PUMA SE vs INDIAMART INTERMESH LTD

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 13 March 2023
Pronounced on: 3 January 2024
+ CS(COMM) 607/2021

PUMA SE ….. Plaintiff
Through: Mr. Ranjan Narula and Ms. Shivangi Kohli, Advs.

versus

INDIAMART INTERMESH LTD ….. Defendant
Through: Mr. Rajshekhar Rao, Sr. Adv. with Mr. Pulkit Gupta and Ms. Rhea Dube, Ms. Zeya Junaid, Advs.

CORAM:
HON’BLE MR. JUSTICE C.HARI SHANKAR
J U D G M E N T
% 03.01.2024

I.A. 15564/2021(under Order XXXIX Rules 1 and 2 of the CPC)

The Dispute

The plaintiff’s grievance

1. Puma SE, the plaintiff, is one of the world’s leading manufacturers of sportswear and accessories. It uses the distinctive and logos, which are its source identifiers. “PUMA” as a word mark is registered in the name of the plaintiff in Classes 18 and 25 with effect from 15 February 1977; the device mark is registered in Classes 3, 9, 14, 16, 18, 24, 25, 28 and 41, the earliest registration being of 8 November 1983 in Class 28, and the device mark is registered in the name of the plaintiff in Class 25 with effect from 11 July 1983. All registrations are valid and subsisting. The sales figures, from sales of goods bearing the and marks are testimony to their enduring goodwill and reputation, with sales during the year 2019 alone having fetched over ? 1400 crores. The plaintiff has spent, in the said year alone, over ? 64 crores towards advertisement and promotion of its brands. The plaintiff’s trademark PUMA has been declared as a well-known trademark by the Trade Marks Registry on 24 February 2020.

2. The defendant IndiaMART IndiaMESH Ltd (“IIL” hereinafter) operates the website www.indiamart.com. Merchandise of various manufacturers are purchasable from the said website. The website allows a consumer to enter a search option in the space provided for the purpose.

3. The plaintiff’s grievance, as articulated by Mr. Ranjan Narula, learned Counsel, is that, if one enters, in the said space, the search word “PUMA”, various counterfeit goods, bearing fake “Puma” marks, put up by third-party sellers, are displayed for purchase. These goods also bear the plaintiff’s registered trademarks and . The following screenshots, bearing this out, have been provided in the plaint:

4. The dispute is in a narrow compass. Mr. Narula submits that most of the goods which are put up by various sellers as genuine PUMA sportswear or allied products are in fact counterfeits. IIL’s Indiamart e-commerce website is, therefore, being used to peddle counterfeit goods of the plaintiff. The use of the plaintiff’s registered trademarks on such counterfeit goods, he submits, amounts to infringement within the meaning of Section 29 of the Trade Marks Act, 1999. By using the said marks, the goods on which they are used, and which are sold on the Indiamart e-commerce platform are also, therefore, being passed off as genuine goods of the plaintiff.

5. The plaintiff’s grievance against IIL – which is the sole defendant in the suit – is that IIL is aiding, abetting and facilitating such infringement and passing off. It is an admitted position that, if a seller – let us call him Mr. X – wants to sell his merchandise through the Indiamart e-commerce platform, he has to register on the www.indiamart.com website. For this, Mr. X has to provide, first, his contact mobile number. Once this is provided, a One Time Password (OTP) is sent to the said mobile number. Mr. X has to enter the OTP in the space provided and to click the “Register” link. Registration is free. Once the link is clicked, Mr. X has to provide his name, company name and contact details including address and mobile numbers. Thereafter, he has to provide his GST/PAN number and photographs of the products that he desires to sell through the Indiamart portal. Once this is entered, Mr. X is redirected to another Indiamart webpage, which is the proverbial thorn in the plaintiff’s flesh. On this webpage, Mr. X has to provide the nature of the products that he desires to sell and a choice of the brand name under which the product would be sold, from various brand names which are made available in a drop down menu. A screenshot of one such webpage is thus provided by the plaintiff:

Thus, among the options provided by the drop down menu is an option by which Mr. X can represents himself as a dealer of “Puma Shoes”. If Mr. X chooses this option from the drop down menu, he is registered with the Indiamart portal as selling PUMA shoes and, if a purchaser, later, enters “PUMA” or “PUMA shoes” as the product that he wishes to purchase, the “PUMA” shoes sold by Mr. X are among the displayed available choices.

6. Which, submits Mr. Narula, would have been perfectly fine, except that Mr. X’s shoes are counterfeits.

7. IIL, alleges Mr. Narula, does no prior verification before accepting a seller, registered on its website, as peddling the goods of a particular reputed brand. The result is that IIL’s Indiamart platform is used as a means to peddle counterfeit goods, in the bargain defrauding customers, infringing the plaintiff’s registered trademarks and passing off the counterfeit goods as the goods of the plaintiff. By not conducting any verification of the seller’s credentials, and by providing “Puma shoes” as a drop down option which the seller can choose while registering himself as a dealer in a particular product or product range, it is alleged that IIL is facilitating infringement and passing off by sale of counterfeit products. This, he alleges, amounts to aiding and abetting infringement and passing off. Additionally, by failing to observe due diligence while registering the seller as a dealer of goods bearing a particular brand, Indiamart, it is alleged, is also in breach of Rule 3(1)(b)(iv)1 of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 (“the IT Rules”).

8. Mr. Narula acknowledges that, whenever the plaintiff has come across such infringing product listings and has informed Indiamart accordingly, Indiamart has immediately taken down said listings. However, he submits that, owing to the facility, available on Indiamart’s webpage, to put up counterfeit products by representing them to be genuine, with no verification at Indiamart’s end, fresh counterfeit listings spring up almost immediately.

9. Indiamart, submits Mr. Narula, collects payment against the merchandise ordered by buyers and is, therefore, directly involved in the infringing activities. It is not, therefore, akin to a simple directory which lists services, but is a key player in arranging sale of products. The actual seller leaves no footprint except his mobile number. Mr. Narula points out that the screen which requires the seller, at the time of registering, to provide his GST/PAN number, also has an option “I don’t have it”, thereby indicating that providing of the GST or PAN number is also not mandatory. In these circumstances, Mr. Narula submits that IIL cannot seek to get away by claiming that it merely created an algorithm, and was not responsible for the manner in which the algorithm operates.

10. Mr. Narula submits that, in these circumstances, IIL cannot claim “safe harbour” under Section 792 of the Information Technology Act, 2000 (“the IT Act”).

11. Rather, submits Mr. Narula, the facts of the case directly attract Section 2(2)(b) and (c)(ii)3 and sub-sections (1), (2), (4)(c), (6), (7) and (8)4 of Section 29 of the Trade Marks Act.

