This article has been written by Tanchok Limboo pursuing a Diploma in US Intellectual Property Law and Paralegal Studies course from LawSikho.

This article has been edited and published by Shashwat Kaushik.

Introduction

You must have come across a popular Instagram and Twitter term called hash-tags. Instagram posts and tweets operate on algorithms of hash-tags to filter out certain classifications of posts and also provide a narrower scope, displaying specific trends and search results according to the utilisation of hash-tags. Similarly, meta-tags operate within the domain of websites, meta-tags are an integral part of any website available on the internet. As it plays a crucial role in deriving results in search engines, a meta-tag created efficiently increases the website traffic in higher volume, which results in a certain website being displayed over others as soon as the user provides the search input in the search bar of search engines influenced by meta-tags which in turn provide search results such as Google, Bing, Firefox, Opera, etc., to the user and are displayed. This mechanism is influenced by the Meta-Tags of the website.

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The operation and creation of meta-tags are being exploited by rivals that do not have any competitive edge over the big players/brands; Infringement of trademarks can also happen if the meta-tags are abused. Due to their covert nature, the contents of websites that have their own unique trademark registered are being abused to divert traffic towards the websites of rivals all over the world. The article shall attempt to explain core concepts such as invisible use Meta-Tags, direct & indirect infringement, Google AdWords Advertisement Service, Section 29 of the Trademark Act 1999, along with recent judgements and important case laws.

Understanding meta-tags and how it is misused 

So what exactly does a Meta-Tag do? By definition, these are HTML codes similar to programming codes, which are located at the header known as the meta-title-tag, and the description of the website is mentioned in the meta-description-tag. The purpose of these tags is to facilitate the search engines ability to retrieve user results according to the user’s input in the search engine, such as Google, Yahoo, etc. Meta-tags are not displayed on the websites evidently and require certain inputs to view them. For the same reason, trademarks sometimes get infringed on due to their veiled attributes.

Illustration:

To view them go to any website, right-click anywhere on the website, right-click on a blank space within the website, and press on open “View Page Source” or simply press Ctrl + U (only for Windows), Option + Command + U (for Mac users). 

Supposing a user searches for a sports brand, the search engine, relying on the meta-tags and meta-data of various sports brand and their trademarks and keywords, can provide results according to the user inputs on the search bar;   websites like Adidas and Puma are displayed on the search result, but rivals resorting to unfair means on the internet are relying on abusive practices Meta-Tags to gain unfair momentum on the Internet through the diversion of traffic from the big players and brands to their own, simply by adding the trademark of these big brands as their meta tags.

For example, a fake shoe seller company named “Adibas” might add- “Adidas (a genuine brand name) as a meta-tag on their website to divert traffic towards the fake shoe seller company’s website, “Adibas.”

The role of meta-tags in search engine optimisation 

Search engine optimisation (SEO)

Search engine optimisation is a process through which a search engine result page (SERP) for Google, Yahoo, Bing, etc. gets relevant feedback to align the ranks depending on various factors such as user traffic, paid search via Google AdsWords, etc. The search shows SERP  by evaluating these factors accordingly.

The higher the traffic volume (the higher the volume of traffic, the higher the rank of a website and the web visibility), but if the SEO process is not optimised correctly, the website visibility will be lower amongst internet users and browsers. The visibility of websites in search engines can be drastically improved through meta-tags and SEO. The purpose of search engines is to show search results, or SERP, that include an enormous amount of websites depending on additional factors such as information, usage, and good quality content, which in turn generates a high volume of traffic towards the websites.

Meta-tags, if used properly, can assist websites in enticing enormous amounts of consistent user traffic. Since search engines rely on Hypertext Text Mark-up Language (HTML) and keywords, Meta-Tags being an HTML code in itself, influence the search result.

