The Supreme Court of India New Delhi, India The 2015 Amity Moot Court Competition Civil Appeal No.__2015 (Section 135 of the Trademarks Act, 1999 read with Section 38 of the Specific Relief Act, 1963) Arnob Murgwala Appellant Arab Murgawala and Zoozle GmBH Respondent Civil Appeal No.__2015 (Section 53T of the Competition Act, 2002) Arnob Murgwala Appellant Zoozle GMBH Respondent Memorial for the appellant, 2015.‘ABLE OF CONTENT Table of Contents. Index of Authorities. Statement of Jurisdi Statement of Facts... Issues Involved, 12 13 16 Summary of Arguments... Arguments Advanced. I The use of the impugned keywords by the respondent amounts to the tort of passing off 16 A. The use of the AdVerba advertising scheme by Amab is intended to deceive consumers. 16 B, The defendant through this act is attempting to obtain economic benefit through the reputation of the pk alll C. By using the trademark of Amob through AdVerba advertising scheme, Amab has damaged the goodwill ofthe plaintiff’s busines 7 D. There is sufficient trade connection between the products of the plaintiff and the defendant. 8 I, The use of the impugned keywords by the respondent amounts to trademark infringement. 20 A. Amob’s trademark is not invalid. a) The registered trade mark of the appellant is protected under the proviso contained in section 9 of the Trade Marks Act, 1999, b) The registers trade mark of the appellant is valid under sections 31 and 32 of the Trade Marks Act, 1999. 22 2 ¢) The appellant is entitled to the exclusive use of the mark ‘Murgwala’ B. — Armb used this trademark in the course of trade...ocsnsnsnsnrnnnnetineneenesnseneee dA a) Theconditions for use are the same as the conditions for use in the course of trade 4 b) Assuming that the fact that any use was in the course of trade has to be proven separately... 25 C. Arnab cannot use the defence of having used only part of the trademark. ....0.26 a) — Therespondent is using the entire trademark, not part of it. b) Even if the respondent is held to be using only a part of the trademark, it violation. 2|PageD. — Zoozle cannot use its defence of being merely a search engine and performing the fictions of a ditectOry..o.csustssuntnenntnenenasnenineasen 29 E, This infringement is likely to cause confusion or cause the consumer to believe that there is an association with the registered trademark 32 LIL. Zoozle has entered into anti competitive agreements with the users of the AdVerba scheme... 35 A. The agreement between Zoozle and users of the AdVerba scheme has an appreciable adverse effect on competition... 35 a) Driving Existing Competitors out of the market... 36 b) Creation of barriers to new entrants in the market... 3 c) Ameliorating factors... B. The agreementresults in unfair competition. IV, Zoozle abused its dominant position in the markct.... A. Therelevant market. 39 B. abuse of dominant position by denying competitors market access to the informant 40 a) — Themarket in the particular case of the informant is unique.....-.0-» 40 b) Denial of market ace: 40 C.— Abuse of dominant position to enter into another relevant market. 41 Prayer for Relief... 43 3|PageINDEX OF AUTHORITIES Cases 1, 1-800 Contacts Ine. v. Lens.com Inc. 722 F 3d 1229 (10" Cir. 2013) Alaknanda Cement Private Limited and another v Ultratech Cement Limited, (2011) MUM 1130 Indlaw 3. Allen (WH) & Co y. Brown Watson Ltd [1965] RPC 191 4. Anand Brothers Private Limited Through M.D. v Union of India and others, (2014) SC 588 Indlaw 5. Aravind Laboratories v, Modicare, (2011) 4 LW 55 6. Arshiyat Rail Infrastructure and another v. Ministry of Railways and Another, (2012) Indlaw 25 British Broadcasting Co v, Talbot Motor Co Ltd [1981] FSR 228 8. Brookfield Communications, Inc. v. West Coast Entertainment Corp. 174 F.3d 1036- 9" Cir.1999 9, C-1/36.915 Deutsche Post AG ~ Interception of cross-border mail, 2002 4 CM.L.R. 598 10. C-236/08 Google Inc. Louis Vuitton, 2010 E.C.R. 1-2467 11, C-237/08 Google France SARL v. Viaticum SA and Another, 2010 E.C.R. 1-2467 238/08 Google France SARL v. Tiget SARL and Others, 2010 E.C.R. 1-2467 13. Case C-62/86, AKZO Chemie BY v Commission, 1993 5 C.M.LR. 215 14. COMP /M4731 Google/Double Click (2008) 15, COMP/M5727 Microsofv/Yahoo! (2010) 16. Consim Info Pvt Ltd v Google India Pvt Ltd, (2010) 6 CTC 813 17. Consim Info Pvt Ltd. v. Google India Pvt Ltd., (2012) Indlaw 2621 18, Corn Products Refining Co v. Shangrila Food Products Ltd, A.ILR. 1960 $C 142 19. Creative Handicrafis v. Sedana Electric Co., (1988) PTC 348 20. Dashrath Rupsingh Rathod v State of | wrashtra and another, (2014) SC 494 Indlaw_ 21. Delhi Public School Society v D P S Trust, (2012) DEL 3370 Indlaw 22. District Mining Officer and Others v Tata Iron and Steel Company and Another, (2001) SC 20066 Indi: 23. Electrolux Coroporation v. Val-Worth Inc. 190 N.Y $.2d 977, (1959) 24. Girmar Food and Beverages v. Godfrey Phillips India Ltd, (2001) 90 DLT 839 25. Google Ine. v. Australian Competition and Consumer Commission (2013) 249 CLR 435 26. Harrods Ltd v Harrodian School Ltd, [1996] RPC 697 27. Heineken Asia Pacific Pte. Ltd v Surjeet Lal, MANU/DE/2823/2014 28. Honda Motors Co. Ltd v Charanjit Singh, (2003) 26 PTC 1 29. Honda Motors Co. Ltd v Charanjit Singh, (2003) 26 PTC 1 30. Horlicks Limited and Others v Uttam Sadhukan , (2002) DEL 561 Indlaw 4|Page31. Hyder Consulting (UK) Limited y Governor, State of Orissa Through Chief Engineer, (2014) SC 799 Indlaw 32. Infederation Ltd. v. Google Inc., EWHC (Ch) 295, (2013) 33. Inland Revenue Commissioners v. Muller & Co.”s Margarine Ltd, (1901) A.C. 217 34. Interflora Inc. and Another v. Marks and Spencer Ple, EWCA Civ. 1403 (2014) 35. International News Service v. Associated Press, 248 US 215 (1918) 36. Jews For Jesus v Brodsky, 46 U.S.P.Q.2d 1652 37. Kamaljit Singh v Sarabjit Singh, (2014) SC $77 Indlaw 38, Kapoor Glass Private Limited v. Schott Glass India Private Limited, (2013) Indlaw 2 39, Labyrinth Media v Brave World [1995] EMLR 38 40. Metropolitan Opera Association v. Wagner-Nichols Recorder Corpor 101 N.YS.2d 488 41. Metropolitan Opera Association v. Wagner-Nichols Recorder Corporation 159 N.Y.S.2d 488 42. Micheal Holterhoff v. Ulrich Freiesleben (2002) FS.R. 23 43. Multiplex Association of India v. United Producers‘Distributors Forum and Others, (2011) Indlaw 18 44, Murlidhar Shivram Patekar and