12. In support of his submissions, Mr. Narula places reliance on the judgment of a Division Bench of this Court in Kapil Wadhwa v. Samsung Electronics Co. Ltd5 and of this Bench in Snapdeal Pvt Ltd v. Godaddycom LLC6, as well as paras 77 to 79, 81 and 115 of DRS Logistics Pvt Ltd v. Google India Pvt Ltd7 and paras 25, 26, 31, 32, 34, 43 and 45 of Makemytrip India Pvt Ltd v. Booking.com B.V.8, both by coordinate Single Benches of this Court. These decisions, he submits, include, within the scope of infringement, even hidden use of the plaintiff’s registered trade mark, as in, for example, meta tags.

13. The plaintiff has, therefore, instituted the present suit against Indiamart, seeking the following reliefs, which are pressed by Mr. Narula, apart from damages and costs:
“49. It is, therefore, respectfully prayed that this Hon’ble Court may be pleased to pass the following reliefs in favor of the Plaintiff and against the Defendant:

i. A decree for permanent injunction restraining the Defendant to cease use, facilitate or offer to the third parties the trademark PUMA as a brand suggestion/keyword/search term/recommended search on the portal/website www.indiamart.com or use the mark PUMA in any manner which may amount to infringement of the Plaintiff’s registered trademarks as mentioned in paragraph 12 of the plaint;

ii. A decree for permanent injunction restraining the Defendant to cease use, facilitate or offer to the third parties the trademark PUMA as a brand suggestion/keyword/search term/recommended search on the portal/website www.indiamart.com in any manner which may result in third parties listing their products as authorized and genuine products thereby passing off their goods and services as that of the Plaintiff;

iii. An order directing Defendant to from removing all listing for sale of PUMA counterfeit products and creating any new entry for sale of PUMA counterfeit products or uploading any product images of PUMA, , logo, Form strip logo without verification and due diligence by the Defendant and to seek specific undertaking from the seller for each listing created that products being offered are not counterfeit.”

IIL’s response

14. Arguing in response for IIL, Mr. Raj Shekhar Rao, learned Senior Counsel, submits that the present suit is a complete misadventure, and the plaintiff can have no sustainable grievance against his client – the sole defendant that it has chosen to implead. He draws attention to para 27 of the plaint, which sets out the cause of action on which it is based:
“27. The Plaintiff in the first week of August, 2021 received various consumer complaints of counterfeit goods being sold in large numbers on the Defendant’s portal. Thereafter, it carried out random search on the Defendant’s portal with the keyword or brand name “PUMA” and came across various third parties selling/listing their counterfeit products i.e. clothing, footwear, face masks, socks, caps, watches, accessories and merchandises etc. bearing the Plaintiff’s mark PUMA, logo, Form strip logo including its RS-X 3D series shoes on Defendant’s website www.indiamart.com and screenshots evidencing the same are produced below.”

The plaintiff’s grievance is, therefore, that counterfeit goods of the plaintiff are being sold on the Indiamart platform. He submits that Indiamart is not responsible for the fact that the goods are counterfeit. In this context, he seeks to point out that the right to assert one’s registered trademark and to seek remedy against its infringement, as conferred by Section 28(1)9, is not absolute, but is subject to other provisions of the Trade Marks Act, as is clear from the opening words of the provision. IIL, submits Mr. Rao, does not sell goods. It merely makes available space where another person can offer his goods for sale. By the present suit, he submits that the plaintiff, as the owner of the concerned brand, is trying to monopolise the channel of trade, which is impermissible. IIL is not the originator of the information relating to the goods put up for sale on its website. It is merely a space provider. He submits that IIL is willing to take down any listing, put up by a counterfeiter, on the fact being brought to its notice.

15. Mr. Rao also refers me to para 29 of the plaint:
“29. The Plaintiff submits that the entire business of the Defendant is based on enrolling a large number of traders without any due diligence or verification so that it can convert them into payee listing. The Plaintiff submits once they submit a “take down” request, the 3rd parties relist them under a different or similar name. Thus , the Defendant is encouraging or inducing infringement by lack of due diligence.”

Thus, submits Mr. Rao, the entire plaint is predicated on the premise that IIL is facilitating counterfeiting activities. In fact, though the issue in controversy in the plaint is the availability, to IIL, of “safe harbour” under Section 79 of the IT Act, the plaint has been argued as an infringement suit, apropos Section 29 of the Trade Marks Act. Section 29, he submits, would at best apply only to the person who selects the option “Puma” or “Puma shoes” from the drop down box, at the time of registration of his product on the Indiamart website. It is that person who is using “PUMA” as a trademark within the meaning of Section 29(1); not IIL. For the same reason, he submits that no other sub-section of Section 29 would apply either.

16. Mr. Rao also places reliance on Sections 30(1) and (2)10 of the Trade Marks Act. He submits that the use of the mark PUMA, by IIL, is only to identify the goods being sold as those of the plaintiff and that, therefore, such an act would not constitute infringement in view of Section 30(1).

17. Mr. Rao refers me to the following clauses of the Terms and Conditions of Use of IIL’s website, to which every seller who seeks to sell his merchandise or the website is required to consent and subscribe:
“I. WEBSITE – MERELY A VENUE / PLATFORM

The Web Site acts as a match-making platform for User(s) to negotiate and interact with other User(s) for entering into negotiations in respect thereof for sale or supply of goods or services. IIL or IndiaMart.com are not parties to any negotiations that take place between the User(s) of the Web Site and are further not parties to any agreement including an agreement for sale or supply of goods or services or otherwise, concluded between the User(s) of the Web Site.

IIL does not control and is not liable in respect of or responsible for the quality, safety, genuineness, lawfulness or availability of the products or services offered for sale on the Web Site or the ability of the User(s) selling or supplying the goods or services to complete a sale or the ability of User(s) purchasing goods or services to complete a purchase. This agreement shall not be deemed to create any partnership, joint venture, or any other joint business relationship between IIL and any other party.

II. SERVICES PROVIDED BY IIL

IIL provides the following services to its Customers and their respective definitions are classified here under: –

* “Leading Supplier”: It gives the User(s) priority listing within categories of their choice as available on IndiaMART, thus increasing visibility of their products.

* “Star Supplier”: It is add-on service by IndiaMART which gives its User(s) priority listing in their chosen category of products. By availing this service the User(s) will get benefits of increased leads and enquiries.

* “TrustSEAL”: is a seal that User(s) gets after getting its business-related documents and information verified.

* “Maximiser”: User(s) availing this service could maximize its return on investment by availing the specialised feature of this package.

* “Mini Dynamic Catalog”: It is a professionally-designed catalog on IndiaMART along with independent control to add, delete, edit text and images as per requirement of customers.

* “Verified” User(s): Users are said to be verified if any of their provided primary/secondary, mobile or email is verified by IIL.