Basic types of meta-tags

Meta-Tags have many parts but we are going to discuss the two basic and important types, which are:

  • Meta-Title Tag- Concealed on the header of the web page, the role of these tags is to describe the website type and brand; they contain the important keywords, for example, Sports, Shoes, etc, or brand names such as Colgate, LexisNexis, and other such keywords that persuade users to open the website
  • Meta- Description Tag- Includes a synopsis of the website, if the website deals with an e-commerce platform Key words summarising the details of the website are usually mentioned.

Current legal position, implication, and challenges 

Definition of a trademark 

A trademark is a sign/logo or name that differentiates or separates the unique identity of one company or organisation as a good or service from those of others; it legally binds the ownership of the brand with the originator company registered as proprietor. The same is mentioned under Section 2 (1) (zb) of the Trademark Act of 1999 in an elaborate manner.

At the heart of the legal framework is the concept of infringement. Infringement of a trademark occurs when an unauthorised party uses a mark that is identical or deceptively similar to a registered trademark in a manner that is likely to cause confusion or deception among consumers. Such unauthorised use can take various forms, including, but not limited to, using the mark on goods or services, packaging, advertising, or promotional materials.

The consequences of trademark infringement in India are significant. The Trademarks Act, 1999, categorises infringement as a criminal offence, punishable by both imprisonment and monetary fines. Upon conviction, individuals or entities found guilty of infringement may face imprisonment for a term of up to three years, a fine of up to Rs 5 lakhs, or both. In addition, the Act empowers the courts to grant various remedies, including injunctions, damages, and accounts of profits, to prevent further infringement and compensate the aggrieved trademark owner.

The legal framework governing trademarks in India also recognises the importance of preventing unauthorised use of trademarks. The Trademark Rules, 2017, provide a mechanism for opposition to the registration of marks that are identical or similar to existing registered trademarks. Interested parties who believe that a proposed mark infringes upon their trademark rights can file an opposition before the Trademark Registry. The Registry will then examine the opposition and decide whether to grant or refuse registration of the mark.

Types of infringement

Direct infringement

Directly and knowingly using a registered owner trademark by an unauthorised person, for monetary or competitive gains by use of identical or similar goods in any part of India, which generally leads to confusion amongst customers and clients due to similarities of marks, nevertheless, a covert or indirect form of infringement exists, which is known as invisible trademark infringement.

Indirect infringement

Vicarious liability under Section 114 of the Trademark Act or through contributory negligence, the principal infringer, or the one that abets or induces the direct offender to infringe upon the registered trademark, is liable for indirect trademark infringement.

Vicarious Liability- It applies primarily in the professional environment within the ambit of employer and employee relationships, as per Section 114 of the Act. Every person who has a responsibility to the company in terms of liability shall be held liable. The only exception is that the person acted in good faith and did not have the idea that such an infringement would happen.

Essential elements that amount to vicarious liability are:

  • Direct control over the inducement of such infringement by the direct offender
  • Knowledge of such Infringement that transpires
  • Personal financial gains through such infringement. 

Infringement of trademark due to invisible abuse of meta-tags

In essence, the core principle of infringement of a trademark is that once a person abuses or creates similarities in design, logo, or brand name, the identical trademark of the registered owner to whom such proprietor belongs is liable for infringement of the trademark. The same way, all over the world, it is a settled law in itself, with the only exception being an act done in good faith.

The infringement of trademark rights through invisible abuse meta-tag was long recognised in the 90s itself in different countries:

The United Kingdom

In 1996, the case of  Road Tech vs. Mandata, in which the trademark of the claimant “Road Runner” as Meta-Tag was abused by the defendant and was considered by the court to be an infringement of the trademark, was again confirmed in the decision.

2002 Reed Executive Plc. vs. Reed Business Information (2004)

Despite the confirmation in the original suit, it is relevant to mention that in an appeal suit of 2004 EWCA Civ 159, the appellate court examined the legal issue of whether the prohibition against identical reproduction of a mark covered only reproduction of that mark without addition or omission.

