Google LLC awarded Rs.10 Lakh as Damages in a Trademark Suit.

GOOGLE LLC ….. Plaintiff

Versus

GOOGLE ENTERPRISES PVT TLD & ORS ….. Defendants

Order dated:- 02/07/2023

PLAINTIFF STORY & HISTORY

1. Plaintiff a multinational technology company, is the registered proprietor of the mark “GOOGLE” and variations thereof, under several classes such as Classes 16, 42, 35, and 9.
2. The Plaintiff was adversely effected by the Defendants’ actions of misusing the aforementioned mark and falsely claiming an association with the Plaintiff to deceitfully mislead the public. As a result, the Plaintiff seeked a permanent injunction to restrain the Defendants.
3. WHAT WAS THE PRESENT CASE ABOUT:- The case of Plaintiff was that “GOOGLE” was adopted in 1997, both as a trademark and as corporate name. Plaintiff is now widely recognised for its internet-search engine viz. “www.google.com” [hereinafter “Plaintiff’s website”] which, along with its country specific domains (including “www.google.co.in”, the Indian domain) receives over a hundred million unique visitors every month and reaches more than 150 countries worldwide.
4. Further, the Trademark Registry had also included the mark “GOOGLE” in its list of well known trademarks in terms of Section 2(zg) of the Trade Marks Act 1999 [hereinafter “the Act”]. Hon’ble Delhi High Court, in CS(OS) 317/2011 restrained a party from using the mark “GOOGLE” even in relation to different goods i.e., iodised salt.
5. DEFENDANTS INTRO:- Defendant No. 1, was engaged in the business of trading, consultancy for allied activities etc. and was registered under the corporate name “Google Enterprises Private Limited” per the records of the Registrar of Companies. Defendant No. 1 also applied for registration of marks viz. GOOGLE ENTERPRISES Trademark and two logos in classes 35 and 42 bearing application Nos.2195139, 2193370, and 2193371 dated 20th August, 2011. On gaining knowledge of Defendant No. 1’s corporate name, and the filing of Trademark Registration Applications, Plaintiff sent a cease and desist letter dated 19th September, 2011. In response thereto, Defendant No. 1 agreed to withdraw its Trademark Registration Applications but refused to amend its corporate name.
6. modus operandi OF DEFENDANTS :- In October, 2011, Plaintiff learned that a collaboration was announced between Plaintiff’s supposed India entity and “Tata Communications” for a joint venture, i.e., Defendant No. 2-E-Kutir Technology & Extension Management (P) Ltd., a Knowledge Process Outsourcing (KPO) unit with the website “www.ekutirindia.com” , as also an “E-Card” service, providing a bouquet of technology services which would include Plaintiff’s services. Neither Plaintiff nor Plaintiff’s India entity entered into such a collaboration. Defendant misrepresented the public into believing that on depositing certain amounts of money in Defendant No. 1’s bank accounts, they would secure a job with the aforesaid KPO unit.
7. WEBSITES OF DEFENDANTS:- On further enquiries, Plaintiff learned that Defendant No. 1 also operated websites i.e., “www.getjobdesk.com” and “www.gkpo.co.in”. Defendant No. 1’s name and address as provided in the “WHOIS” records of the domain “www.gkpo.co.in”, was identical to Defendant No. 2’s address mentioned in the memo of parties. Plaintiff also discovered another website “www.googlekpo.com” which redirects to “www.ekutirindia.com” (for the said KPO unit), registered under the name of Mr. Chander Shekhar, the Defendant No. 3 , who was Director of Defendants No. 1 and 2.
8. In view of the above facts, it looked evident that Defendant No. 1 to 3 were acting in collusion with each other in furtherance of their unlawful activities. They have misrepresented their association with Plaintiff, by misusing Plaintiff’s “GOOGLE” trademark on their websites.
9. Interim Order was granted to the Plaintiff on 25th November ,2011.
10. NOTICE RECEIVED BY PLAINTIFF:- Thereafter, despite summons, Defendants continued their infringing activities. This came to light when Plaintiff was served with a legal notice dated 08th June 2012, by a number of parties residing in Bhopal, who believed that Defendant No. 1 was associated with the Plaintiff and said notice further revealed that Defendant No. 2 and 3 committed misappropriation of funds to the extent of Rs.11,89,500/-. Pursuant to this, Plaintiff initiated contempt proceedings against them which are currently pending. Plaintiff also filed an FIR bearing no. 643/12 on 10th August, 2012 against the Defendants, at Police Station, Sector-20, Noida.
11. HON’BLE COURT OBSERVATION:– A perusal of the documents and amended plaint indicates that Defendants have been dishonestly using Plaintiff’s mark. The impugned marks displayed on Defendants websites, extracted above, are entirely identical to Plaintiff’s mark “GOOGLE ” apart from the addition of the word “Enterprise” in one instance . The word “GOOGLE” was depicted in a font and styling which was deceptively similar to Plaintiff’s registered mark. Further, use of Plaintiff’s registered word mark “GOOGLE” in the corporate name of Defendant No. 1 coupled with Defendants’ use of Plaintiff’s marks on their printed material/ brochures to represent was solely intended to dupe innocent members of the public.
12. GUILTY OF INFRINGEMENT:- Hon’ble Court said, that It is clear that Defendants No. 1 to 3 have been acting in collusion, insofar as the impugned websites are concerned, and as such continue to operate in complete disregard to Plaintiff’s rights and the interim injunction operating against them. Defendants wants to deliberately misrepresented the trade and public that they are carrying out their business in partnership/ affiliation with Plaintiff, which was certainly not authorised or legitimate. Defendants, if not permanently restrained, are likely to cause further injury to the Plaintiff, given that their activities are severely harming the reputation and diluting the goodwill of Plaintiff’s marks. The Court thus holds that Defendants are guilty of infringement and passing off.
13. SUMMARY JUDGMENT:- Considering the foregoing, the Court was of the opinion that the present case was fit for passing a summary judgment under Order XIII-A of CPC as applicable to commercial disputes read with Rule 27 of Delhi High Court Intellectual Property Division Rules, 2022 [hereinafter “IPD Rules”].
14. RELIEF GIVEN TO THE PLAINTIFF:- The present suit was accordingly decreed in favour of the Plaintiff and against Defendants No. 1, 2, and 3. damages of INR 10,00,000/- are awarded in favour of Plaintiff, payable jointly and severally by Defendants No. 1, 2 and 3 to Plaintiff.
15. INFRINGED MATERIAL TO BE GIVEN TO PLAINTIFF:- Defendants are directed to hand over all printed matter, including stationery, brochures, bearing the mark/name “GOOGLE” to the authorized representative of the Plaintiff representative(s) for the purpose of destruction, in compliance with extant rules/ regulations.
16. INSTRUCTIONS TO DOT:- DoT was directed 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”.
17. Suit was decreed as the terms mentioned above.

Date:- 06.09.2023

Place:-Delhi

Read, Reviewed & Edited by

NEERAJ GOGIA, Advocate

9891800100

[email protected]