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XI. POSTING YOUR CONTENT ON WEBSITE

Some content displayed on the Web Site is provided or posted by third parties. User(s) can post their content on some of the sections/services of the Web Site using the self-help submit and edit tools made at the respective sections of the Web Site. User(s) may need to register and/or pay for using or availing some of these services.

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User(s) agree that they will not use IIL Content and/or IIL’s Services to send junk mail, chain letters or spamming. Further, registered User(s) of the Web Site agree that they will not use the Email Account to publish, distribute, transmit or circulate any unsolicited advertising or promotional information. User(s) further hereby represent, warrant and agree (i) to host, display, upload, modify, publish, transmit, store, update or share; or (ii) submit to IIL for display on the Web Site or transmit or sought to be transmitted through IIL’s Services any content, material or information that does not and shall at no point:

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* Be intended to deceive or mislead the addressee about the origin of such messages or knowingly and intentionally is used to communicate any information which (i) is patently false or grossly offensive or menacing/misleading in nature but may reasonably be perceived as a fact; or (ii) harass a person, entity or agency for financial gain or to cause any injury to any person;

* Relate to sale of products or services that infringe or otherwise abet or encourage the infringement or violation of any third party’s copyright, patent, trademarks, trade secret or other proprietary right or rights of publicity or privacy, or any other Third Party Rights;”

These covenants, submits Mr. Rao, are entirely in compliance of the IT Rules, as well as the due diligence requirements envisaged by Rule 3 thereof.

18. Mr. Rao submits that it is physically and practically impossible for IIL to monitor or control counterfeiting. In the facts of the present case, he submits that IIL is entitled to safe harbour under Section 79 of the IT Act – which commences with a non obstante clause and would, therefore, prevail over other statutory provisions – and relies, for this purpose, on paras 117, 121 and 122 of Shreya Singhal v. U.O.I.11, para 28 of Power Control Appliances v. Sumeet Machines (P) Ltd12 and paras 5 and 6 of the judgment of the Division Bench of this Court in Power Control Appliances v. Sumeet Machines (P) Ltd .

19. Mr. Rao also invokes the doctrine of exhaustion. Where a rightful owner, distributor, or seller of goods bearing a registered trademark purchases such goods, he submits that the right of the registrant of the trademark, to assert the trademark, stands exhausted and the purchaser is free, consequently, to sell the products. Any third party who seeks to advertise or sell the plaintiff’s products on IIL’s portal is, therefore, doing so legally and cannot be restrained. This aspect has necessarily to be borne in mind before restraining IIL from suggesting the plaintiff’s name or mark PUMA to third parties for listing their products on IIL’s portal.

20. Having admitted, in the plaint, that IIL is an intermediary, the plaintiff is, submits Mr. Rao, seeking, from IIL, something that the law does not require. The infringers, if any, are the persons who are selling counterfeit goods across IIL’s platform. The plaintiff has not chosen to implead any such infringer, thereby rendering the suit bad for non-impleadment of necessary parties as well. The suit, therefore, in his submission, deserves summary dismissal under Order XIIIA of the Code of Civil Procedure, 1908 as amended by the Commercial Courts Act, 2015.

21. DRS Logistics, submits Mr. Rao, involved use of the plaintiff’s registered trade mark as an ad word on the Google Ad Words program without authority. By such use, traffic, and business, which was otherwise intended for the owner of the trademark, was diverted to the illegal user of the ad word. The following features, submits Mr. Rao, distinguish the facts of the present case from those which obtained in DRS Logistics:

(i) IIL is not a competitor of the plaintiff. Nor does it operate in the class of goods or services in which the plaintiff operates its business.

(ii) IIL does not commercially exploit the names or words suggested in its drop down menu. No amount is charged from the advertiser or user for choosing one of the suggested names or words at the time of registration of its listing.

(iii) In DRS Logistics, the Court noted that the impugned sponsored ad-listings, generated by using third-party trademarks appeared at the very top of the search result page on Google. No such feature is present here.

(iv) Most importantly, in DRS Logistics, the use of the registered trade mark as an ad word or meta tag or in the source code resulted in the prospective consumer of the owner of the registered trademark being faced with alternate options of competitors’ products or services. In the present case, the suggestion of the plaintiff’s name by IIL, which takes place at the very backend, results in advertising or the listing of the plaintiff’s products on IIL’s platform. Providing the plaintiff’s name as a suggested option does not, therefore, result in diversion of internet traffic.

(v) There is inherently no justification for comparing the mere suggestion of the plaintiff’s name at the backend of IIL’s platform, to a seller who sought to sell products bearing the plaintiff’s brand name, by misuse of the plaintiff’s registered trademarks or the Google Ads program.

(vi) The plaintiff has failed to demonstrate even a single instance in which it’s PUMA trademark was being used by any advertiser in respect of goods of another brand, which was the very basis of the grievance in DRS Logistics.

Plaintiff’s submissions in rejoinder

22. Apropos the entitlement of IIL to safe harbour under Section 79 of the IT Act, Mr. Narula submits, in rejoinder, that an intermediary who provides value-added service is not entitled to the benefit of Section 79. He relies, in this context, on paras 52, 82 and 83 of Snapdeal. The principles laid down in these paras, he submits, squarely apply, as IIL monetises its services beyond the “free listing” facially provided on its website. Mr. Narula further relies on sub-section (3) of Section 79. To support the submission that IIL cannot claim safe harbour under Section 79, Mr. Narula also cites Amway India Enterprises Pvt Ltd v. 1Mg Technologies Pvt. Ltd13.

23. Mr. Narula refutes Mr. Rao’s contention that the plaint does not allege infringement and is only predicated on the non-availability, to IIL, of the protective shield of Section 79 of the IT Act. He submits that the plaint has to be read as a whole and that, in paras 3, 26, 30 and 34 of the plaint, the plaintiff has specifically asserted its trademark rights. These paras (to the extent relevant) read thus:

“3. That the present suit has been instituted in order to protect the Plaintiff’s statutory rights in their well-known and world renowned trade mark PUMA, logo, Form strip logo and common law right in the brands and trade dress, get up, layout and placement of distinctive features of its shoes and readymade garments. Further, the present suit has also been instituted to seek strict adherence to observing the due diligence requirement, by the Defendant, as an intermediary under Section 79 of the Information Technology Act. To stop aiding, inducing and abetting infringement of Plaintiff’s brands and various IP elements by actively offering PUMA as a brand option by the Defendant through its portal from its drop-down list to anyone desirous of selling footwear, face masks, socks, caps, watches, accessories, and merchandise. Thus, placing instrument of deception and fraud in the hands of third parties to encourage infringement and unauthorised business activities by inducing them to select PUMA brand. The Defendant through its website/portal www.indiamart.com is encouraging traders to trade/stock/supply/market/sell/list clothing, footwear, face masks, socks, caps, watches, accessories, and merchandises etc. that are poor in quality and counterfeit using the brand name PUMA resulting in infringement of the Plaintiff’s registered trademark/logo PUMA and passing off.