another v State of Maharashtra, (2014) SC 649 Indlaw 45. Neeraj Malhotra, Advocate v. Deutsche Post Bank Home Finance Limited (Deutsche Bank) and Others, (2010) Indlaw 28 46. Office Cleaning Services Limited v. Westminister Window and General Cleaners Limited, [1946] 63 R.P.C. 39 47. Philip Morris Products S.A. & Anr.v Sameer & Others, (2014) DEL 817 Indlaw 48. Planned Parenthood Federation of America Inc. v. Bucci, 42 U.S.P.Q.2d 1930 49. Pte India Ltd, v Central Electricity Regulatory Commission, Thr. Its Secretary, (2009) ‘SC 304 Indlaw 50, Reckitt & Coleman v Borden, [1990] | All ER 873 51, Reddaway v, Banhan, (1896) A.C. 199 52. Reddy Pharmaceuticals Ltd v. Dr. Reddy’s Laboratories Ltd, (2007) 35 PTC 868 3. Ronson Art Metal Works, Inc v. Gibson Lighter Manufacturing Co., 159 N.YS.24 606, (1957) 54.Roy Export Company Establishment of Vaduz, Liechtenstein, et al v. Columbia Broadcasting System Inc. 672 F.2d 1095 (1982) 55. South Asia LPG Company Pvt. Ltd. v. Competition Commission of Ir Indlaw 2530 Spencer & Co. Ltd v. Spencer Soft Drinks Co., (1988) PTC 147 Stock Exchange, Bombay v V.S. Kandalgaonkar and others, (2014) SC 669 Indlaw TV. Venugopal v. Ushodaya Enterprises Ltd, (2011) 4 SCC 85 Three-N-Products Private Limited v Emami Limited, (2008) CAL 210 Indlaw . United Iron & Steel Works v. Gout, of India, A.1.R, 1967 P&H 64 Wander Ltd v. Antox India Pvt, Ltd, (1990) Supp (1) SCC 727 . Warner Bros. Entertainment Inc. and Another. v. Harinder Kohli and Others, (2008) Indlaw 1092 (2014) 5|Page63. Wyeth Holdings Corporation v, Burnet Pharmaceuticals, (2008) 36 PTC 478 64, Yasha Overseas and Others v Commissioner of Sales Tax and Others, (2008) SC 1243 Indlaw 65. Yashoda Super Speciality Hospitals, a partnership firm, represented by its partner G. Devender Rao v Yashoda Medicare and Research Centre Private Limited, a company registered under Companies Act, 1956, having its registered office at New Delhi, represented by Its Director and another, (2010) AP 534 Indlaw Statutes 1. The Competition Act, No. 12 of 2003 The Consumer Protection Act, No. 68 The Trade Marks Act, No. 47 of 1999 4. The Indian Penal Code, 1860 The Information Technology (Amendment) Act, 2008 Books 1. RICHARD WHISH & DAVID BAILEY, COMPETITION LAW (7"* ed. 2012) ANANTH PADMANABHAN , INTELLECTUAL PROPERTY RIGHTS: INFRINGEMENT AND REMEDIES (1st ed. 2006) Black's Law Dictionary 352 (6th ed. 1990), 4. J. McCARTHY, TRADEMARKS AND UNFAIR COMPETITION 19-23, (Clark Boardman Callaghan) (1988) (4"" Edn. 1988). MISCELLANEOUS: 5. The Information Technology (Intermediaries guidelines) Rules, 2011, Gazette of India, section 3(2)(b) (Apr 11, 2011). 6|PageSTATEMENT OF JURISDICTION I. Civil Appeal No.__2015, The Appellant has approached this Honourable Court under Section 135 of the Trademarks Act, 1999 read with Section 38 of the Specific Relief Act, 1963. Il. Civil Appeal No.__/2015 The Appellant has approached this Honourable Court under Section 53T of the Competition Act, 2002.STATEMENT OF FACTS BackGrouny ZoozLe GMBH Zoorle GmBH is a multinational company headquartered in Berlin that operates an internet search engine “http://www.zoozle.com”, The website enjoys great international presence and is used by more than 80% of Indian nternet users on a daily basis. The website works by automatically generating an organic search list on the basis of queries entered into the search toolbox by users. Zoozle claims to have no human interface in the generation of these search results, and that they are arranged in order of relevance based on an algorithm. . THE RESTAURANTS Murgwala’s Best Butter Chicken (MBBC) was established by Mr. Arvind Kejru Murgwala in Delhi in 1959. In 1988, Mr. Arvind Kejru Murgwala passed away and left all his property to his sons Mr. Amob Murgwala and Mr. Arnab Murgwala. The amicable division of property saw Mr. Amob Murgwala taking control of the restaurant business. Its trademark was registered in 1993, although it had been in use since 1959. Mr. Amob also created a website for MBBC “www.bestbutterchicken.com” which allowed prospective consumers to place online orders for home delivery, He engaged in extensive offline advertising that was recorded in the company’s financial statements for the year 2012-2013 as Rs. 1,00,00,000/-. Mr. Amab Murgwala founded the restaurant “Arnab’s Butter Chicken” (ABC) in the year 1990 in Kolkata, creating the website “wwwarnabbuterchicken.com”. It (00 allows customers to place orders for home delivery. Mr. Amab opened an outlet of ABC in Delhi in 2007. He registered the trademark used by ABC in the year 2000, Tue DisPute ADVERBA SCHEME Zoozle developed a scheme of online advertising in the year 2011 for businesses or persons, called “AdVerba”. This scheme involved the auction of certain keywords that when entered as search queries by intemet users on the website yielded hyperlinks and a description 8|Pagethereof; which were chosen by the highest bidder. These hyperlinks were triggered in addition to the organi me, search list, and are separated from the same by being placed above the separated by being highlighted in a light yellow colour having the words “Sponsored Ads” being written alongside them. One of the terms of this agreement was that trademarks cannot be used as keywords and that any such use would, pursuant to an investigation; result in suspension of that keyword ALLEGED TRADEMARK INFRINGEMENT Mr. Arnab entered into an agreement with Zoozle under its AdVerba scheme in 2012, He bought certain keywords for use within Delhi and Kolkata, among which were “Arnab’ “Best”, “Butter”, “Chicken” and frequently misspelt versions of the same. The suggested post linked to Mr, Arnab’s website and the description added along with the link was “Better than the Best Butter Chicken”. Aggrieved, Mr. Arnob wrote to the head office of Zoozle GmBH at Berlin in July, 2012 and a trademarks, Zoozle responded by saying that they believed that the keywords belonging to istered ked them to remove certain keywords that were his r Arnob were simply part of the commons of the English language and hence could not be regarded as his trademarks. JUDICIAL TREATMENT PETITION TO THE HIGH COURT tion in the Delhi High Court seeking permanent inj Mr, Arnob subsequently filed a sui restraining Zoozle GmBH from u: ing the words contained in his trademark as keywords, and claiming