The Delhi High Court ruled that using keywords to promote a business using a competitor's trademark would be a violation of the trademark owner's rights. (Head Digital Works Private Limited v. Tictok Skill Games Pvt. Ltd.)
There would be no difference between using trademarks as a keyword on search engines as opposed to using them as a keyword on app store searches, according to Hon'ble Justice Pratibha M Singh.
The Court said that,
"So long as the key words are being used for promoting a business, using a competitor's trademark, the same would be violative of the rights of the trade mark owner."
Head Digital Digital Works Pvt. Ltd. had filed a lawsuit seeking a permanent injunction, and the court was hearing it. The plaintiff was in the business of designing and developing software for skill games, as well as deploying and maintaining an online gaming website and an internet-based mobile application. The plaintiff offered the aforementioned services via its website, 'www.a23.com', and its mobile application, 'A23.'
The plaintiff filed the suit to preserve its trademarks 'Ace2three' and 'A23,' which were registered in different classes. The plaintiff's trademarks have been registered since 2006 and 2020, respectively. The plaintiff's marks are for online gaming platforms that the plaintiff operates and controls, and were stated to be India's first ever online rummy platform.
The plaintiff was aggrieved by the defendant, Tictok Skill Games Private Limited, using the marks 'A23' and 'Ace2three' as 'keywords' on the Apple Application Store. It was the plaintiff's case that the defendant was using the plaintiff's mark as 'keywords' on the App Store in February of 2022, as the plaintiff discovered.
The plaintiff submitted that when a user searches on the App Store for 'A23' or 'Ace2three,' the first result in the advertisement section is the defendant's app 'WinZO Games.'
It was further argued that the defendant had already filed a case against the plaintiff for the plaintiff's use of the marks 'WinZO' and 'WinZO Games' as a meta tag or title tag. It was argued that the Court had granted an injunction prohibiting the plaintiff from using the mark or name 'WinZO'/'WinZO Games' or its variants on its website and web advertisements in the aforementioned case.
The Court observed that,
"Considering the history of litigation between the parties as also the order in MakeMyTrip (supra), the invisible use of the Plaintiff's mark as an 'adword' or 'keyword' on any online platforms by the Defendant would be violative of the Plaintiff's rights in the marks."
The Defendant stated right away that it was not utilising or intending to utilise the aforementioned marks as "adword" or "keyword." As a result, the Defendant was directed to follow the said stand and not use the marks 'A23' and 'Ace2three' or any other variants/formative marks thereof as an adword, keyword, meta tag, or domain name, with or without space, on any of the online search engines or application-based search platforms, including Apple Application Store, etc. The case will now be heard on August 22.