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26. … The Plaintiff’s grievance is that the Defendant’s web portal has hundreds of listing of traders that are offering clothing, footwear, face masks, socks, caps, watches, accessories and merchandises etc. that are poor in quality and counterfeit, resulting in infringement of the Plaintiff’s registered trade mark/logo PUMA, logo, Form strip logo and thereby passing off their inferior goods as for and that of the Plaintiff.

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30. The Plaintiff submits that the Defendant is also actively infringing its brand name by aiding and abetting the users of its platform to choose PUMA trademark/brand as a keyword suggestion/search term/recommended search to describe their products as Puma branded products from a drop-down menu. The drop-down menu offers the following options with PUMA brand name

* PUMA shoes
* PUMA t-shirts
* PUMA socks
* PUMA men lower
* PUMA men’s cap
* Watches PUMA
* PUMA bottles

As a result of PUMA being offered as brand name suggestion by the Defendant to several hundred parties. And these parties with impunity continue to list them as seller of PUMA products. Therefore, making it a full-time job of the Plaintiff and its representatives to monitor and report the infringing listing for “take down”. The Plaintiff submits once they provide to the Defendant, the list of URL for ‘take down’ those are removed, but an equal number are relisted due to lack of due diligence and no penalties by the Defendant to keep its portal free of counterfeit goods.

31. …The Plaintiff submits that PUMA being the registered trademark of the Plaintiff, it has not authorized the Defendant to use the mark to promote its services or in any manner use the brand PUMA over the internet for making it available to third parties to upload counterfeit and cheap quality products bearing the mark PUMA. The Defendant is using their mark without authorization and license for making profits by offering space to the third parties for uploading product pictures and option to add, amend, or delete the product description and thereafter sell the said products where the Defendant acts as an agent to facilitate the transaction. The Defendant is also making profits by the paid subscription, advertisements or sponsorships on the said basis.

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34. It is most respectfully submitted that the Defendant being fully aware of the Plaintiff’s right in the well-known marks PUMA, its logos indulged into activities of providing option to third parties sellers to choose PUMA trademark/brand as a keyword/search term/recommended search to describe their products from a drop-down menu and by providing the same, the Defendant is facilitating and contributing to infringement of PUMA’s rights.”

Further, in paras 39 and 41 of the plaint, it is specifically asserted that IIL is making profits from its illegal activities.

24. Mr. Narula points out that, in para 17 of the written statement, IIL has admitted usage, by it, of the plaintiff’s PUMA trade mark, thus:
“17. That in view of the abovementioned submissions, the usage of the trademark “PUMA” by the Defendant is a mere suggestion for listing, and in fact is not exposed to the viewers of the website and is a mere option offered to the sellers who are seeking to list their products, at the very backend of the entire operation. The suggestion of a trade mark is to facilitate listing of goods bearing suggested trade mark only and by no means is meant to facilitate listing of goods under a third party trade mark or listing of counterfeit goods as is being suggested by the Plaintiff. Both the above will fall outside the terms of use of the Defendant’s website. Further, no charge or profit is made by the Defendant in the making of such a suggestion and therefore, the same does not fall under the definition of “course of trade” as for “infringement” to be established.”

Mr. Narula submits that the defence sought to be set up by IIL in para 17 of the written statement is meritless, as hidden use of the plaintiff’s trademark also constitutes infringement. He relies, for the purpose, on DRS Logistics.

25. Mr. Narula also dismisses IIL’s contention that it is not motivated by any expectation of profit. It is pointed out that IIL is misusing only popular brands, and not all. In fact, the goodwill and reputation that the plaintiff’s registered trade marks have attained over a period of time have motivated IIL to misuse the said marks. Mr. Narula cites, in support of his submissions, paras 64 to 66 of the judgment of this bench in Snapdeal.

Analysis

26. The following two issues arise for consideration:

(i) Is IIL infringing the plaintiff’s registered trade marks, or passing off goods or services, other than those of the plaintiff, as the plaintiff’s? If not, the matter ends there.

(ii) If IIL is doing so, is it entitled to safe harbour under Section 79 of the IT Act and thereby insulated from the consequences of infringement/passing off?

27. On both the issues, the controversy is covered, to a large extent, by the recent judgment of the Division Bench of this Court in Google LLC v. DRS Logistics (P) Ltd.14, by which the appeal preferred by Google against the judgment of the learned Single Judge in DRS Logistics was dismissed.

28. There are, however, certain features, in that case, which are not available in the present; likewise, there are certain features which are available in the present case which were not forthcoming in Google LLC. It would be beneficial to proceed through the said judgment, para-wise, to identify the exact extent to which it covers the controversy at hand. The para numbers of Google LLC, as cited hereinafter, refer to the SCC OnLine report of the judgment.

29. Paras 1 to 27 of Google LLC

29.1 Paras 1 to 27 of Google LLC identify the features of the Google Ads program which formed subject matter of dispute in that case. The Division Bench notes that the Google Ads program offered certain ad words which could be selected by persons who desired to join the program to advertise their goods or services. Such persons could select one of the ad words provided by Google against consideration. These ad words were often the brand names or trademarks of reputed manufacturers or providers of service. If, for example, a company P were to select “Audi” from the ad words available on Google’s Ads program, then, if a user, who, perchance, wanted to buy a luxury sedan, keyed in the search term “Audi” in the Google search bar, the result that would show up would not only include websites relevant to Audi but, above the said search results, would also reflect the advertisement of P, and of other persons who had selected “Audi” as the ad word from the Google Ads program. These advertisements were preceded by the prefix ‘Ad’ so that the user of the Google search engine would be able to immediately distinguish these results from the search result which actually dealt with Audi. The judgment of the Division Bench extracts the following screen-shot which explains this:

The above screen-shot reflects the first four results which have been thrown up, consequent on a user entering the search thread “Audi” in the Google search bar. Of these, the first three search results re-direct to advertisements by persons who have chosen “Audi” as the ad word from the Google Ads program. As is seen, the first result is by www.lexusindia.co.in, the second is by www.porsche.com and the third is by www.audigurugram.in. Thus, when a person, who desires to use the Google search engine to search for material on Audi, does so, he is also provided advertisements of Lexus and Porsche. Though he may have had an interest in purchasing an Audi, the user can now also exercise an informed choice of whether, instead, he would prefer a Lexus or a Porsche, having seen their advertisements. It is for this reason that, almost invariably, ad words selected by a particular advertiser would relate to goods or services which are allied to the goods or services provided by the owner of the mark which is used as the ad word. For example, there would be little sense in a furniture manufacturer selecting “Audi” as an ad word in the Google Ads program, as the person who desires to search for material on Audi would be least interested – ordinarily – in furniture. It is this possibility which was challenged, by DRS Logistics (P) Ltd. (hereinafter “DRS”) before this Court, as “diversion of business”.

