Last week a three judge bench of the Supreme Court passed an order restraining Shaadi.com and other rival matrimonial websites from infringing BharatMatrimony’s trade mark. This was in response to a SLP filed by Consim Info P. Ltd, that whenever BharatMatrimony’s name was keyed in on Google search, the names of the rival websites appeared on the right hand side in the Ad words column.
Earlier The Madras High Court had refused to pass an order restraining Google and other matrimonial websites sites from displaying their ads when BharatMatrimony was Google searched. A full report on the order published in last week’s Hindu is available here. The Supreme Court order is available here. Our earlier posts on this dispute are available here and here.
On a related note, in a similar fact scenario involving Interflora and Marks & Spencer (2011) which was referred to the Court of the European Union (ECJ) for a preliminary ruling from the High Court of Justice of England and Wales it was held that the proprietor of a trade mark is entitled to prevent a competitor from advertising – on the basis of a keyword which is identical with the trade mark and which has been selected in an internet referencing service by the competitor without the proprietor’s consent – goods or services identical with those for which that mark is registered, where that use is liable to have an adverse effect on one of the functions of the trade mark. The functions the court elaborated on were the trade mark’s advertising, investment and origin function. It was held that use adversely affects the trade mark’s investment function if it substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.
It was further held that the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark, which the competitor has, without the proprietor’s consent, selected in an internet referencing service, where the competitor thereby takes unfair advantage of the distinctive character or repute of the trade mark (free-riding) or where the advertising is detrimental to that distinctive character (dilution) or to that repute (tarnishment).
Advertising on the basis of such a keyword is detrimental to the distinctive character of a trade mark with a reputation (dilution) if, for example, it contributes to turning that trade mark into a generic term.
However the proprietor of a trade mark with a reputation is not entitled to prevent, inter alia, advertisements displayed by competitors on the basis of keywords corresponding to that trade mark, which put forward an alternative to the goods or services of the proprietor of that mark without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without, moreover, adversely affecting the functions of the trade mark with a reputation. The full ruling is available here.
The ruling in this case is however fact specific and open to wide interpretation, but portions of the ruling were in Interflora’s favour, maybe we could see something similar being passed in the coming days by the Supreme Court going by the initial prima facie ruling in favour of BharatMatrimony.