infringement of his trademark and action for passing off. He also claimed that the mark “Murgwala” and the goodwill associated with it belonged exclusively to him, with the actions of Mr. Arnab amounted to an infringement of his trademark. In response, Mr. Arnab claimed that the impugned keywords ought not to have been registered in the first place as they were merely descriptive and counter sued for revocation of the mark. The Delhi High Court clubbed the two cases filed together and in January 2014, found in favour of Mr. Arnab through a common judgement. Mr. Arnob’s appeal before the Division Bench of the High Court was dismissed at the admission stage itself. COMPETITION COMMISSION 9|PageIn November 2012, Mr. Arnab also filed an information in the Competition Commission of India, alleging that the AdVerba advertisement scheme was an abuse of dominant position and that it entered into anti competitive agreements with the users of the programme, also denying market access and restricting provision of services; resulting in the violation of intellectual property rights, as had taken place in the case of the informant. In January 2012, the CCI found that there was no contravention of the Competition Act and directed the matter to be closed under Section 26(6) of the Act. In an appeal by Mr. Amnob before the Competition Appellate Tribunal (COMPAT), the decision of the CCI was affirmed. Mr. Arnob appealed the decision of the High Court before the Supreme Court of India, and preferred to file a Statutory Appeal against the order of the COMPAT as well. The two appeals were clubbed together and have been admitted. They have been listed for final hearing. Hence the current appeal. W|PageIssues INVOLVED Whether the use of the impugned keywords by Amab under the AdVerba advertising scheme amount to the tort of passing off? Whether Arnab and Zoozle through the use of the AdVerba scheme have infringed the registered trade mark of the appellant? 1. Whether the agreement entered into under the AdVerba scheme has an appreciable adverse effect on compet WV. Whether Zoozle abused its dominant position in the relevant mark: MPaSUMMARY OF ARGUMENTS 1. THE USE OF THE IMPUGNED KEYWORDS BY THE RESPONDENT AMOUNTS TO THE TORT OF PASSING OFF For the tort of passing off four things need (© be established, (i) intention to deceive, (ii) attempt to obtain undue economic benefit and a misrepresentation which (iii) damages the goodwill of the plaintiff. The purchase of the exact same words of the appellant's registered trade mark as keywonds by the respondent indicate his intention to deceive consumers regarding the origin of services. There also exists a high probability of confusion since both of them are brothers. Through the use of the Ad¥erba advertising scheme the respondent has tried to earn undue economic benefit by misrepresenting his services to be that of the appellant and exploiting the goodwill of MBBC, which over a period of 56 years has become extremely popular in Delhi, opened twenty five outlets, as well as undertaken extensive promotional efforts within the city. Both parties also share sufficient trade connection, since they provide similar services: which increases the likelihood of confusion. I, THE USE OF THE IMPUGNED KEYWORDS BY THE RESPONDENT AMOUNTS TO. TRADEMARK INFRINGEMENT A. Amob’s trademark is not in According to section 9, which lays down the grounds for refusal of registration of trademarks, a trade mark cannot be refused registration if it has acquired a distinctive character as a result of the use made of it. Mr. Arvind Kejru Murgwala established the fast food restaurant called ‘Murgwala’s Best Butter Chicken’ in Delhi in the year 1959 at Connaught place. It soon became a very popular restaurant amongst the people of Delhi. Today it is not just a single restaurant, but a chain with over twenty five outlets within Delhi. Though the expression “Best Butter Chicken” can be construed as being generic and descriptive, the trade mark is not limited to it, The surname of the appellant when used in the trade mark acts ay the distinguishing element which helps people to identify it solely with the business of the appellant and not think of it as a generic term covering all restaurants which provide similar services. The registered trade mark of the appellant is an arbitrary combination of seemingly generic words, which has become distinctive. Also the length and manner of use, nature and extent of advertising and promotion, efforts made to promote conscious connection in the public's mind between the trademark and the business helps in establishing the distinctive 12|Pagecharacter. The advertisement expenditure incurred by the appellant shows that this has also been fulfilled, B. _Amab used this trademark in the course of trade There is no difference for the purposes of the Act between using @ mark and using a mark in the course of trade as per section 29. Section 29(6) speaks of the fact that a person uses a trademark in the course of trade when he uses the registered trade mark on business papers or in advertising. It is the appellant’s submission that this is the case. Even if we assume that course of trade needs to be defined separately, we can use the definition given by Black’s Law Dictionary ~ ‘what is customarily or ordinarily done in the management of wade or business’. Moreover, cases have held that use of a trademark as a keyword is use in course of trade. C_Amab cannotuse the defence of having used only part of the trademark The respondent is using the entire trademark, not part of it. Arnob’s trademark is being infringed. ‘Murgwala’s Best Butter Chicken’ is the entire trademark of the appellant therefore, when a user enters that into Zoozle and gets Arnab’s website as a result, it isn’t a part of Amab’s trademark being infringed, but his entire trademark. The purchase of these four keywords is without a doubt causing an infringement of Arnob’s complete trademark, if the respondent is held to be using only a part of the trademark, it is still a violation, This is because the separate parts of the keyword have each attained distinctive character. ; - Zoozle is not in this case performing merely the functions of a directory i.e. an entity with the legal status of the intermediary. While intermediaries are exempt from liability, Zoozle is voiding this