Brief facts of the case: The defendants (Reed Business) had initiated an appeal suit, aggrieved and not satisfied by the original judgement, which held that it had infringed the claimant’s employment’s agency’s registered trademark, i.e., the word “Reed,” set up in 1986 dedicated to employment services and advertisement of jobs. In 1999, the defendants set up another website, totalijobs.com.

The claimant asserted that all websites using the word “Reed” visibly or invisibly amounted to infringement of trademark and passing off (attempting to sell goods or services as their own, but originally ownership was held by someone else; even if the trademark is not registered, a competitor can still be challenged on the infringement of passing off); also, the “own name”  defence was not viable for the defendants. Defendants used the word “Reed” with their logos and as part of the composite “Reed Business Information.”

Decision of the appellate court

The appellate court gave a reversed judgement stating that the claimant had to prove that the alleged misuse of the meta-tag led to confusion, but the claimant failed to prove the same, and also that the ‘own name‘ defence was available to a company under the law of the UK since metatags did not amount to trademark infringement if they did not suggest a connection with another trader and the invisible use did not create confusion.

France

The Paris Court of First Instance held that reproduction of the competitor trademark “Odin” (on the defendant’s website) without the consent of the registered owner of the trademark amounts to trademark infringement; it would also harm the trademark holder’s rights, financially as well as the brand in itself, since the keyword “Odin” would direct to the site of the principal infringer.

Google AdsWords program, a controversial case

What is Google AdWords

SEO and meta-tags play a crucial role for the registered proprietor of a trademark to include brand names, unique descriptions, and details under their meta –tags exclusively. If a third party adds the trademark of the registered proprietor, intending to infringe the trademark rights, gain financial profit and divert traffic, it can be a direct or indirect infringement of the trademark. Despite the settled position of the law, an exception was created by Google. It provided service to third parties to use the registered trademark name, for advertisement usage to the competitors using Google AdWords, an advertisement service that auctioned “keywords” by third parties bidding for it, and trademarks were also included, not just the logos but the name of the brand; Google termed it only “marks” and not “trademarks.”

Google AdWords relied on the keywords that were searched the most based on ranks; these keywords were auctioned; the higher the rank and visibility of a keyword in the search engine, the higher the value; the keyword, if owned by any particular business, would then have a higher visibility and rank; henceforth, the business that paid for the “paid search services” would remain on top.

Keyword Planner is another additional service, part of Google AdWords, dedicated to providing users with statistical data on the volume of traffic generated by a keyword.

Google LLC vs. DRS Logistics (P) Ltd. & Ors. (2022)

Facts of the case

DRS claimed that the use of its registered trademarks “AGGARWAL PACKERS” and Movers” as keywords by third parties infringed on its trademark rights. The plaintiff further claimed that there was a diversion of traffic through the use of their trademarks by third parties, which led to a decrease in traffic to the website.

The discernment of the single judge

The single judge bench of the Delhi High Court held that a trademark is prone to infringement by the invisible use of a mark. Google profited from advertisers, by providing service to third parties through the Google AdWords service traffic diversion and by goggles direct engagement in keyboard planner mechanisms. It was perspicuous since Google policies did not recognise trademarks, contending that they were just keywords. Therefore,  the court held that:

Google cannot have the protection of a safe harbour by being an intermediary under Section 79 of the IT Act. (Internet service providers have immunity as a form of exemption as intermediaries from hosting third data and services related to it, such as information, data, or communication.)

The claimant can not have rights to generic words and surnames such as packers and movers. allowing the injunction applications of the plaintiffs, the single judge bench directed the defendants to:

  1. Investigate all the complaints of the plaintiffs that allege the use of their trademark to divert traffic.
  2. Review the overall effect of such an ad to determine if it infringes on the plaintiff’s trademarks.
  3. And if they discover such use to have the effect of infringing the plaintiff’s trademarks, they will remove or block them.

