bench held that this would obviously mislead consumers, because “except for the space between the two words, the words are identical and deceptively similar [to Consim's trademarks], which would cause confusion in the mind of the public”. In contrast, users clicking on the sponsored link relating to Consim were led only to Consim’s website. The Division Bench held that this constituted discrimination against Consim and that the latter should not be deprived of the benefits of Google’s trademark policy. On the basis of the above, the Division Bench held that the balance of convenience favoured Consim (the single judge had found that there was a prima facie case in Consim's favour).

There needs to be a balance between consumers' right to information as to alternative choices and the legitimate interests of trademark owners. The Supreme Court will examine the legal issues involved in this case and, if Consim is able to convince the court that it would suffer irreparable hardship, and that there is a prima facie case in its favour, it may be able to obtain relief for infringement of its trademarks. 

Tanvi Misra, Anand and Anand, New Delhi