29.2 As already noted, paras 1 to 27 of Google LLC set out the aforesaid features of the Google Ads program, albeit in much greater detail.

30. Paras 31 to 35 of Google LLC

30.1 Paras 31 to 35 of the judgment in Google LLC identify the controversy before the Bench and read thus:
“31.  Google further claims that it, as an intermediary, has a safe harbour under Section 79 of the IT Act and the learned Single Judge’s findings to the contrary are erroneous. Google also contends that the directions issued by the learned Single Judge requiring it to investigate complaints alleging use of the trademark and/or to ascertain whether a sponsored result has an effect of infringing a trademark or passing off, are liable to be set aside.

32.  DRS disputes Google’s claim that its liability is restricted under Section 79 of the IT Act. DRS contends that Google actively participates in promoting sponsored Ads to be displayed on the SERP. It does so by determining the keywords, which is relevant to the goods and services of the advertisers and offers its use to them. It, admittedly, selects the Ads that are displayed based on an Ad Quality Score, which in turn takes into account the Max CPC offered by an advertiser. Thus, according to DRS, Google’s claim that it is a passive intermediary in reference to the Ads Programme, is unsustainable. And, the benefit of restriction of liability under Section 79 of the IT Act is not available to Google.

33.  Google India claims that it neither operates nor controls the Search Engine. It does not operate the Ads Programme and therefore, is incapable of complying with the directions in the impugned judgment.

34.  Google has confined the scope of its appeal to assailing the directions issued in paragraph no. 127 of the impugned order to the extent that the said direction is based on the finding that use of the trademarks as keywords in the Ads Programme amounts to ‘use’ of the trademarks under the TM Act, which may amount to infringement of the trademarks under the TM Act. And, Google is not entitled to the defence under Section 79 of the IT Act.

35.  The principal questions that arise for consideration of this Court are:
(i) whether use of the trademarks as keywords amounts to use of those marks for the purposes of Section 29 of the TM Act;
(ii) if so, whether such use is that of the advertiser or by Google as well;
(iii) whether the use of the trademark as keywords per se amounts to infringement of a trademark; and
(iv) if so, whether Google is absolved of its liability in respect of use of trademarks as keywords by virtue of being an intermediary under Section 79 of IT Act.”
(Emphasis supplied)

30.2 “AGARWAL PACKERS AND MOVERS” was the registered trade mark of DRS. “AGARWAL PACKERS AND MOVERS” had also been provided as one of the ad words available on the Google Ads program. All parties who selected “AGARWAL PACKERS AND MOVERS” as the ad word of their choice from the Google Ads program would, therefore, have their advertisement reflected above the search result relating to Agrawal Packers & Movers itself, whenever a user keyed in “AGARWAL PACKERS AND MOVERS” in the Google search bar. Two such third parties, who had selected “AGARWAL PACKERS AND MOVERS” as their ad words of choice were www.safepackersmovers.com and www.dtccargopackers.com. The result was that, when a person desired to search for information on Agarwal Packers & Movers and, for that purpose, entered “AGARWAL PACKERS AND MOVERS” in the Google search bar, he was presented, as the initial search results, the advertisements of www.safepackersmovers.com and www.dtccargopackers.com. This, contended DRS, resulted in diversion of business from its website to the owners of the www.safepackersmovers.com and www.dtccargopackers.com websites, who were its competitors. In this manner, it was alleged that use of “AGARWAL PACKERS AND MOVERS” as a keyword in the Google Ads program infringed DRS’s registered trade mark. It was also alleged that the consumer was deceived into believing that he was availing the services of DRS, even on the website of other competing traders. Thus, DRS sought a restraint against Google from permitting the use of any of DRS’s trade mark as keywords by third parties.

30.3 A reading of paras 30 and 31 of the decision in Google LLC reveals that Google had, before the Court, advanced three of the very same contentions which have been advanced in the present case by IIL, through Mr. Rao.

30.4 The first is that use of “AGARWAL PACKERS AND MOVERS” as a keyword in the Google Ads program did not amount to “use” within the meaning of the Trade Marks Act. IIL has, similarly, contended in the present case that the use of “Puma” or “Puma Shoes” as a choice in the drop down menu presented to the seller who was seeking to register himself as a seller of Puma products on the Indiamart platform does not amount to “use” of the plaintiff’s registered trade mark.

30.5 The second contention advanced by Google, which IIL, too, has raised in these proceedings, is that even if the use of the registered trade mark “AGARWAL PACKERS AND MOVERS” by DRS were to be treated as “use” within the meaning of the Trade Marks Act, that use, to the extent it was infringing, was by the advertiser displaying the sponsored results – for example by www.safepackersmovers.com and www.dtccargopackers.com – and not by Google. In a similar vein, IIL has contended, in the present case, that the infringing use of the plaintiff’s “Puma” trade mark, if at all, is by the seller who sells his goods, bearing the “Puma” trade mark or other registered trade marks of the plaintiff – whether genuine or counterfeit – on the Indiamart platform, and not by IIL itself.

30.6 Thirdly, Google also sought sanctuary under Section 79 of the IT Act, as has been sought by IIL in the present case.

30.7 Thus, three of the major contentions advanced by Google before the Division Bench are similar to the contentions advanced by IIL before this Court. The judgment in Google LLC, therefore, has to be carefully read.

30.8 The similarities between the contentions advanced by Google before the Division Bench and by IIL before this Bench are also underscored by paras 32 and 33 of the report in Google LLC. Para 32 records DRS’s contention that the keywords in the Google Ads program were determined by Google. Google, therefore, actively participated in promoting the sponsored advertisement displayed on the Search Engine Result Page (SERP). DRS, therefore, disputed Google’s claim that it was a mere passive intermediary, entitled to the benefit of Section 79 of the IT Act. In a similar vein, the plaintiff, in the present case, also contends that the decision to include “Puma”, or “Puma shoes”, as one of the choices available to the prospective seller in the drop down menu provided at the time of registration, was of IIL. Thus, IIL – like Google in Google LLC – actively participated in determining the choices which were provided in the drop down menu to the prospective seller on the Indiamart platform, and offered the said choices to the seller concerned. In determining these choices, Mr. Narula points out that IIL invariably chose reputed brand names, thus indicating that the choice of drop down search terms was conscious, and aimed at maximizing returns.

30.9 As was contended by DRS in Google LLC, therefore, the plaintiff contends, before this Court, that IIL cannot be treated as a passive intermediary and would not, therefore, be entitled to protection under Section 79 of the IT Act.