 Not satisfied with the judgement of the single judge, Google filed an appeal before the Division Bench of the Delhi High Court.

Division bench findings and decisions

The primary issue of the matter was whether the use of a trademark as a keyword leads to infringement of the trademark even if used for advertisement purposes only.?

The Division bench relied solely on the concept of keywords and stated that the use of trademarks as keywords doesn’t amount to infringement of trademarks because, according to Section 29(4) of the Trademark Act,  the provision states that infringement of registered requisite essential ingredients to constitute an infringement of trademarks are:

  • Similarities of goods and services which are provided by the registered trademark
  • Similarities in design and identity
  • Creating confusion due to similarities among customers and users

Advertisement purposes through the use of keywords through an intermediary did fall under the ambit of Section 29(6) of the TM Act; the mere use of the trademark as a keyword does not automatically result in infringement of the trademark;   fair use of the trademark is permissible but unfair use of the trademark is not.

The court made a distinction considering the application of Section 29(6) with Section 29(1) of the trademark act. It was held that the use of a trademark as a keyword by an advertising service provider to display the goods and services offered by an advertiser and not the trademark owner is not an infringement of a trademark; hence,  Section 29(1) of the Trademark Act can not be applied since keywords do not perform a source-identifying function; hence, keywords used by advertisers do not hold the impression of infringement. “Use of a trademark” also does not provide any unfair advantage nor does it directly deteriorate the unique character or reputation of the trademark.

Current legal position in India

In the case of MakeMyTrip India Private Limited vs. Booking.com (2016), the Hon’ble Delhi High Court decided the case in favour of the claimant. The court granted the claimant an interim injunction against the defendants. It was alleged by the claimant (MakeMyTrip) that the defendant had covertly optimised their websites, abusing the claimant’s trademark by adding keywords such as ‘MakeMyTrip’, ‘MyTrip’, ‘MMT’, etc., which were registered proprietors of the plaintiff. The court held that the defendants did infringe the trademark rights of the plaintiff under Section 29(4)(c).

The single judge order was, however, set aside by the Delhi High Court by a Division Bench, reasoning that relying upon the case of  Google vs. DRS Logistics, wherein the court held that mere use of trademarks as “marks” for the sole purpose of an advertisement does not amount to infringement of trademark under Section 29(1) of the TM Act and the ‘use’ was in connection to the goods and services of the advertiser, this Section 29(4) does not have any application.

The doctrine of initial interest confusion

A purchase requires researching the market for the best available product within an affordable price range according to the budget of the customer,  and the process initially begins from the customer’s side. Through a market survey, the customer then sets its tendency to be fixed after considering various factors for the product purchase. This part of the decision-making process is affected by or hijacked by confusion if products contain similarities in trademarks, confusing the customer about the source or the genuineness of the product that he/she desires to purchase.

People for the Ethical Treatment of Animals vs. Doughney (2000)

In this case, the court held that the defendant had caused initial confusion amongst the users by diverting the traffic from peta.org to a website linked to “People Eating Tasty Animals.” Originally, users were trying to reach “People of the Ethical Treatment of Animals.”  The instant confusion was temporary since the defendant’s site was a parody of the claimant’s website, which led to the defendant’s website being liable.

Recent case laws

Nike, Inc. vs. Orbit Exports Pvt. Ltd. (2018),

In the landmark case of Nike, Inc. v. Orbit Exports Pvt. Ltd. (2018), the Delhi High Court ruled in favour of Nike, upholding the distinctiveness and well-known status of the iconic “Just Do It” slogan. The decision reinforced the strength of Nike’s trademark and underscored the importance of protecting intellectual property rights.

The case centred around the unauthorised use of the “Just Do It” slogan by Orbit Exports, a footwear company based in India. Orbit Exports had been using the slogan on its products and marketing materials without Nike’s permission, leading to allegations of trademark infringement and unfair competition.

