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by Simran*
Where online information influences consumer behaviour so acutely, legal regulations to protect against such invisible and indirect infringement must be developed.
In an ongoing California case, two corporate parties are suing over an interesting and new dimension of trade mark law. The claims involved the use of the counter-plaintiffs’ non-branded service industry keywords by the counter-defendants to redirect traffic, while the plaintiffs/counter-defendants originally sued for trade mark infringement of the common brand name, leading to market confusion and online customer loss for the original plaintiffs.
Interestingly though, this market confusion happened entirely online, largely on Google search engine result pages (SERPs), and involved, beyond legal aspects of trade mark and brand exclusivity, intricate nuances of online branding, search engine algorithms, and the practice of search engine optimisation (SEO).
This intersection of online reputation and marketing with trade mark law is a wholly new, but steadily rising, aspect that requires an understanding of how online algorithms work, SEO frameworks develop, and how trade mark principles may need to evolve in keeping with this unprecedented pace of digitisation. In India, the courts have dealt with this aspect in a limited fashion, in a string of cases with MakeMyTrip (an Indian trip advisor platform), with the State court’s judgment showcasing a lack of this intersectional understanding. This article seeks to place this nuance of trade mark law within the Indian context, explain the convergence of these two industries, and suggest how India could adopt a more progressive outlook in such cases.
The author begins by explaining how trade marks and “keywords” intersect in the digital world of SERPs in Part I, how digital trade marks function currently in the Indian and international system in Part II, and how the law could evolve to take into account this nuance of SERPs and SEO in Part III, concluding in Part IV.
In the present case, the trade mark dispute originated because the primary word in both organisational names and registered trade marks was common. However, the core dispute was market confusion, where the SERPs for the trade mark name on Google included both organisations, leading to an alleged loss of leads for the original plaintiffs.
Because the defendants’ page ranked higher than the plaintiffs’, they claimed they were unfairly using their trade mark in their SEO practices, where users see their organisation first and do not scroll further to the original plaintiff’s website. Hence, the issue was not a traditional trade mark claim where one brand’s trade mark is misrepresented by another, but that use of a similar trade mark name as keywords was causing market confusion and loss to one of the parties.
This happened due to Google SERPs ranking. Page rankings depend on an algorithmic process by which Google, and other search engines, assign positions to all pages in response to a search query, based on different factors including domain authority, backlinks that signal credibility, quality, and relevance of content, etc. The process of tailoring a web page to rank higher according to this algorithm is known as search engine optimisation or SEO.
Keywords are certain terms common to users’ queries that are central to content-oriented SEO campaigns. Strategic use of certain words in a webpage’s content gives it a better possibility to rank higher for search queries including or related to those keywords. For an organisation, its trade marked name would be a “brand keyword”, but other keywords that relate to its services and offers, i.e., non-branded keywords, would also be relevant in its SEO ranking.
It is also possible to use another company’s trade mark as a “keyword”, and hence rank when these keywords are searched. For instance, many companies have webpages showing how their offering compared to those of other competitors. This means that their webpage may also rank because it has relevant content for that keyword according to the Google algorithm. Hence, while the trade mark was not per se used or infringed on another product, its use may still lead to traffic redirection and economic gain for the party using it in their SEO strategy.
More relevant to this case, it is also possible to redirect traffic from another brand without using the trade mark as a keyword directly. This can be done through using the non-branded keywords relating to another brand’s services on a webpage to signal connection or authority, in an attempt to redirect traffic from another brand, especially one with a similar name, despite a lack of relevant services to that keyword. This can be done in non-overt ways, such as including these keywords in meta titles or meta data (content added to describe the webpage for Google crawlers to understand them contextually) that is not visible. This was the major counterclaim in the present case, where the original plaintiff allegedly caused market confusion by using keywords relevant to the defendant’s services on their own page. Given the similar names of the websites, this had the potential to cause misdirection of audience and traffic from the defendants to the plaintiffs.
These instances of using branded and non-branded keywords to cause market confusion present an indirect form of trade mark infringement that can cause undue harm or gains to companies in a digital era where online attention in the form of traffic and audience is a valuable asset. By misdirecting traffic from one website, conversion ratios of actual sales can be affected, especially given the short attention span of online audiences. Lack of audience can also lead to a drop in ranking and credibility, leading to further loss of visibility, directly affecting business for organisations that sell online, creating a vicious cycle of loss, invisibility, and lack of success.
