‘What’s in a name?’ Today – literally everything!
Brands contribute immensely to a company’s assets. Companies spend heavily on building their brands and securing statutory protection to safeguard them from infringement and deterring third parties from making unauthorized use of their brands. In a recent case before the Delhi High Court, the tech giant Google LLC succeeded in obtaining an order of permanent injunction against the infringer Google Enterprises Pvt. Ltd., along with damages.
Google LLC, the Plaintiff conceived and adopted the mark ‘GOOGLE’ in the year 1997. Since then, Plaintiff has been recognized worldwide as an internet search engine. The known status of the mark has been recognized by the Indian Trademarks Registry by including the mark ‘GOOGLE’ in its list of well-known trademarks.
In August 2011, the Defendant, which was a local consultancy firm named Google Enterprises engaged in the business of trading, and consultancy for allied activities and registered under the corporate name ‘Google Enterprises Private Limited’ applied for registration of the marks, GOOGLE ENTERPRISES Figure 1 & 2 below in classes 35 and 42. When the Plaintiff became aware of such infringing applications, a cease and desist letter was served to Google Enterprises. Pursuant to which Google Enterprises agreed to withdraw its trade mark applications.
Later, in October 2011, upon receiving several customer queries it came to the Plaintiff’s knowledge that a concoted collaboration was announced between Plaintiff’s supposed India entity and ‘Tata Communications’ for a joint venture, being a Knowledge Process Outsourcing (KPO) called E-Kutir Technology & Extension Management (P) Ltd. The said collaboration announcement was widely publicised using brochures and news articles which according to the Plaintiff were false, since neither the Plaintiff nor Plaintiff’s India entity were part of any such collaboration. The Defendants had clearly colluded with each other. Google Enterprises had malafidely made the general public believe that on depositing a certain amount of money in the their bank accounts, customers could secure a job with their KPO unit.
The Plaintiff filed a suit against Google Enterprises seeking permanent injunction on account of misusing the well-known trademark, Google, causing confusion amongst consumers, and potentially damaging their reputation and goodwill. It was alleged that the local firm was using the trademark in a way that could cause confusion amongst the consumers. Specifically, Google LLC claimed that Google Enterprises was using their registered trademark “GOOGLE” in its domain name, social media handles, and other online platforms.
The Delhi High Court while ruling the case in favor of the Plaintiff observed inter alia the following points:
- The Defendants have used the Plaintiff’s registered trademark without authorization/consent since no evidence has been produced by the Defendants to refute Plaintiff’s contentions.
- The modus operandi of Defendants was to dupe members of the public into believing that they would get a job after depositing money in their bank account and so was indicated by their fictitious KPO unit’s brochure.
- The court agreed to the claims of the Plaintiff and acknowledged the mark “GOOGLE” as a well-known mark and thus, entitled to statutory protection and grant of injunction for infringement.
The court decreed in favor of Google LLC and awarded damages of INR 10,00,000. The Court also directed the Defendants to hand over all printed matter, including stationery, brochures, bearing the mark ‘GOOGLE’ to the authorized representative of the Plaintiff for the purpose of destruction, in compliance with extant rules/regulations. The court also directed the DoT to issue directions to all ISPs and telecom service providers directing them to block access to the website hosted on domain name www.googlekpo.com.
No brand is safe from infringement. Trademarks are the most valuable asset that must be protected in order to maintain brand reputation and value.
The Delhi High Court’s decision to grant Google LLC damages in the trademark infringement action brought against Google Enterprises serves as a reminder of the value of trademark protection. It is imperative that businesses take all precautions to safeguard their IP and take steps to stop unauthorized use of their trademarks. It also highlights the importance of due diligence when dealing with any third parties claiming association with reputable brands.
Written by Shabnam Khan, Associate Partner, RNA Technology and IP Attorneys