exemption under multiple subsections of the IT Amendment Act The mark of Amab which because of its similarity to the registered trade mark of Arnob and the identity or similarity of the goods or services covered by such registered trade mark is likely to cause confusion on the part of the public, or which is likely to have an association with the registered wade mark.IIL. ZOOZLE HAS ENTERED INTO ANTI COMPETITIVE AGREEMENTS WITH THE USERS OF THE ADVERBA SCHEME Zoozle has entered into anti competitive agreements with users of its AdVerba scheme as they have an appreciable adverse effect on competition; and they result in unfair competition in the market. Firstly. agreements entered under this scheme have the effect of driving existing competitors out of the market and crate barriers to new entrants in the same. As there is no benefit accruing to consumers and there is no improvement in the provision of services or promotion of technical and scientific development as a result of agreements under the scheme, cannot avail the defence of ameliorating factors under Section 193) of the Competition Act and is hence regarded to have an appreciable adverse effect on competition, Hence, it is submitted that they are in violation of Section 3(4) of the same. Secondly, the agreement results in unfair competition the action of exploiting the goodwill of a competitor to further ones ends amounts to commercial immorality and is regarded as an unfair free riding on the fame of well known works. Consequently, agreements entered into under the scheme have deleterious effects on competition and are hence in contravention of the Competition Act. IV. ZOOZLE ABUSED ITS DOMINANT POSITION IN THE MARKET It is submitted that Zoozle is dominant in the online search engine market and abuses this position by attempting to enter another relevant market by leveraging its dominance, and by denying access to the market to competitors. Firstly, Zoozle denied the informant market access as it is in a unique position to provide access to the online market of home delivery of food. The AdVarba scheme exploits this position to ensure that it is only the website of the highest bidder that is most readily accessible by being placed at the top of the search result list, effectively disallowing competitors in the same market from being visible as an option to the customers. Secondly, Zoozle abuses this dominant position to enter another market, which is that of online search advertising. Having entered into this market recently in 2011, Zoozle is not a dominant player but is exploiting its position of dominance in the closely related intemet search engine market to att: ing the same.ARGUMENTS ADVANCED |. THE USE OF THE IMPUGNED KEYWORDS BY THE RESPONDENT AMOUNTS TO THE TORT OF PASSING OFF Passing off is a common law tort, remedy for which is av ble to both registered as well as unregistered trademarks,’ aimed at protecting the business reputation or goodwill of the business.’ As held by the Supreme Court of India in the case of Wander Ltd v. Antox India Pvt. Ltd® « passing off action is against the conduct of the defendant which [A] lends to or is intended or calculated to lead to deception. The defendant through deception [B] attempts to obtain an economic benefit of the reputation which the plaintiff has established for himself in a particular trade or business. It involves a misrepresentation made by a tader to his prospective customers calculated to injure, as a reasonably foresccable consequence, the business or goodwill of another [C] which actually or probably causes also [D] suff damage to the business or goodwill of the other trader. There nt trade connection between the plaintiff's and defendant's business, enough to cause a likelihood of confusion among consumers. A. THE USE OF THE ADVERBA ADVERTISING SCHEME BY ARNAB IS INTENDED TO DECEIVE CONSUMERS The keywords bought by the defendant through Zoozle’s advertising scheme to advertise his own business was an intentional and deliberate effort on his part to deceive prospective consumers regarding the origin of services. The defendant was a new entrant into the market in Delhi for providing restaurant and food delivery services, and had to face a lot of competition. His purchase of the keywords which are exactly identical to the registered trademark of the plaintiff, and which will therefore cause his website to be advertised when one is in fact searching for MBBC, a restaurant very well known in the city, shows his inte ion to deceive or cause confusion on the part of the public regarding the origin of services. Any consumer when searching for MBBC would first see the advertisement of LANANTH PADMANABHAN , INTELLECTUAL PROPERTY RIGHTS: INFRINGEMENT AND. REMEDIES 56(1st ed. 2006). 2d. 3Wander Ltd v. Antox India Pvt, Ltd, (1990) Supp (1) SCC 727, 15|PageArnab’s Butter Chicken and would be cenfised, especially given the fact that the plaintiff and the defendant are brothers and therefore probably associated. B, THE DEFENDANT THROUGH THIS ACT IS ATTEMPTING TO OBTAIN ECONOMIC BENEFIT THROUGH THE REPUTATION OF THE PLAINTIFF The defendant is a new entrant into the market for the provision of restaurant and food delivery services in Delhi. Therefore by buying keywords similar as well as identical to the registered trademark of the plaintiff he has ensured that the advertisement for his website will come above the organic search result of the plaintiff’s website. This will help him ensure that the consumers, who as it is have been deceived regarding the origin of goods and services, as shown above, will enter his website and place order for food there. Therefore the defendant has made undue economic benefit by riding on the reputation of the plaintiff's business since he has been able to divert consumers to his business, who were in fact looking for the plaintifi’s website Even if we concede that the consumer might ultimately realize that the website they landed up in was of the respondent and not the plaintiff, they might decide to patronize his website. The contention that there is only initial interest confusion doesn’t alter the fact that the defendant is acquiring the goodwill of the appellant in order to gain undue economic benefit.’ A diversion of consumers can take place through initial confusion if the consumers reaching the respondent’s website were falsely led to believe that the site they reached was authorized by the trademark owner even if they realize their mistake later.* C. BY USING THE TRADEMARK OF ARNOB THROUGH ADVERBA ADVERTISING SCHEME, ARNAB HAS DAMAGED THE GOODWILL OF THE PLAINTIFF'S BUSINESS. ‘The leading legal authority for the definition of goodwill can be found in the case of Inland Revenue Commissioners v Muller & Co.'s Margarine Ltd.° In this case Lord Macnaghten said that goodwill “is the benefit and advantage of the good name, reputation 4Brookfield Communications, Inc. v. West Coast Entertainment Corp. 174 F.3d 1036-9" Cir.1999, 5Planned Parenthood Federation of America Inc. v, Bucci, 42 U.S.P.Q.2d 1930; Jews For Jesus v Brodsky, 46 U.S.P.Q.2d 1652. GInland Revenue Commissioners v. Muller & Co.'s Margarine Ltd, (1901) A.C. 217. 16]?and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start” The plaintiff can show presence of goodwill through actual sales or at least through extensive pre-sale publicity that may have been undertaken by him. In the year 2008, Amob had created a website for his business (www bestbutterchicken.com) for the ease of his actual and potential customers.’ He had extensively advertised his business along with his website's URL in the mass media as well as hoardings located throughout Delhi,’ and in the process incurred a sizeable advertisement expenditure of Rs. 1,00,00,000/- in the year 2012 dated 1* January 1989, between the Murgwala brothers, granted Amob the exclusive use .” In addition to such extensive pre-sale publicity, the terms of the agreement of the mark ‘Murgwala’ and the goodwill associated with it.'' Therefore Arnab has the potential to damage the goodwill of MBBC if h services do not live up to the level which people have come to expect over the course of 56 years from the plaintiff's restaurants. Goodwill would not be worth anything if it didn’t have the power of attraction to bring customers home to the source from which it emanated.” Since the defendant is using the AdVerba scheme to divert attention from the plaintiffs business to his, MBBC would slowly lose the power to attract consumers to its own outlets, TAllen (WH) & Co v. Brown Watson Ltd [1965] RPC 191; British Broadcasting Co v. Talbot Motor Co Ltd [1981] FSR 228; Labyrinth Media v Brave Werld [1995] EMLR 38. 8Factsheet 4 line 3. 9Factsheet 44 line 6. 10Factsheet “4 line 7. 1 [Factsheet {10 line 2. 12Inland Revenue Commissioners v Muller & Co.’s Margarine Ltd, (1901) AC 217. 17|Pageest! According to the extended form of the “classical trinity” sed by the Madras High Court in the case of Aravind Laboratories v. Modicare', for a successful suit of passing off against the defendant the plaintiff has to show that the defendant's action causes actual damage or would most probably result in such damage. The final outcome in such a suit would depend on the impact that such adoption of the plaintiff's mark will have on the goodwill enjoyed by the plaintiff.'* If Arnab is allowed to continue with the usage of keywords similar and identical to the Arnob’s registered trademarks it will result in substantial damage to the plaintiff's goodwill D. THERE IS SUFFICIENT TRADE CONNECTION RETWEEN THE PRODUCTS OF THE PLAINTIFF AND THE DEFENDANT In the case of passing off it is immaterial as to whether or not the products of both the plaintiff and defendant belong to the same class. What the court only needs to examine is whether there is sufficient trade connection between the products so as to result in likelihood of confusion."* In the case of Corn Products Refining Co v. Shangrila Food Products Ltd’” the appellant's product could be used to manufacture the respondent's goods. The court held that this was good enough to establish a sufficient trade connection between the producers. In Oneida Ltd v Pankaj Jain" kitchen cutlery and stainless steel were considered as allied goods. In our case the services offered by both the parties are almost identical, both offering restaurant and home delivery services. Therefore it is submitted that there is sufficient trade connection between the two parties, enough to cause at Icast a likelihood of confusion on the part of the public. 13Reckitt & Coleman v Borden, [1990] 1 All ER 873, 14Aravind Laboratories v. Medicare, (2011) 4 LW 15Harrods Lid v Harrodian School Ltd, [1996] RPC 697. 16Padmanabhan, supra note 1, at 69. 17Corn Products Refining Co v. Shangrila Food Products Ltd, A.LR. 1960 SC 142. 18See cit 57 on pg 70In TY, Venugopal v. Ushodaya Enterprises Ltd"? the court held that there could be a situation where the titled from nark is so well known that ipso facto others would be dis using a deceptively similar mark in respect of any goods, or in any context whatsoever. In Honda Motors Co. Ltd v. Charanjit Singh” the registered wademark of the plaintiff (involved in the production of automobiles), HONDA, was being used by the defendant in the production of cookers. The court said that the trademark is “associated with the plaintiff especially in the field of automobiles and power equipment on account of their superior quality and high standard. The plaintiff's business or products under the tmademark HONDA hes acquired such goodwill and reputation that it has become distinctive of its products and the defendant’s use of this mark for their product ‘Pressure Cooker’ tends to mislead the public to believe that the defendant’s business and goods are that of the plaintiff's.” Similarly, MBBC has acquired a reputation in Delhi as over a course of 56 years it has established 25 outlets throughout the city. Therefore the trademark of the plaintiff, bought by the defendant as keywords, who is providing similar services, has been come to be associated by people to the superior quality and standards of MBBC. The plaintiff's business under his registered trademark has acquired such goodwill that it has become distinctive of its product. Even though the goods may fall under different classes, if they are in the same trading channel they can cause confusion and deception to pass off the goods as those of the plaintiff." _In Honda Motors Co. Ltd v Charanjit Singh’ the court held the defendant liable for passing off even though the goods of the defendant and plaintiff belonged to different cla However Arnab and Arnob’s product belong to the same class of services where Arnab is trying to misuse the goodwill and reputation which has come to be perceived by the people as being characteristic of MBBC Il. THE USE OF THE IMPUGNED KEYWORDS BY THE RESPONDENT AMOUNTS TO TRADEMARK INFRINGEMENT 191.V. Venugopal v. Ushodaya Enterprises Ltd, (2011) 4 SCC 85. 