Author: Aastha Das, NMIMS Hyderabad
To the Point
The Supreme Court upheld the Delhi High Court Division Bench’s ruling permitting Booking.com and Google to keep using “MakeMyTrip” as a keyword in Google Ads on March 7, 2024, by dismissing MakeMyTrip’s appeal.
Abstract
The argument in Google LLC v. MakeMyTrip (India) Pvt. Ltd. is over whether using the brand “MakeMyTrip” as a sponsored keyword in Google Ads constitutes trademark infringement. The Single Judge of the Delhi High Court initially granted an interim injunction prohibiting Booking.com and Google from engaging in such conduct. The Division Bench later overturned the order, concluding that invisible keyword use does not constitute “use as a trademark” in the absence of consumer confusion. On March 7, 2024, the Supreme Court denied MakeMyTrip’s Special Leave Petition, upholding the Division Bench’s decision. The case underscores the ongoing issue about trademark use in internet advertising and its legal ramifications under the Trade Marks Act of 1999.
Proof
MIPL, founded under the Companies Act of 1956, began as an airline ticketing company and has since grown to become one of India’s leading travel service providers. The company regularly promotes its services online and participates in the Google Ads Program.
Google, which runs the world’s most popular search engine, also maintains the Google Ads Program, a real-time keyword purchasing system in which advertisers pay to have their links appear in the “sponsored” area of search engine results. These paid search results are separate from organic searches and are denoted by the prefix “Ad.” According to MIPL, when a user searches for “MakeMyTrip,” Booking.com’s sponsored link appears in the second place seven out of ten times. MIPL claimed that this strategy misused its brand reputation and diverted customers through a fraudulent mechanism.
On April 27, 2022, the Learned Single Judge of the Delhi High Court granted MIPL an ad interim injunction. It was determined that using MIPL’s registered trademarks as keywords on Google Ads constituted infringement under Section 29 of the Trade Marks Act of 1999, and both Booking.com and Google were prohibited from using the marks in any way through Google’s advertising services.
Google and Booking.com, dissatisfied with the judgment, filed an appeal with a Division Bench of the Delhi High Court, which overturned the interim injunction. Drawing on the precedent set in Google LLC v. DRS Logistics (P.) Ltd., the Bench determined that using a trademark as a keyword does not constitute “use as a trademark” under Section 29(1). Furthermore, while MIPL and Booking.com provided identical services, Section 29(4), which addresses distinct products and services, was deemed inapplicable. The Court further rejected the applicability of Section 29(7), stating that the mark was not attached to any visible item or advertisement.
MIPL further argued that Section 29(3) of the Trade Marks Act requires that misunderstanding be predicted. However, the Division Bench relied on Meso Pvt. Ltd. v. Liberty Shoes Ltd. to clarify that such a presumption might be rebutted even at the intermediate stage provided there was adequate evidence. Recognizing Booking.com as a well-known travel platform, the Court decided that a reasonably competent internet user would not be mislead into assuming that Booking.com was affiliated with MIPL. Consequently, the interim injunction obtained by the Single Judge was overturned.
The case was then brought before the Supreme Court of India under SLP (C) No. 2135/2024. On March 7, 2024, the Supreme Court denied the Special Leave Petition, upholding the Division Bench’s decision and allowing Booking.com to continue using “MakeMyTrip” as a keyword in Google Ads, subject to final adjudication at trial. This order temporarily resurrected the Single Judge’s earlier injunction, preventing Booking.com and Google from exploiting MIPL’s trademarks as keywords until further proceedings.
Case Laws
Meso Pvt. Ltd. v. Liberty Shoes Ltd.
In this case, the Bombay High Court dismissed Meso’s allegation of trademark infringement against Liberty Shoes Ltd. for using the words “Legend” and “Flirt” for perfumes. The Court ruled that these phrases were prevalent in the trade and did not have exclusive trademark protection. The verdict was influenced by the heavy use of house marks, Meso promoted its products as “Devon Legend” and “Devon Flirt,” whereas Liberty sold its products as “Liberty Legend” and “Liberty Flirt.” The Court determined that the clear display of the separate house marks (“Devon” and “Liberty”) on packaging greatly decreased the chance of customer confusion, therefore dismissing Meso’s infringement claim.
Consim Info Pvt. Ltd. v. Google India Pvt. Ltd. (2013)
In this case, Consim Info Pvt. Ltd., the operator of BharatMatrimony and similar platforms, requested a permanent injunction against Google India and other matrimonial websites for using its trademarks (e.g., “Bharat Matrimony,” “Telugu Matrimony”) as AdWords on Google’s advertising platform. Consim claimed that this was both primary infringement (by competitors) and secondary infringement (by Google), resulting in unfair competition.
The Madras High Court Division Bench, agreeing with the Single Judge, found that while generic names such as “matrimony,” “Bharat,” or “Telugu” may not be monopolized on their own, their conjunctive usage (e.g., “Bharat Matrimony”) may constitute infringement. However, because Google had already agreed not to violate trademarks under its policy, the Court saw no need to change the existing arrangement. However, not much could be made sense of from a legal standpoint considering keyword advertising. The Madras High Court permitted such use if it did not mislead or cause misunderstanding.
