What happens if a trademark is not utilized in connection with a tangible good? E-commerce transactions emerged with the introduction of the internet. Various meta links with allusions to trademark infringement may exist; however, these meta links may not be utilized to specify the products that are infringing.

Such non-physical or invisible use through meta links, particularly on Google, is a common occurrence. Can a trademark owner take legal action against infringers who use a trademark invisibly or without physical contact?

To begin thinking about this issue, we must first comprehend what a meta tag or meta link is. In actuality, these are key phrases that describe a web page's content in an HTML document. Customers cannot see these Meta Links or Meta Tags. In actuality, these are employed by Google Ads programme to achieve the intended outcome.

In actuality, these Meta Tags, which are incorporated into HTML web pages, provide a summary of the information on that particular web page. With the use of these meta links or meta tags, the Google Ad programme offer comparable sponsored results when a customer searches for a specific word or trademark.

The question is whether the Trademarks Act 1999 permits such covert use of a trademark through Meta Tags or Meta Links, or if such usage also falls under the purview of passing off and trademark infringement.

Let's first examine what constitutes trademark use in order to comprehend this. The Trademarks Act of 1999 defines a trademark under section 2(1)(zb).

2 (1) (zb) "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours,

In relation to Chapter XII (other than section 107), a registered trade mark or mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark.

In relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be,

and some person having the right, either as proprietor or by way of permitted user, to use the mark, whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark. "

This definition of "trademark" assumes that a trademark is used in relation to goods or services for the purpose of indicating or implying a connection in the course of trade between the goods or services.

Thus, trademark use includes its application to goods or services. However, this definition does not specify whether non-physical or invisible use also constitutes trademark use.

One such case was heard by the Hon'ble High Court of Delhi. The Hon'ble High Court of Delhi's decision dated 30.10.2021 in Suit bearing CS(COMM) No. 1 of 2017 titled Drs Logistics (P) Ltd & Another Vs Google India Pvt Ltd & Anr dealt with the infringement of the Plaintiff's trademark through meta links. This case was filed by the plaintiff on the ground that its trademark AGARWAL should not be allowed to be used by Google through Meta Tags.

In fact, none of the parties own the Meta Tags. Meta-tags are keywords that are used in the website's HTML Google Ad Words Program codes but are not visible to visitors. The use of meta-tags in relation to sponsored search results in the desired result based on Google's algorithm.

The Hon'ble High Court of Delhi was pleased to note that Google's non-physical and invisible use of trademarks via Meta Links does constitute trademark use.

Another case was 260 (2019) DLT 690 titled as Amway India Enterprises Pvt. Ltd. and Ors. Vs. 1MG Technologies Pvt. Ltd. and Ors., in which the Hon'ble High Court of Delhi held that use of Plaintiff's Trademark AMWAY by third party e-commerce platforms for promoting their own sales was considered use of a mark in meta-tags or advertising.

According to Section 29 (8) of the Trademarks Act of 1999, any advertisement that amounts to taking an unfair advantage constitutes an infringement. In the AMWAY case, the Hon'ble High Court of Delhi invoked this provision and held that such use also amounts to trademark infringement.

Let us see what Section 29 (8) of the Trademarks Act says.
29(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising:

1. takes unfair advantage of and is contrary to honest practices in industrial or commercial matters, or
2. is detrimental to its distinctive character, or
3. is against the reputation of the trade mark

From a cursory reading of the aforementioned provision of the Trademark Act 1999, it is clear that any use of a mark that amounts to unfair advantage or is detrimental to the reputation of a Trademark may be considered trademark infringement.

The Hon'ble High Court of Delhi correctly invoked the provisions of Section 29 (8) of the Trademarks Act 1999 in the aforementioned Judgement reported as 260 (2019) DLT 690 titled Amway India Enterprises Pvt. Ltd. and Ors. Vs. 1MG Technologies Pvt. Ltd. and Ors. in order to render the use of Meta Link or Meta Tag as Trademark use.

The Hon'ble High Court of Judicature at Mumbai observed in its judgement reported as MIPR 2014 (3), 101 People Interactive (I) Pvt. Ltd. vs. Gaurav Jerry, that these meta-tags are special lines of code embedded in web pages that are used by search engines. The court noted that illegal meta-tags could be detrimental to the plaintiff's business.

The Hon'ble High Court of Delhi previously held in 2008 (38) PTC (416) (Del) Mattel Inc. & Ors. vs. Jayant Agarwalla & Ors. that use of these Meta Tags constituted infringement and passing off.

This legal proposition was reinforced in a recent judgement dated June 1, 2022, issued by the Hon'ble High Court of Delhi in a suit titled Havells India Ltd vs Shanghai Cet Electric Co. Ltd (CS (Comm) No. 438 of 2022.

In this case, the Plaintiff filed a contempt petition alleging that, despite the order of this Hon'ble Court, the Defendants No. 3 and 4 failed to remove all infringing links bearing the impugned trademark/logo HAVELLS.

In response, Defendants Nos. 2 and 3 claimed that the aforementioned links were not used for the listing of the contested products. As a result, it is not trademark use.

However, the plaintiff maintained that even covert use of a trademark constitutes trademark usage. The Defendants further asserted that the Court failed to get a relevant order from the court despite a specific request for the removal of meta tags.

The court stated that it is well-established law that if an order is vague or vaguely worded and there is a genuine disagreement among the parties as to its extent and reach, a party cannot be charged with contempt of court.

In view of the above, the court did not hold the defendant guilty of contempt of court. However, the Court noted that there was no such specific direction in the judgement dated 30.10.2021 passed by the Hon'ble High Court of Delhi in Suit bearing CS(COMM) No. 1 of 2017 titled Drs Logistics (P) Ltd & Another vs Google India Pvt Ltd & Anr, despite that the Defendants therein, namely Google, did not ask for any such specific clarification and removed all the violating meta links. In view of that, the Hon'ble High Court of Delhi directed the Defendant Nos. 3 and 4 to remove all the infringing meta tags.

Various Indian courts have repeatedly stated that the use of Meta Links in Meta Tags may not be visible to end users. It may not necessarily be used in relation to goods in a physical sense. However, it does constitute trademark infringement and passing off as it may be harmful or amount to an unfair advantage to the distinctive character of a right holder.

Written By: Ajay Amitabh Suman, IPR Advocate, The Hon'ble Delhi High Court,
Email: [email protected], 9990389539