Search Engine Optimization and Trademarks

All business owners, brand owners, manufacturers, service providers run websites showcasing their products and services under a range of brands. In this digital era, websites have become an indispensable pre-requisite to set-up and expand businesses. These websites provide an insight into the companies, their business models, their range of products and/or services etc., and facilitate customers to identify, compare and select the best products or services. Consumers use search engines like Bing, Google, Yahoo, etc for information and to access websites. Every search engine has its own complex algorithm to organize relevant information corresponding to the keywords searched. Keywords entered in search engines enable them to categorise web sites and to allow users to find web page quickly.[1] A large percentage of users only check the initial search results displayed by the search engines and that is the reason why companies invest in trying to get their websites within those initial searches. Search Engine Optimization (SEO) refers to the process of making improvements on websites for enhanced search results. The combinations of minute modifications on different parts of website can bring about enhanced user experience and improved search results. These changes can be brought by various methods like link building, managing content on website by including frequently searched words and phrases, adding certain keywords to website’s ‘meta-data’[2], etc.

Thus, SEO is a marketing tool used by many companies to increase the traffic on their websites. Registered trademarks can simply be inserted into the body of a website by using hidden html codes into the title tags. To achieve such results, companies often use competitor’s trade name as SEO to get highest visibility from potential customers. Therefore, even a slight modification in the SEO enables companies to secure a higher ranking in search results.

At present, India does not have any separate laws in place to regulate the use and misuse of meta-tags and search engines. The courts usually take into account the provisions of the Trade Marks Act[3] besides the Competition Act[4], Code of Civil Procedure[5], etc, while deciding disputes of such nature.

Section 29 of the Trade Marks Act, 1999 deals with infringement of registered trademarks and Sub-section(8) of Section 29, states inter alia “that a registered trade mark is infringed by any advertising of that trademark if such advertising takes unfair advantage of and is contrary to honest practices in industrial or commercial matters.”

In the landmark case of Cosim Info Pvt. Ltd v. Google India Pvt. Ltd.[6], the Madras High Court held that it will be a case of contributory infringement by Google if unique trademarks are bid through its AdWords services.

In the case of People Interative (I) Pvt. Ltd. v. Gaurav Jerry & Ors., the Bombay High Court defined Meta-tagging and discussed infringement of marks by use of meta-tags. It was held that “the Defendant’s shaadihishaadi.com was cashing upon the reputation of the Plaintiff’s shaadi.com and that the Defendant had clearly hijacked the Internet traffic from the Plaintiff’s site amounting to online piracy.”[7] The Court granted an ex-parte injunction and mandated that whenever trademarks are misused and included in meta-tags, then infringement of trademark has to be established in accordance with section 29 of the Act and likewise the burden of proof is on the trademark owner to show the likelihood of confusion.

The Indian Judiciary has also discussed the jurisdiction in matters on the world wide web and has held that matters associated to the internet possess global jurisdiction and may not be restricted to the territorial jurisdiction of the residence of the Defendant.[8]

Recently, the Delhi High Court rebuked the online insurance company ‘PolicyBazaar’ (Plaintiff) in an injunction filed against ‘ACKO’ (Defendant) for using their trademark ‘policybazaar’ as AdWord/keyword advertising through Google. The plaintiffs were held liable for concealing information that they themselves had used the defendant’s registered trademark ‘ACKO’ as a keyword. The Court imposed a fine on the Plaintiffs for acting in an unfair manner as the Plaintiffs themselves for nearly one year were bidding for the defendant’s trademark ‘ACKO’.

Conclusion

SEO is directly related to the online success of a Company and consequently the traffic generated on the Company’s website increases the website’s visibility to potential consumers. However, the unfair and illegal use of registered trademarks as keywords, meta-tags, names, and phrases amounts to trademark infringement and irreparable loss to the trademark owner. There is an urgent need to understand and address the issues culminating in the cyber space in relation to Intellectual Property. While only a limited number of such cases have been adjudicated by the Indian Courts, it is certain that such disputes are going to increase in the near future. Therefore, stringent laws need to be enacted to curb the malicious activities surrounding misuse of registered trademarks as meta-tags or keywords.

[1] Kyrnin, J. (2002), Magic with meta-tags

[2] “Meta -tags are non-displaying, or hidden HTML tags that provide sire owners and authors with a degree of control over how a web page is indexed.” Henshaw, R. and Valauskas, E.J. (2001), ``Metadata as acatalyst: experiments with metadata and search engines in the Internet journal, First Monday’’, Libri,Vol. 51 No. 2, pp. 86-101.

[3] Act 47 of 1999.

[4] Act 12 of 2003.

[5] Act 5 of 1908.

[6] Cosim Info Pvt. Ltd v. Google India Pvt. Ltd.; 2013 54 PTC 578 (Mad).

[7] People Interative (I) Pvt. Ltd. v. Gaurav Jerry & Ors; Suit (L) No. 622 of 2014

[8] Casio india Co Ltd. v. Ashita Tele Systems Pvt Ltd.; (2003) (27) PTC 501 (Del)

The article was originally published on www.lexology.com on May 27, 2020 and can be accessed here.