30.10 Para 33 of the report records Google’s response that it neither operated nor controlled the Google search engine and had no part to play in the exercise of choice of ad word by the user of the Google Ads program. In a similar vein, IIL contends that it neither operates nor controls the decision of the prospective seller on the Indiamart platform as the choice is to be made by him from the drop down menu presented at the time of registration. Thus, the respective contentions of DRS and Google before the Division Bench in Google LLC are similar to the contentions of plaintiff and IIL before this Court in the present suit.

30.11 Para 35 of the judgment in Google LLC identifies the four issues which arose for consideration in that case. Largely identical issues arise for consideration before this Bench in the present case. The issues arising for consideration in the present matter may – parallelly to those framed in Google LLC – be worded thus:

(i) Whether use of the trade mark as choices in the drop down menu amounts to use of those marks for the purposes of Section 29 of the Trade Marks Act ?

(ii) If so, whether such use is that of the seller on the Indiamart platform or by IIL as well?

(iii) Whether the use of the trade mark as a search option in the drop down menu per se amounts to infringement of the trade mark ?

(iv) If so, whether IIL is absolved of its liability in respect of use of the trade mark as a search option in the drop down menu by virtue of being an intermediary under Section 79 of the IT Act ?

30.12 A comparison of the issues in the present case, as framed supra, with the issues as framed in para 35 of Google LLC, clearly indicates that the issues in controversy are identical.

31. Paras 36 to 44 of Google LLC

Paras 36 to 44 of Google LLC set out, in brief, the findings in the judgment of the learned Single Judge which were in appeal before the Division Bench. They are not, therefore, relevant for us.

32. Paras 45 to 50 of Google LLC

32.1 Paras 45 to 50 set out Google’s contention before the Division Bench. A reading of the said paragraphs once again indicates how similar the contention of IIL, before this Court are, to the contentions of Google before the Division Bench.

32.2 Para 45 once again notes Google’s contention that use of a trade mark as a keyword in the Google Ads program did not per se infringe the trade mark. Similarly, IIL contends that the use of the plaintiff’s trade mark “Puma” in the choices in the drop down menu provided to the seller at the time of registration is not per se infringing of the said trade mark.

32.3 Para 46 notes one more significant contention advanced by Google which is identical to the contention advanced by IIL in the present case. Google contended that, as the keyword was invisible to the consumer who was using Google as a search engine, the requirement of likelihood of confusion, which was a sine qua non for infringement, under Section 29(2) of the Trade Marks Act, was absent. In a similar vein, IIL contends that, as the choices provided in the drop down menu – which included the “Puma” trade mark – were visible only to the seller at the time of registration with the Indiamart platform and not to the consumer using the Indiamart platform to purchase goods, there is no likelihood of confusion within the meaning of Section 29(3) of the Trade Marks Act.

32.4 Para 48 of Google LLC carries this point further, by recording Google’s contention that, in the absence of likelihood of confusion, the mere fact that prospective users of DRS’s website may have been diverted to the website of advertisers who chose “AGARWAL PACKERS AND MOVERS” as the ad words, would not indicate confusion or likelihood of confusion. Similarly, IIL contends that the mere fact that, by selecting “Puma” as the choice from the drop down menu provided at the time of registration, a particular seller may have been peddling counterfeit goods on the Indiamart platform, would not indicate confusion of likelihood of confusion.

32.5 Para 49 once again reiterates the contention of Google, already noted earlier in the judgment, that Google’s role was content-neutral, as the Google Ads program merely provided an advertising platform and interface for creating and placing advertisements on the Google search engine. Google was, thus, a mere intermediary. If the advertisement was violative of the law, the advertiser was liable. In a similar fashion, IIL contends that IIL’s role, insofar as the selection of an option from the drop down menu provided to a seller at the time of registration, was content-neutral. The selection was used by a third party to select his products on the Indiamart platform with whom IIL was not concerned. IIL merely provides a platform for advertising and sale of products of third parties and is, therefore, a mere intermediary. Like Google, IIL also, therefore, seeks sanctuary under Section 79 of the IT Act. If the products sold by the seller, who had selected “Puma” as the drop down choice, are not genuine Puma products, it is the seller who is responsible and not IIL. As was contended by Google and recorded in para 49 of Google LLC, IIL, too, contends that providing the trade mark of the plaintiff as a choice in the drop down menu did not make IIL a primary infringer or disentitle it from seeking the benefit of Section 79 of the IT Act.

33. Paras 52 to 54 of Google LLC

Paras 52 to 54 of the report in Google LLC record the contentions of DRS, which have already been noted earlier in this judgment.

34. Findings of the Division Bench in Google LLC

The findings of the Division Bench commence from para 55 of the report.

35. Paras 55 to 93

35.1 The Division Bench commenced its discussion on the merits of the matter by examining the issue of whether the use of the trade mark of a third party as a keyword in the Google Ads program constituted “use” of the trade mark within the meaning of the Trade Marks Act.

35.2 The findings of the Division Bench in this regard would, therefore, be relevant to decide whether the use of the plaintiff’s “Puma” trade mark as one of the search options in the drop down menu provided to the seller at the time of registration constitutes “use” within the meaning of the Trade Marks Act.

35.3 Paras 55 to 57 and 84 to 93 of the report merit reproduction in this regard:

“55.  The first and foremost question to be addressed is whether the use of trademarks as keywords is ‘use’ for the purposes of the TM Act.

56.  The principal contention advanced on behalf of Google is that the use of a trademark as keyword does not amount to ‘use’ under the TM Act. This contention is founded on Clauses (b) and (c) of Section 2(2) of the TM Act. Google contends that keywords are not visible to the internet users and therefore, their use does not qualify as ‘use of a mark’ under Section 2(2)(b) of the TM Act. It contends that the said section requires the expression ‘use of a mark’ to be construed as ‘use of printed or other visual representation of the mark’. Further, Google contends that Clause (b) of Section 2(2) of the TM Act is required to be read in conjunction with Sub-clause (ii) of Section 2(2)(c) of the TM Act. This further requires that the ‘use of a mark’ in relation to services be construed as a statement about the availability, provision, or performance of such services.

57.  According to Google, the use of a keyword, similar to a trademark, does not give rise to any actionable claim under the TM Act because, being invisible, its use cannot be construed as a use of a mark. Mr. Kathpalia had referred to the decision of the Federal Court of Australia in Veda Advantage Ltd. v. Malouf Group Enterprises Pty Ltd.15 and fashioned his submission on the findings returned in the said judgment.

