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The Delhi HC in Hindware Ltd. v. Grohe India Pvt. Ltd. and Ors. and Hindware Ltd. v. Omkara Infoweb Pvt. Ltd. and Ors.1, has held that Google’s listing, suggesting and auctioning of Hindware’s coined and well-known trademark, ‘HINDWARE’ (‘Trademark’), as a keyword, amounts to infringing use in advertising, even though the keyword is not visible to the end user.
The plaintiff Hindware Limited had filed trademark infringement and passing off suits against Grohe India Private Limited and Cera Sanitaryware Limited and had alleged that, the defendants, through Google’s AdWords Programme, had purchased ‘HINDWARE’ and related combinations as keywords so that their sponsored links appeared when users searched for Hindware-related terms. Grohe, Cera and Omkara Infoweb settled with Hindware, leaving Google India and Google LLC as the contesting defendants. Google argued that an invisible, back-end keyword was not use in advertising, but the Delhi HC held that ‘in advertising’ covers keyword-triggered advertisements and that Google itself uses trademarks by suggesting, auctioning, and monetising those keywords.
On infringement, the Delhi HC treated ‘HINDWARE’ as a coined and distinctive mark and held that Google’s sale of it to competitors enabled free-riding and taking unfair advantage, contrary to honest commercial practices, attracting Section 29(8) of the Trade Marks Act, 1999. The Delhi HC also rejected Google’s ‘safe harbour’ defence as the Delhi HC held that Google provided services beyond mere access, used the keyword planner/advertisement architecture to target users searching for the mark, and did not exercise the required due diligence. The Delhi HC granted a permanent injunction against Google’s use of HINDWARE and related combinations as advertising keywords, awarded damages of INR 30 lakh (approx. USD 31,500), and directed actual costs.
The key takeaway of this judgment for brand owners is that coined marks may now have a stronger route to challenge keyword bidding in India.
Footnote
1. Hindware Ltd. v. Grohe India Pvt. Ltd. and Ors. and Hindware Ltd. v. Omkara Infoweb Pvt. Ltd. and Ors., CS (COMM) 591/2017, CS (COMM) 592/2017, I.A. 17791/2014, I.A. 13863/2017 and I.A. 12061/2018.
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