20Honda Motors Co. Ltd v Charanjit Singh, (2003) 26 PTC 1 21. Creative Handicrafts v. Sedana Flectrie Co., (1988) PTC 348 22Honda Motors Co. Ltd v Charanjit Singh, (2003) 26 PTC 1 19|Page‘A. ARNOB’S TRADEMARK IS NOT INVALID a) The registered trade mark of the appellant is protected under the According to section 9, which lays down the grounds for refusal of registration of ade marks, any mark whieh is devoid of a distinctive character, or is intended to designate the kind, quality or intended purpose of the services rendered or has become customary in the current language is not to be registered unless before the date of application for registration it has acquired a distinctive character as a result of the use made of it. Il is submitted that the registered trade mark of MBBC has acquired a distinctive character in the course of its 34 years of existence before the registration of the trade mark. Mr. Arvind Kejru Maurgwala established the fast food restaurant called ‘Murgwala’s Best Butter Chicken’ in Delhi in the year 1959 at Connaught place. It soon became a very popular restaurant amongst the people of Dethi. Today it is not just a single restaurant, but a chain with over twenty five outlets within Delhi Courts have held that when descriptive words are involved, even a small distinguishing element in the use would be regarded as adequate. In Office Cleaning Services Limited v Westminister Window and General Cleaners Limited the Court of Appeal held that where the name of the business consists of words descriptive of that business a slight difference will be a sufficient distinction. The House of Lords, upholding this decision said that "Where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words, The Court will accept comparatively small differences as sufficient to avert confusion." It is submitted that though the expression “Best Butter Chicken” ean be construed as being generic and descriptive, the trade mark is not limited to it. The surname of the appellant when used in the trade mark acts as the distinguishing element which helps people to identify it solely with the business of the appellant and not think of it as a generic term covering all restaurants which provide similar services. The registered trade mark of the appellant is an arbitrary combination of seemingly generic words, which has become distinctive. The respondent has the option of choosing a number of different words as keywords, which his purchase of forty six other keywords show, and therefore he need not buy this exact combination of four words which form the appellant's registered trade mark. 20|PageIn so far as trademarks are concerned, they are generally classified in the order of their increasing distinctiveness: generic, descriptive, suggestive, arbitrary and fanciful. The more distinctive the mark, the greater the protection afforded by law. When a trademark is not inherently distinctive, it may nevertheless be protected if it has acquired distinctiveness, also known as "secondary meaning". But it depends upon the length and manner of use, nature and extent of advertising and promotion, efforts made to promote conscious connection in the public's mind between the trademark and the business and extent to which the public actually identifies the mark and the product or service as measured by Consumer Surveys. The appellant’s trade mark fulfills all the aforementioned conditions required to establish the fact that it has acquired a secondary meaning. The trade mark has been in use for a long time (fifty six years). The trade mark has also been advertised extensively by the appellant through the mass media as well as hoardings in Delhi. The long period of existence supplemented by the advertising efforts undertaken promote a conscious connection in the public's mind as *s bu they relate the expression ‘Murgwa ‘ken’ only to the appellai ess. The courts have also held that if by long association with a person’s products or services, a descriptive word acquires a secondary meaning then they're entitled to protection. In Reddaway v.Benhan it was held that the term ‘camel hair belting’, an expression containing solely generic words, had acquired a secondary meaning. The appellant’s trade mark had existed for thirty four years before getting registered, in the course of which it became extremely popular among the people of Delhi. Today it has twenty five outlets in Delhi. All these facts go to show that ‘Murgwala’s Best Butter Chicken’ ves the trade mark purpose of helping people identify the source of services as belonging to the business of the appellant and not think of it a generic deseri A descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source. Therefore it can be seen that usage of a combination of descriptive words over a long period of ti e can lead to identification of the source of goods based on the mark. b) The registers trade mark of the appellant is valid under sections 31 and Zoi the Trade Marks Act, 1999 The original registration of the trade mark by the appellant in 1993 is prima facie evidence of its validity. 21|PageIfit is proven that after registration and before commencement of these legal proceedings challenging the validity of the registration of the appellant's trade mark it has acquired a distinctive character in relation to the services for which it is registered then it will not be declared invalid. In the year 2008 (after registration and before commencement of legal proceedings) the appellant even created a website for his business which allows prospective consumers to view the menu online and place orders for home delivery, with the guarantee that orders placed on the website will be delivered in thirty minutes or less. He also undertook extensive advertising of not only his business but also the website’s URL in the mass media as well as several hoardings in several places across the city. The company’s financial statements for the assessment year 2012-13 recorded advertisement expenditure at a whopping 1,00,00,000/-. All these efforts supplemented