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
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
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
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:
- takes unfair advantage of and is contrary to honest practices in
industrial or commercial matters, or
- is detrimental to its distinctive character, or
- 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
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
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
Email: [email protected]