The consideration of the use of keywords and other SEO strategies under trade mark regulations varies across jurisdictions. This section offers a comparative perspective across the US, European Union (EU), and Indian frameworks.
The Lanham Act
However, in more recent cases, including the Second Circuit Court of Appeals in Rescuecom Corp. v. Google Inc.
The EU regulates and aligns trade mark infringement across States through several threads, primarily the EU Trademark Regulation
The Court of Justice of the EU (CJEU) in Google France SARL v. Louis Vuitton Malletier SA9
Further, jurisprudence in both the United States and the EU has also increasingly recognised the growing digital literacy of internet users, who are presumed to understand the distinction between organic results and sponsored advertisements as well as the distinction between two competitors using similar keywords and hence ranking for the same queries. This has led to a reluctance to infer trade mark affiliation from keyword-triggered advertising alone.
Placing this debate in India, the Trade Marks Act, 1999 (the Act) lays down the rules that govern trade mark registration and penalties for infringement and passing off. Section 29 of the Act defines infringement as follows:
29. Infringement of registered trade marks.— … (someone) uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
The section covers infringement where, because of similarity in trade mark, goods or services, can cause confusion in the public or have an association with the registered trade mark. Section 29(8) also includes infringement by advertising if such advertising is detrimental to the character or reputation of the mark, or takes unfair advantage.
Apart from infringement for registered marks, the Act also provides a remedy for passing off of goods or services as the goods of another person or as services provided by another person. These safeguards attempt to protect the goodwill and reputation of brands while also limiting public confusion or unfair advantage from undue use or representation of another’s mark, goods, or services.
The jurisprudence on what can cause deception and confusion in the public is broad. In many cases, the courts have applied the common prudence test, i.e., how a reasonable person would understand or act in a similar situation. In Amritdhara Pharmacy v. Satya Deo Gupta
Hence, while there is no objective benchmark for what causes market confusion, a comprehensive understanding of the facts and the relevant market must be undertaken to see whether a common person with imperfect memory would confuse the two services/products.
In the digital world, trade mark infringement has taken many forms. The courts have adjudged cases involving squatting, deceptively similar domain names that might benefit from the original domain’s goodwill, and different services with similar names where one is an established and recognised brand.
However, in the California case’s counterclaim mentioned earlier, the use of trade marks was regarding using trade mark names in SEO practices. A similar thread has been litigated multiple times in India by the brand MakeMyTrip. They have initiated litigation against several defendants, including PickMyTrip in 2018, EaseMyTrip in 2019, and MyTripBazaar in 2020. Most of these cases revolved around the defendants using MakeMyTrip’s trade marked brand name as a keyword in Google strategies. In a partly conclusive judgment on the matter, the Delhi High Court in 2023 in a case filed by MakeMyTrip against Booking.com held that there was:
18. … nothing illegal in Google using the trade marks as keywords for display of advertisements if it did not result in any confusion or mislead internet users to believe that sponsored links or ads displayed were associated with the proprietors of the trade marks.
While initially granting an injunction for the plaintiff
In the online era, where consumers place a high level of trust in Google’s rankings and first page results
What the Delhi High Court decision missed in the MakeMyTrip case is that while debating the use of trade marks as keywords, the issue is not only of market deceptions in the context of confusion caused to consumers directly. Using branded and non-branded keywords of one service for another can cause misdirection to a non-entity, but a powerful one: search engine algorithms. These algorithms’ judgment on credibility, partly based on these keyword placements, decides which website gets more traffic. Once these initial eyeballs are lost, getting them back to the intended source on a space as distracting as the internet becomes extremely arduous. Hence, misdirected traffic means lost business and, subsequently, financial harm for the business whose trade-marked name is being used as a keyword by another to benefit from its credibility. The deception here is indirect but results in similar consequences for the trade mark holder.
The ranking of a business’s website today is directly proportional to its exposure and success. A higher ranking indicates that Google algorithms adjudge your website, content, and service as credible and authoritative. Loss in this arena is as harmful as, if not more than, loss in traditional markets. Improved ranking factors, such as faster website loading, authoritative backlinks, and reviews have been shown to improve
While this aspect of trade mark infringement through keywords could be covered under Section 29(8)
However, it must be argued that this “invisible” use of the trade mark in metadata, titles, ad words, etc. passes off one party’s services as another’s. In the California case discussed, the plaintiff used certain keywords and service descriptions that in fact related to the defendant’s to rank higher for their common trade marked names, which is passing off an identity built by the defendant as the plaintiff’s. Again, this deception causes algorithmic changes to the ranking, which subsequently influences the audience/traffic direction and consumer choice. Hence, the use of goodwill, unfair advantage, and market confusion, while indirect, continues to be central to such cases.