the good name and reputation that the appellant’s business had even before registration and therefore lend to the establishment of the distinctive character of the appellant's trade mark. 0 iene f 7 7 According to the agreement dated 01.01.1989 entered into between the appellant and the respondent, the mark “Murgwala’ and the goodwill associated with it belonged exclusively to the defendant In Spencer & Co. Ltd v. Spen Sofi Drinks Co. the court recognized that a family mark such as “Spencer” can be entitled to trade mark protection since the mark was in use for a considerably long period of time and had acquired distin jveness in so far as the applicant's goods were concemed. Similarly, the mark ‘Murgwala” has been in use by the appellant’ business for a long period of time (fifty six years) and has acquired distinctiveness as shown above. In Reddy Pharmaceuticals Ltd v. Dr. Reddy's Laboratories Lid the defendant contended that the word Reddy was a common surname and hence none could claim monopoly over this. They also contended that their managing director had Reddy as his surname and that this was a sufficient enough condition for adopting this name. The Delhi High Court rejected these contentions and held that the name Reddy had acquired distinctiveness over a period of time. The court considered as material the reputation of the plaintiff's company.The Punjab and Haryana High Court in the case of United Iron & Steel Works v. Govt. of India had to decide whether the initials of the applicant “UIS” could be registered as a trade mark. The high court held that one of the recognized tests for determining distinctivenes s was wheiher the registration would tend to protect the public from imposition or the result would be reverse of it. The court observed that “by using the name of an individual or of a firm as a trade mark, no one should be allowed to prevent any person or firm of a same or similar name from using its name or initials in connection with the goods manufactured by the second firm.” However if the initials or the name or part of the name had, by constant and extensive use, acquired distinctiveness, the mark would be entitled to registration and subsequent protection Therefore the contention of the respondent that he is entitled to the use of the mark ‘Murgwala’ since it is his surname also is not valid due to the acquired distinctiveness it has with the appellant's business. There can be no statutory requirement regarding the number of years or exact extent of the period after the expiry of which a mark may be deemed to have acquired distinctiveness and this would depend on the facts and circumstances of each case. In the case of United Iron & Steel Works v Govt. of India a period of two years was held to be sufficient to have enabled inctiveness. In that case the court had to decide the mark of the appellant to acquire such dit whether the initials of the plaintiff could be registered as a trade mark. As opposed to this the appellant enjoyed popularity within Delhi for a period of 34 years prior to registration and here the appellant is claiming exclusivity with respect to the entire trade mark and not some shortened version of it, Ifthe respondent argues that the mark ‘Murgwala’ is made up of two separate words ‘Murg’ and ‘Wala’, (wo common words in the Hindi language which when put together form a new word, then it would be termed as an invented word, which are entitled to a higher degree of protection, An invented word could be a composite word derived out of two common or generic words. B. ARNAB USED THIS TRADEMARK IN THE COURSE OF TRADE a) The conditions for use are the same as the conditions for use in theThe Trademark Act does not explicitly define ‘course of trade’, though it does allude to it multiple times. The appellant submits that the reason course of trade is not defined separately in the Act is that it is meant to be used in combination with the word use. That is to say, when the legislation defines various conditions which when fulfilled mes a person is using a ‘trademark, it actually means that those conditions when fulfilled mean a person is using it in the course of trade as well. There is no difference for the purposes of the Act between using a mark and using a mark in the course of trade as per section 29. It is, after all, a known fact that to interpret a legislation one must understand the intent of its framers”, and it is likely that the reason the framers defined when one would be using a trademark but did not separately define when you would be using it in the course of trade is because they wanted to imply that use in the context of section 29(6) meant use in the course of trade itself, This is substantiated in the way this has been interpreted by Courts. In the case of Heineken Asia Pacific Pte. Ltd v Surjeet LaF. when the Court, while discussing the elements necessary to prove infringement, go through the definition of infringement as is provided in Section 26, When they look at individual factors which comprise infringement, they look at use and mention that the criteria for showing use are mentioned in Section 29(6): “Section 29(6)(c) expressly provides that for the purpose of Section 29, a person uses a registered mark if he, inter- alia, imports or exports goods under the mark”. At that the Court ends its analysis. It does not at any time try to consider whether such use was in the course of trade. Similarly, in the case of Philip Morris Products S.A. & Another v Sameer & Others, the judge ruled that reading Section 29(1) along with Section 26) was sufficient to show that trademark infringement had occurred. This again is extremely indicative of the fact that the Court felt that use was synonymous with use in the course of uade in the context of the Trademark Act. 23 District Mining Officer and Others v Tata Iron and St SC 20066 Indlaw. 