*****

84.  Section 2(2)(c)(i) of the TM Act is couched in wide terms. Any reference to the use of a mark in relation to goods is not only limited to use in any physical form but also “in other relation whatsoever” to such goods. The words “in relation to” have been interpreted in wide terms. In Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd.16, the Supreme Court considered the scope of Section 2(2)(b) of the TM Act (which is now Section 2(2)(c)(i) of the TM Act) and interpreted the words “in other relation whatsoever” in wide terms. The Court further observed that use of the words ‘in’ and ‘whatsoever’ indicated that the expression ‘other relation’ was of a wide amplitude. The relevant extract of the said decision is as under:

“41. The question therefore is – is the word “use” in Section 46(1) so limited? The phrase used in Section 46 is “bona fide use thereof in relation to those goods”. The phrase has been defined in Section 2(2)(b) of the Act as:

“2(2)(b) to the use of a mark in relation to goods shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods”.
(emphasis supplied)

42. This shows that the use may be other than physical. It may be in any other relation to the goods. Given this statutory meaning, we see no reason to limit the user to use on the goods or to sale of goods bearing the trademark.

*****
45. In Section 2(2)(b) of the Act, we have the additional words “any” and “whatsoever” qualifying the words “other relation” giving the words a much wider meaning. Reading this definition into Section 46(1) it is clear that the word “use” in Section 46(1) may encompass actions other than actual sale.”

85.  We are unable to accept that the use of a trade mark must necessarily be limited to use in a visual form on the goods. The words ‘in any other relation’ to goods would also include use in relation to the goods, in any form whatsoever.

86.  Section 2(2)(c)(ii) of the TM Act requires the reference to the use of the mark as or as a part of any statement about availability, provision or performance of such services. The expression “or in any other relation whatsoever” is not used under Section 2(2)(c)(ii) of the TM Act. It is difficult to accept that the use of a mark in relation to services must be construed in a narrower sense than use of the mark in respect of goods. However, the same would depend on the context in which the expression “use of the mark” is used.

87.  Section 2(2) of the TM Act serves as an aid to interpret the words and terms as used in the TM Act. However, the same is by no means exhaustive. The expression “use of a mark” is used in the TM Act in several sections and in the context of various aspects including removal of the trademark on account of abandonment or non-use, and for lack of any bona fide intention to use the mark. Thus, the question whether a reference to the expression “use of a trademark” is to be understood as instructed by Section 2(2)(b) or 2(2)(c) of the TM Act would depend on the context in which the said expression is used.

88.  Section 29(6) of the TM Act expressly lists out certain actions, which would amount to use of a registered mark for the purposes of Section 29 of the TM Act. Clearly, the words of Section 2(2) of the TM Act do not control the width of Section 29(6) of the TM Act. Thus, if any action falls within the scope of Section 29(6) of the TM Act, the same would necessarily have to be construed as use of the mark, for ascertaining whether the trademark is infringed in terms of Section 29 of the TM Act.

89.  We concur with the view that the words “unless the context otherwise requires” in the opening sentence of Section 2(2) of the TM Act, limits the applicability of Section 2(2) of the TM Act to where it is contextually relevant.

90.  Indisputably, the Ads Programme is Google’s commercial venture to monetize the use of the Search Engine for advertising by displaying the sponsored links of various advertisers, who seek to display their advertisements on the SERP pursuant to search queries initiated by an internet user. The use of a trademark as keywords for display of advertisements in respect of goods or services clearly amounts to use of the trademark in advertising within the meaning of Section 29(6) of the TM Act.

91.  The expression “in advertising” as used in Section 29(6)(d) of the TM Act is not synonymous to the expression ‘in an advertisement’. It is not necessary that the registered trademark physically appears in an advertisement for the same to be used “in advertising”. The use of a trademark as a keyword to trigger display of an advertisement of goods or services would, in plain sense, be use of the mark in advertising.

92.  The conclusion of the Court of Justice of the European Union in Google France SARL and Google Inc. v. Louis Vuitton Malletier SA17 that use of a sign by an advertiser, which is identical to the trademark as a keyword, in the context of an internet referencing service, would be the use of the same in relation to goods or services, is persuasive on this aspect, our view is similar.

93.  It is important to distinguish between use of a mark as a trademark, and its use other than as a trademark. The use of a trademark as a keyword by an advertiser for the purposes of displaying its advertisements on the Search Engine, is use of the mark in relation to the goods and services offered by an advertiser. But it is not use that mark as a trademark.”
(Emphasis supplied)

35.4 Paras 56 and 57 of the report once again record Google’s contention predicated on the “invisibility” of the ad words provided in the Google Ads program to the consumer using the Google search engine. Google contended that, as the ad words were invisible to the consumer, the making available of third party trade marks as ad words by Google did not constitute “use” within the meaning of Section 2(2)(b) or 2(2)(c)(ii) of the Trade Marks Act, which required “use of a mark” to be “use of printed or other visual representation of the mark”. As the making available of “AGARWAL PACKERS AND MOVERS” as an ad word in the Google Ads program did not amount to “use” of “AGARWAL PACKERS AND MOVERS” as a trade mark within the meaning of Section 2(2)(b) or 2(2)(c)(ii) of the Trade Marks Act, Google contended that DRS had no sustainable actionable claim under the Trade Marks Act.

35.5 Paras 58 and 59 record the observations of the learned Single Judge, against whose decision Google was in appeal.

35.6 Paras 60 to 76 referred to various decisions of foreign courts and paras 77 to 83 reproduced statutory provisions contained in the Trade Marks Act.

35.7 In paras 84 to 88 of the report, the Division Bench returned two important findings. The first was that the use of the registered trade mark, in order to constitute “use of a mark” within the meaning of Section 2(2)(b) and 2(2)(c)(ii) of the Trade Marks Act, is not limited to use in a visual form on goods, but would also include use in relation to goods in any form whatsoever. The second was that Section 2(2) of the Trade Marks Act does not control or limit the width of Section 29(6). As such, use of the registered trade mark of the plaintiff, even if in one of the manners envisaged by Section 29(6), would also constitute “use” for the purposes of the Trade Marks Act.

35.8 Following the above, in paras 90 and 91 of the report, the Division Bench has interpreted the expression “in advertising” as employed in Section 29(6)(d). It holds that the expression “in advertising” is not synonymous with “in an advertisement”. In order for a registered trade mark to be regarded as having been used “in advertising”, therefore, it is not necessary that the registered trade mark must feature in an advertisement. As a sequitur, the Division Bench holds that the use of a trade mark as a keyword to trigger the display of an advertisement of the goods or service would amount to use of the trade mark in advertising.

35.9 These findings apply, mutatis mutandis, to the present case.

35.10 In view of the width accorded to the ambit of the expression “in any other relation whatsoever”, as they occur in Section 2(2)(c)(i) of the Trade Marks Act, by the Division Bench, and the consequent finding of the Division Bench that the use of the trade mark as an ad word in the Google Ads program would also amount to “use” within the meaning of Section 2(2) of the Trade Marks Act, the use of the plaintiff’s registered trade mark as one of the drop down choices available to the seller at the time of registration with the Indiamart platform would also amount to “use” of the trade mark within the meaning of Section 2(2)(b) and 2(2)(c)(i) .