Where online information influences consumer behaviour so acutely, legal regulations to protect against such invisible and indirect infringement must be developed. Frameworks that protect trade marks being used as keywords unfairly must function at the intersection of unfair trade practices and trade mark protection, as follows:
1. Clarifying guidelines about trade mark use in advertising: While the notion of using trade marks in advertising to harm goodwill or gain unfair advantage is present in the Act, its application remains vague in the context of digital marketing. Clarifying the extent of use and harmonising it with digital marketing protections will allow clearer legislation and judgments on such matters.
2. Policies preventing the purchase of paid traffic redirection for others trade marks: Similar to how those who do not own a trade mark are restricted from physically attaching it to their products, digitally buying space, traffic, or clicks for trade marks used virtually should be restricted.
3. Invisible use of trade marks in bad faith to be restricted: While restricting the use of trade marks as keywords on websites such as brand comparison pages is not possible, using them invisibly, especially in technical website elements that directly impact ranking, must be scrutinised to ensure no bad faith use.
4. Understanding of digital damages: While loss of digital visibility does not prima facie indicate actual losses, it has a likelihood to translate into indirect losses in the form of lost traffic and user conversions, leading to financial loss. Such parameters relating to the effects of digital actions must be taken into account while understanding harm and damages in disputes.
The concept of traditional markets today has evolved significantly and is influenced by digital actions, public perception, and global brands. Intellectual property, which in a majority of cases exists almost exclusively in digital formats and is economised through the internet, is a domain of evolving conflict that often intersects with market reality, competition, digital services, and other intangibles.
With the economy moving online, economic regulations and laws need to adapt in parallel. To remain relevant and continue serving its purpose of protecting brands, trade mark law needs to take into account how brands are shaped, harmed, seen, and understood through online consumer behaviour. Google, SEO, generative engine optimisation (GEO), and other algorithms predominantly influence how online perceptions are cemented. Hence, nuances of actions that influence (or confuse) these algorithms and their impact must be covered under market regulation objects of intellectual property frameworks.
*Student at Rajiv Gandhi National Institute of Law. Author can be reached at: simransingh23235@rgnul.ac.in.
1. 2007 SCC OnLine Dis Crt US 1.
2. 2009 SCC OnLine US CA 2C 1.
3. Australian Gold, Inc. v. Hatfield, 436 F 3d 1228 (10th Cir. 2006).
4. Rosetta Stone Ltd. v. Google, Inc., 2010 SCC OnLine Dis Crt US 2.
5. Binder v. Disability Group Inc., 2011 SCC OnLine Dis Crt US 3.
6. EU Trademark Regulation (Regulation (EU) 2017/1001).
7. Trademark Directive (Directive (EU) 2015/2436).
8. Digital Services Act (Regulation (EU) 2022/2065).
9. [2011] Bus LR 1.
10. 2012 SCC OnLine EWCA 235.
11. Trade Marks Act, 1999, S. 29.
12. 1962 SCC OnLine SC 13.
13. (2001) 5 SCC 73 : (2001) 2 PTC 541.
14. Google LLC v. MakeMyTrip (India) (P) Ltd., (2023) 5 HCC (Del) 107, 111—112.
15. MakeMyTrip India (P) Ltd. v. Booking.Com BV, (2022) 3 HCC (Del) 434.
16. Bing Pan, Helene Hembrooke, Thorsten Joachims, Lori Lorigo, Geri Gay and Laura Granka, “In Google We Trust: Users’ Decisions on Rank, Position, and Relevance” (2007) 12(3) Journal of Computer-Mediated Communication.
17. “The Effectiveness of Search Engine Optimization (SEO) in Marketing: A Meta-Analysis Study” (2024) 7 Journal of Economic, Business and Accounting.
18. Bing Pan, Helene Hembrooke, Thorsten Joachims, Lori Lorigo, Geri Gay and Laura Granka, “In Google We Trust: Users’ Decisions on Rank, Position, and Relevance” (2007) 12(3) Journal of Computer-Mediated Communication.
19. MakeMyTrip India (P) Ltd. v. Booking.Com BV, (2022) 3 HCC (Del) 434.
20. Google LLC v. MakeMyTrip (India) (P) Ltd., (2023) 5 HCC (Del) 107, para 27.
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Trade Mark in the Algorithms: How Brand and Market Confusion Interact Online – SCC Online
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