MakeMyTrip India Pvt. Ltd. v. Booking.com B.V.

Author: Yash Kishor Mohite, Mumbai University

Brief Overview: The Delhi High Court's decision in 2022 in the case of MakeMyTrip India Pvt. Ltd. v. Booking.com B.V. is a detailed crossover of intellectual property rights and internet marketing. The petitioner, MakeMyTrip (MMT), had contended that Booking.com's use of its trademark as a keyword in Google Ads constituted infringement. The ruling represents a milestone in Indian jurisprudence in interpreting the scope and boundaries of trademark usage in search engine advertising.

Legal Issues: The main legal issues raised were:

Whether the act of using a registered trademark as a keyword in online advertising is trademark infringement under the Trademarks Act, 1999.

Whether the act would amount to passing off or unfair competition in the online marketing context.

Parties Involved:

Plaintiff: MakeMyTrip India Pvt. Ltd. (MMT), a prominent Indian travel services aggregator.

Defendant: Booking.com B.V., a global player in the same sector.

Material Facts: Booking.com had reportedly offered the term "MakeMyTrip" under Google Ads, and as a result, its ad came above the natural search result when users typed MMT. MMT argued that this had fooled consumers and profited from its brand equity without permission.

Procedural History: MMT had filed a suit seeking an interim injunction against Booking.com to restrain it from using MMT's registered trademark as a keyword in Google Ads. The case had come before a Single Judge Bench of the Delhi High Court.

Issue Statements:

Whether the defendant's use of the plaintiff's registered trademark as a keyword in Google Ads amounts to use in the course of trade and thus infringes the plaintiff's exclusive rights.

Whether such use gives rise to a likelihood of confusion or deception among consumers, leading to passing off

Significance:

These concerns are instrumental as they examine the flexibility of current trademark regimes in the Internet space. Given the growing dependence on search engine optimization and advert spending, determining where the dividing line between good competition and infringement lies is significant.

Holding: The Delhi High Court denied an interim injunction to MakeMyTrip. The Court ruled that using a trademark as a keyword, on its own, without any misleading content in the advertisement, does not constitute infringement or passing off.

Rationale: The Court emphasized that internet users are generally aware of the difference between sponsored results and organic search results. Because Booking.com's advertisement did not fake MMT and did not contain deceptive information, the mere use of the keyword was not enough to establish consumer confusion.

Majority Opinion: The single judge bench observed that bidding for a trademark as a keyword alone does not come within the meaning of 'use' as defined under Section 2(2)(b) of the Trade Marks Act, 1999, unless the use is visible or misleading. Since Booking.com's advertisements were distinctly marked and identifiable, there was no deceptive similarity or misuse.

Statutes and Precedents:

Trade Marks Act, 1999 – Section 29 (Infringement of registered trademarks)

Consim Info Pvt. Ltd. v. Google India Pvt. Ltd., 2013 SCC OnLine Mad 1179

Interflora Inc. v. Marks & Spencer Plc, [2014] EWCA Civ 1403

Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009)

The court took cues from international jurisprudence to take a consumer-oriented and technology-aware approach

Legal Precedent: This judgment establishes a significant precedent in India regarding the admissibility of keyword advertising with competitors' trademarks. It does help clarify the fine line between comparative advertising and infringement.

Social and Political Impact: This judgment encourages a fair playing field in online marketing with the balancing of brand rights. This judgment also creates apprehension regarding potential brand identity dilution and higher expenses to original brand owners to protect their space online.

Critical Analysis: The Court's decision displays a pragmatic and commercially savvy grasp of the digital marketplace. It avoids the abuse of IP law to stifle competition and highlights transparency and consumer information.

Strengths and Weaknesses:

Strengths: Balances IP rights with reasonable competition; adopts international standards

Weaknesses: Could create a low bar for what is considered confusion, which would encourage stealth marketing behavior.

Alternative Outcomes: If the court had issued the injunction, it might have opened a floodgate of litigation against online advertisers and discouraged competitive keyword bidding. However, a clearer regulatory framework established by the legislature or the Competition Commission of India would more effectively define acceptable digital marketing practices.

Summary: The Delhi High Court's denial to enjoin Booking.com from bidding on MMT's trademark in Google Ads highlights the intricacies of applying conventional IP laws in a digital environment. The ruling strikes a balance between brand protection and fair business competition in the changing e-commerce environment.