Protecting trademarks in keyword advertising in India - A guide for sports organisations

The Honourable Delhi High Court (Court) in India, in the recent case of Head Digital Works Private Limited v. TicTok Skill Games Private Limited (Case)[1], was tasked with identifying whether the use of trademarks as keywords on online platforms would be considered violative of trademark rights. Keywords include words, expressions, symbols, or numbers used as search strings in an online search engine by users. For example, if a company sells furniture, the company would typically attempt to make sure that keywords like "bed", "couch", "table" and the like direct the seeker to the website of that company. There are keyword advertising programmes run by the major online search engines that enable advertisers to procure certain words/phrases that would direct the users towards their products or services.

In its order passed in May 2022, it was held that the use of a competitor’s trademark as keywords for the promotion of a business would be considered infringement of the rights of the trademark owner. Relying on previous decisions of the Court as well as the Supreme Court of India, it was further held that the invisible use of a competitor’s trademark as an ‘AdWord’ or keyword on online platforms would be a violation of the Trade Marks Act, 1999.

This article provides an analysis of the Case and the decision of the Court. Readers will learn about the legal framework on trademark infringement in respect of the use of trademarks as keywords, specifically in the context of online gaming platforms. In providing the background and evolution of the Indian position through case laws, the article compares the Indian position with that of other jurisdictions. In addition, it examines the implications of the order of the Court in relation to online gaming in India.

Article Outline

• Facts and Analysis of the Case
• Legal and Regulatory Framework
  • Trade Marks Act, 1999
  • Other Regulations
• Application of the law to the current facts of the case
• Decision
• How Have Indian Courts Previously Dealt With Such Infringement
  • Commercial Speech
  • Use of Trademarks as Meta-Tags
  • Use of Trademarks as Keywords
  • Liability of Search Engines
• Comparative Analysis
  • USA
  • European Union
  • Australia
• Impact of the Delhi HC Order
• Conclusion