MakeMyTrip (India) Pvt. Ltd. (MMT) registered the domain name www.makemytrip.com, back in May 2000. MMT is the registered owner of the trademark ‘MakeMyTrip’ in various classes 9, 35, 39 & 43 for the last several years and is using the same since June 2000. MMT also has registration for the trademarks ‘MakeMy’, ‘MyTrip’, ‘MMT’ etc., and the logos thereof in various variants.
MMT was aggrieved that Booking.com (also engaged in online travel and related services.) was using ‘MakeMyTrip’ as their keyword on Google Ads, as a result of which when users searched online for Make My Trip, the first advertisement that displayed was as a search result was that of Booking.com.
Through its representatives, MMT further discovered that Booking.com had bided for the keyword ‘MakeMyTrip’ on the Google Ads Program in order to ensure that its website was shown as one of the top three search results in the advertisement category whenever someone would search for ‘MakeMyTrip’ on Google.
On being intimated by MMT vide a legal notice claiming that such use of a registered trademark constitutes infringement, especially when done by a competitor, Booking.com stopped bidding for MMT’s mark. However, MMT was informed that in spite of having being served with a legal notice, Booking.com had started the infringement again. MMT issued a legal notice again pursuant to which, Booking.com halted the infringing activity again. However, as of 2022, Booking.com refused to comply with the requisitions of MMT and in fact, took a position that in view of the judgment of the European Commission in Case AT.40428-GUESS dated 17th December 2018 (hereinafter “Guess judgment”), that there cannot be any restriction on the use of a trademark on the Google Ads Program as a keyword, including by competitors.
Consequently, MMT approached the Delhi High Court seeking a permanent injunction against Booking.com restraining it from misusing their own registered trademarks ‘MakeMyTrip’ and its variants as keywords on the Google Ads Program for promoting its services as advertisements when search results are displayed on the Google search engine.
Booking.com argued that, there was concealment and suppression of material facts by MMT. It relied upon a Strategic Partnership Agreement (hereinafter “Agreement”) 2016 entered between the two parties wherein, Booking.com had permitted MMT to conduct, undertake, use, and perform paid searches or Search Engine Marketing (SEM) activities using the mark ‘booking.com’. It was further submitted that such a license though issued earlier was not required after the Guess judgment of the European Commission. Therefore, letters were issued by Booking.com to all partners and affiliates in 2019 saying that there cannot be any bidding restrictions on the use of the phrase or exact mark including trademarks. Hence, restriction on keyword bidding under the Agreement was removed. Booking.com contended that the existence of these two documents ought to have been disclosed by MMT.
Booking.com further submitted that, any restriction which may be put on the use of the MMT's mark ‘MakeMyTrip’ as a keyword through the Google Ads Program would be contrary to Competition Law. Furthermore, it was also submitted that the words ‘make’, ‘my’, ‘trip’ can be used in a generic and descriptive fashion, which in any case ought not to be injuncted.
Google, who was also adjoined as a defendant in the case argued that, the use of the trademark as a keyword did not amount to any infringement and that the position was same internationally including UK, USA, European Union, Australia, New Zealand, Russia, South Africa, Canada, Spain, Italy, Japan, and China.
The Court after considering the submissions and contentions of the parties stated that the position of law is clear to the effect that the use of a registered trademark as a keyword would constitute trademark infringement. The Court added that a perusal of Section 29(4)(c) of the Act shows that if any party takes unfair advantage of the distinctive character or repute of a registered trademark, without due cause, then it would also be infringing use in addition to infringement.
The Court observed that, “The goodwill in a mark is created by the proprietor of the mark. The reason why the user may be searching for a particular mark is due to the investment made by the trademark owner in the said mark in promotion, advertisement, merchandising, and other promotional activities. The user acquires knowledge of the mark due to the investment made by the proprietor and the popularity that the mark achieves. When a user, therefore, searches for a well-known mark or a mark, which he or she has heard about in the past, on a search engine, it is due to the goodwill and reputation which is associated with the mark. It has nothing to do either with the search engine or with the competitor.” The distinctive character of the said mark was because of MMT’s use and the promotional activities carried out by it.
In this background, the Court had to analyse whether the encashment of the goodwill and reputation of a registered trademark by third parties by bidding on it as a keyword through the Google Ads Program would amount to infringement and passing off or not?