Matrimony.com Ltd. v. Google LLC
The Competition Commission of India (CCI) convicted Google of exploiting its market predominance in India’s online general web search and search advertising services. The CCI determined that Google modified its search design in a discriminatory manner, preferring its own services over competitors’. Furthermore, Google had entered into intermediation agreements with Indian partners that contained restrictive provisions, limiting competition. As a result, the CCI urged Google to eliminate search bias practices, offer clear disclaimers for sponsored results, and stop enforcing restricted restrictions in its intermediation agreements.
M/s DRS Logistics (P.) Ltd. and Anr. V. Google India Pvt. Ltd. and Ors
In this case, the Delhi High Court examined whether Google could be held liable for trademark infringement when third parties use registered trademarks as keywords in its Google Ads program. The plaintiffs argued that such usage misled consumers through sponsored advertisements. However, the Court held that Google’s use of trademarks as keywords does not amount to trademark infringement. It further ruled that Google was protected under the “safe harbor” provision of Section 79 of the Information Technology Act, 2000, as it merely acted as an intermediary and did not play an active role in selecting or displaying the infringing content.
Use of Legal Jargon
The Delhi High Court found that allowing the use of “MakeMyTrip” as a keyword constituted a prima facie infringement under Section 29(4) of the Trade Marks Act, 1999.
Passing Off: Google’s AdWords program was viewed as potentially aiding pass-off by allowing Booking.com to redirect MakeMyTrip’s customers.
Interim Injunction: The High Court granted interim relief, which has been dismissed by the Supreme Court. A significant issue was whether competitors’ usage of “MakeMyTrip” in search results confused consumers.
Use in Commerce: The case discusses whether keyword bidding constitutes “use” of a trademark in the course of trade.
Conclusion
The case of Google LLC vs. MakeMyTrip (India) Pvt. Ltd. highlights the problems that emerge at the junction of intellectual property rights and digital marketing techniques. With keyword bidding systems like Google Ads at the heart of modern advertising campaigns, courts are increasingly being asked to determine whether such trademark use constitutes infringement or permissible market competition.
The Single Judge of the Delhi High Court first adopted a harsh stance, prohibiting Booking.com and Google from using “MakeMyTrip” as a term, citing a prima facie case of trademark infringement. However, the Division Bench provided a more technology-oriented viewpoint. It distinguished between visible and invisible trademark usage, focusing on consumer perception, the nature of internet advertising, and precedent specifically Google v. DRS Logistics and Meso Pvt. Ltd. v. Liberty Shoes Ltd. to decide that such use does not constitute a violation of trademark law.
Finally, on March 7, 2024, the Supreme Court denied MakeMyTrip’s appeal, essentially upholding the Division Bench’s decision and enabling Booking.com to continue using the trademarked term as a keyword. The Court made no comments on the merits of keyword advertising, but its unwillingness to intervene is telling, it favors a liberal approach in the absence of obvious consumer misunderstanding.
This outcome demonstrates the judiciary’s evolving approach to balancing brand protection and digital competition, implying that not all trademark uses in advertising are inevitably unlawful, particularly when used as metadata rather than source identifiers.
FAQS
1. What is the core issue in the Google LLC vs. MakeMyTrip case?
The main question is whether utilizing a registered brand (in this instance, “MakeMyTrip”) as a term in Google’s Ads Program constitutes trademark infringement under the Trade Marks Act of 1999.
2. Why did MakeMyTrip file a case against Google and Booking.com?
MakeMyTrip claimed that Booking.com’s usage of the phrase “MakeMyTrip” in Google Ads deceived customers and diverted internet traffic by unjustly leveraging its brand reputation. It also held Google responsible for allowing such keyword bidding.
3. What was the Delhi High Court’s initial ruling?
The Single Judge of the Delhi High Court, in an ad interim ruling dated April 27, 2022, ruled that using “MakeMyTrip” as a term constituted trademark infringement and barred Booking.com and Google from using the mark in the Google Ads Program.
4. What did the Division Bench of the Delhi High Court decide on appeal?
The Division Bench overturned the interim injunction, determining that utilizing a trademark as a keyword does not constitute “use as a trademark” under Section 29(1). The mark was not used in any advertising materials. Section 29(4) was inapplicable since the services were identical. Even in the interim stage, Section 29(3)’s presumption of confusion could be challenged.
5. What did the Supreme Court of India decide?
On March 7, 2024, the Supreme Court denied MakeMyTrip’s Special Leave Petition (SLP), letting the Delhi High Court Division Bench’s decision to stand. This effectively allows Booking.com and Google to utilize “MakeMyTrip” as a keyword in Google Ads, pending final trial results.
6. Does using a competitor’s trademark as a keyword always amount to infringement?
Not necessarily. Courts have increasingly acknowledged that using a trademark as a non-visible keyword (e.g., in metadata or sponsored ads) does not always constitute infringement, especially when there is minimal risk of consumer mistake or fraud. The legality of each case is determined by the specific facts, such as how the advertisement is presented and if the public is deceived.
7. Is keyword advertising legal in India?
Yes, keyword advertising is not always prohibited in India. However, it may be considered infringement if it causes confusion, constitutes misrepresentation, or unjustly leverages a competitor’s trademark goodwill. Courts evaluate these instances based on context, consumer impression, and competitive fairness. The law is still changing and strongly influenced by case-by-case decisions.