Nike took legal action to protect its trademark, arguing that the “Just Do It” slogan had acquired immense popularity and distinctiveness over the years. The company presented evidence of extensive advertising, marketing, and promotional efforts that had made the slogan synonymous with Nike’s brand.

The Delhi High Court acknowledged the compelling evidence presented by Nike and recognized the “Just Do It” slogan as a well-known trademark in India. The court highlighted the slogan’s distinctiveness and its ability to immediately evoke an association with Nike in the minds of consumers.

The court’s decision also emphasised the importance of protecting trademarks to prevent consumer confusion and maintain fair competition. It noted that the unauthorised use of well-known trademarks could mislead consumers and harm the reputation of the original brand owner.

The injunction granted by the court restrained Orbit Exports from further using the “Just Do It” slogan on its products and marketing materials. This decision served as a reminder to companies of the legal consequences of infringing on well-known trademarks and the need to respect intellectual property rights.

Louis Vuitton Malletier vs. S. Gulab Singh & Sons Pvt. Ltd. (2018)

In the significant case of Louis Vuitton Malletier v. S. Gulab Singh & Sons Pvt. Ltd. (2018), the Delhi High Court made a landmark decision recognising the iconic monogram of Louis Vuitton as a well-known trademark. This ruling underscores the enduring legacy and distinctive character of the Louis Vuitton brand, solidifying its status as a globally renowned symbol of luxury and craftsmanship.

The case centred around the defendant, S. Gulab Singh & Sons Pvt. Ltd., which was found to have used a pattern that bore a striking resemblance to Louis Vuitton’s iconic monogram. The court, recognising the potential for confusion and deception among consumers, granted an injunction against the defendant, effectively prohibiting them from using a confusingly similar pattern.

The court’s decision highlights several key points:

  1. Protection of consumers: The ruling emphasises the importance of safeguarding consumers from potential confusion and deception. By recognising Louis Vuitton’s monogram as a well-known trademark, the court ensured that consumers would not be misled into believing that products bearing a similar pattern were genuine Louis Vuitton products.
  2. Reputation and goodwill: The court acknowledged the immense reputation and goodwill associated with the Louis Vuitton brand. The iconic monogram has become synonymous with luxury, quality, and craftsmanship, and the court recognised the need to protect this valuable asset.
  3. Distinctiveness and uniqueness: The court’s decision reaffirms the distinctiveness and uniqueness of Louis Vuitton’s monogram. The monogram’s combination of interlocking LV initials and quatrefoils has become instantly recognisable worldwide, setting it apart from other designs and patterns.
  4. Global recognition: The recognition of Louis Vuitton’s monogram as a well-known trademark underscores its global reach and appeal. The monogram has transcended cultural and geographical boundaries, solidifying its status as a timeless and iconic symbol of luxury.

Conclusion

The technological advancement in this present era has been consistently surpassing previous limits; nevertheless, the laws must also develop according to the present legal requirements, keeping in consideration various metrics to formulate laws that are free from prejudice and errors. The evolutionary process or amendments has to be inclusive of the current trends, such that exclusivity of domain control by Google need not hamper or interfere with the trademark proprietor and the role of intermediaries is also required to be more diligent.

The question of whether the intermediary is liable for such advertisement service practices through keywords was decided extensively in DRS vs Google case, which explained that there is a distinction between the concepts, that Meta-tags are directly part of the header and the description of the website because of the HTML Coding, which is shown on the search result hence any form of abuse of trademark by invisible use of trade mark by meta-tags infringes the trademark of the registered owner directly because the third party uses the Trademark of a registered owner, whereas Google AdWords is an Advertisement Service provider that bids keywords and the same cannot be attached directly to the websites HTML code not being a part of a trademark, not creating any confusion amongst the users and the sole purpose being advertisement only. The same cannot be said for meta-tags because any abusive malpractices are evident in the HTML source code of third parties.

References

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