35.11 I also venture, in this context, to hazard a few independent findings on the aspect of “use” in the facts of the present case.

35.12 Section 2(2)(b) clarifies that any reference, in the Trade Marks Act, to use of a mark, shall be construed as a reference to the use of printed or other visual representation of the mark, though the Division Bench in Google LLC has not regarded the stipulation of printed or visual representation as absolute. Nonetheless, it cannot be disputed that, when it appears as one of the drop down choices to the seller who seeks to register himself on the Indiamart platform, the plaintiff’s PUMA mark is in fact being visually represented. Visual representation is visual representation, irrespective of the purpose for which it is made, the person for whose eyes it is intended, and whether it is made at the backend, the front end or anywhere in between. The repeated emphasis on the fact that the drop down menu is a feature provided at the “very backend” of the registration process to be followed by a seller who seeks to register himself on the Indiamart platform, and that the consumer who seeks to purchase merchandise from the platform would not encounter the drop down menu, does not make the use, by IIL, of the plaintiff’s PUMA mark any the less a visual representation or, therefore, any the less constitute “use” of the mark as envisaged in Section 2(2)(b).

35.13 Providing, to the prospective seller, of PUMA as one of the choices in the drop down menu also satisfies the ingredients of Section 2(2)(c)(i), which includes, in the definition of “use of a mark”, use of the mark in any relation to the plaintiff’s goods. It is IIL’s avowed case that the suggestions provided in the drop down menu are intended to identify the goods which are being displayed for sale vis-à-vis their brand name owner. Thus, in the example provided in para 5 supra, IIL provides “Puma shoes” as a choice in the drop down menu, to be filled in by the seller, to indicate a relationship with the goods that the seller seeks to sell and the plaintiff.

35.14 Mr. Rao stressed that, while allowing the seller to select “Puma shoes” from the drop down menu, it was never the intent of IIL to allow a counterfeiter to peddle counterfeit goods on its platform. That may very well be true. Indeed, it is not Mr. Narula’s case – it cannot be – that IIL was consciously allowing counterfeiters to sell counterfeit products on its platform. That, however, is irrelevant as a consideration while examining whether providing of “Puma shoes” as a choice in the drop down menu presented to the prospective seller constitutes “use” of the plaintiff’s registered trade mark by IIL. In my considered opinion, it certainly does. The intent of providing “Puma shoes” as an option to the prospective seller is so that, if the seller chooses that option, then, a future customer who accesses the Indiamart website and desires to purchase “Puma shoes” would immediately be presented with the seller’s product – along with the products of others who may have chosen “Puma shoes” from the drop down menu. “Puma shoes” is, therefore, being used by IIL, even if it is only in the form of one of the choices provided in the drop down menu at the “backend”, in relation to the goods manufactured by the plaintiff. Providing of “Puma shoes” as an option in the drop down menu, therefore, satisfies the ingredients of “use of a mark” as envisaged in Section 2(2)(c)(i) of the Trade Marks Act.

35.15 Thus, though the “Puma shoes” option provided in the drop down menu is visible only to the seller at the time of registering himself with the Indiamart platform, and is not visible to the consumer who visits the website with intent to purchase goods, and though it is provided only at the “backend” of the registration process, the providing of the option itself constitutes “use of a mark” of the plaintiff, within the meaning of the Trade Marks Act.

35.16 Even if one were, therefore, to regard “use of a mark” as necessitating visual representation of the mark, the providing, by IIL, of “Puma” as one of the drop down menus available to the seller at the time of registration, on the Indiamart platform would constitute “use” within the meaning of Section 2(2)(b) and 2(2)(c)(i) of the Trade Marks Act.

35.17 The findings of the Division Bench in paras 90 and 91 of the report in Google LLC would also apply to the facts of the present case. It is an admitted position that, as a consequence of the providing, by IIL, of “Puma shoes” as a choice in the drop down menu available to the seller Mr. X who seeks to register himself on the Indiamart platform as a seller of Puma shoes, a subsequent consumer, who desires to purchase Puma shoes and enters “Puma shoes” as a search thread in the search bar available on the Indiamart webpage would be faced, amongst others, with the Puma shoes sold by Mr. X, whether genuine or counterfeit. If he clicks that link, the search result invariably advertises the shoes themselves. This is, in fact, apparent from the screenshots contained in para 3 supra.

35.17 Analogising the present situation with that which obtained in Google LLC and applying, to the present case, the findings returned in paras 90 and 91 of that decision, the providing of “Puma shoes” as a drop down option to Mr. X, at the time of his registering himself as a seller of Puma shoes on the Indiamart platform would amount to “use”, by IIL, of the plaintiff’s registered trade mark “in advertising” and would, therefore, also constitute use of the trade mark within the meaning of Section 29(6) of the Trade Marks Act.

36. Paras 94 to 106 of Google LLC

36.1 Paras 94 to 106 of the decision in Google LLC dealt with whether suggested keywords on the Google Ads program could be analogised with meta tags. In my opinion, it is not necessary to draw any analogy with meta tags in the present case. Paras 94 to 106 of Google LLC are not, therefore, of particular relevance to the facts before us.

37. Paras 107 to 130 of Google LLC

37.1 Paras 107 to 130 of the decision in Google LLC once again examine whether use of a trade mark as keyword on the Google Ads program constitutes “use” of the trade mark by Google within the meaning of the Trade Marks Act. Of these, paras 107, 110 to 112, 128 and 130 of the judgment merit reproduction, thus:

“107.  Google claims that even if it is held that use of trademarks as keywords amounts to use of the trademarks; the said use is by the advertiser and not use by Google. Google contends that it merely permits the advertisers to use keywords for display of sponsored links; it does not select the keywords. It claims that the Keyword Selection Planner is merely a tool which enables the advertisers to take an informed decision. It is a tool that provides the advertisers information regarding the approximate bid value of the keywords that may be relevant for the purposes of display of the advertiser’s sponsored link.

*****

110.  We find it difficult to accept that Google is a passive service provider and merely permits the advertisers, the use of keywords without using it itself. A review of the Ads Programme clearly indicates that Google’s role is anything but passive. It is an active participant in promoting use of trademarks as keywords for the purpose of its Ads Programme. It actively suggests keywords that would result in the display of Ads, which are likely to result in higher clicks. The PPC (Pay Per Click) revenue model suggests that the choice of the sponsored link to be displayed is based on the probability to generate the highest revenue, which is a function of the bid amount per click and the number of clicks. Google, by virtue of operating the Search Engine over a period of time, is in a position to suggest keywords which would result in the higher probability of clicks (visits to the website/webpage of the advertiser). The use of the keyword(s), as suggested, do