1 Company and Another, (2001) 24 Heineken Asia Pacific Pte. Ltd v Surject Lal, MANU/DE/2823/2014, 25 Philip Morris Products S.A. & Anrv Sameer & Others, (2014) DEL $17 Indlaw 24 [PageThe appellant submits that use in the course of trade is the same as use in the context of Section 29, and hence, according to subsection 6”, a person uses a trademark in the course of trade when he: (a) affixes it 10 goods or the packaging thereof: (b) offers or exposes goods for sale puts them on the market, or stock them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark: (©) imports oF exports goods under the mark: of (¢) uses the registered trade mark on business papers or in advertising, Ifhe does any of these four acts, he’s using the trademark in the course of trade. Itis quite clear in this case that condition (d) is being fulfilled. b) Assuming that the fact that any use was in the course of trade has to be proven separately In the absence of a definition being given in the act, the appellant submits that the Court should refer to the definition of the word given in Black’s Law Dictionary. There exists past precedence on why Black’s Law Dictionary should be referred to — in the case of Hyder Consulting (UK) Limited v Governor, State of Orissa Through Chief Engineer”, the Supreme Court referred to Black’s Law Dictionary for clarification when the Arbitration and Coneiliation Act, 1996, was silent as to the meaning of the terms sum and interest. Similarly, the Supreme Court has also turned to Black’s Law Dictionary to understand the meaning of terms like ‘finding’, ‘preponderance of evidence”, ‘statutory lien’, and so on for various 26 The Trade Marks Act, No. 47 of 1999, §29(6) (1999). 27 Hyder Consulting (UK) Limited v Governor, State of Orissa Through Chief Engineer, (2014) SC 799 Indlaw. 28 Anand Brothers Private Limited Through M.D. v Union of India and others, (2014) SC 588 Indlaw. 29 Murlidhar Shivram Patekar and another v State of Maharashtra, (2014) SC 649 Indlaw 30 Stock Exchange, Bombay y V. S. Kandalgaonkarand others, (2014) $C 669 Indlaw. 25|Pageother terms the meaning of which is either not clarified in the given statute or to appreciate the meaning of which a contextual understand is required” Therefore the course of trade can now be defined as * vhat is customarily or ordinarily done in the management of trade or business"*. It is the appellant's submission that advertising most definitely comes under this definition. This is because through general practice, it is observable that advertising constitutes an essential and customary feature in the management of any business today, especially if that business is operating on a scale where its competitors are spending large amounts of money on advertising. It can be observed thet the competitor in this case had spent one crore rupees as advertising expenditure in this year itself. This points towards the fact that advertising was customary or expected in this trade or bi Finally (Australia) Ltd that the use of mark in advertisement is use in course of trade. In the it has been held in the case of Shell Company Australia Ltd. vy. Esso Standard Oil Interflora case it Was held that use by the advertiser of a “sign as a keyword in the context of aan intemet referencing service is the means to trigger the display of its advertisement and so does constitute use of the sign in the course of trade in relation to the goods or services so advertised”. Similarly, in the ease of Rescuecom Corp. v. Google Inc. it was held that using a trademark asa keyword is a use in commerce. These judgements, while not binding, do hold persuasive value, and the appellant requ Court to consider this authoritativ: C. ARNAB CANNOT USE THE DEFENCE OF HAVING USED ONLY PART OF THE TRADEMARK a) The respondent is using the entire trademark, not part of it According to Section 17(1)"*, when a trade mark consists of several matters, its registration shall confer on the proprictor exclusive right to the use of the trade mark taken as a whole. 31 Kamaljit Singh v Sarabjit Singh, (2014) SC 577 Indlaw; Yasha Overseas and Others v Commissioner of Sales Tax and Others, (2008) SC 1243 Indlaw; Dashrath Rupsingh Rathod V State of Maharashtra and another, (2014) SC 494 Indlaw; Pte India Ltd. v Central Electricity Regulatory Commission, Thr. Its Secretary, (2009) SC 304 Indlaw 32 Black’s Law Dictionary 352 (6th ed. 1990). 33 The Trade Marks Act, No. 47 of 1999. §17(1) (1999). 26|PaueSubsection 2¥ of the same section expounds on that by saying that when a trademark contains any part Which is not the subject ofa separate application by the proprietor for registration as, a trade mark or which is not separately registered by the proprietor as a trade mark or which contains any matter which is common to the trade or is otherwise of anon - distinctive character (a) contains any part--—- (i) which is not the subject of a separate application by the proprietor for registration as a trade mark: or (ii) which is not separately registered by the proprictor as a trade mark : or (b) Contain any matter which is common to the trade or is otherwise of a non - distinctive character, then the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered. Itis the appellant's submission that this section does not provide an adequate defence for the respondent. The rationale behind this is simple — while a part of a trademark is not protected and in this case there is no reason to believe that the proprietor has registered it separately as a trademark, if one is to examine the way the mechanism of AdVerba works there is an obvious case to be made out for infringement. The way the mechanism works is ifany combination of words out of the 50 keywords that have been bought by the respondent is entered into Zoozle, then it will show the website of the respondent as a result’, This includes a possible scenario where the user may type in “Murgwala’s Best Butter Chicken’ and be directed to *Arnab’s Butter Chicken’, as that will be the result on the very top in case of such a search. Such a case is clearly a case of trademark infringement, with Amob’s trademark being infringed. ‘Murgwala’s Best Butter Chicken’ is the entire trademark of the appellant’ therefore, when a user enters that into Zoozle and gets Arnab’s website as a result, it isn’ta part of Arnab’s trademark being infringed, but his entire trademark. The purchase of these four keywords is without a doubt causing an infringement of Amob’s complete trademark. Therefore Amab cannot use the defence of Arnob not having exclusive right over part of his trademark, b) Even if the respondent is held to be using only a part of the trademark. 34 The Trade Marks Act, No. 47 of 1999, §17(2) (1999). 35 Factsheet §2 line 8, 36 Factsheet §3 line 17. 27|Pageitis still a violation Subsection 2 of Se jon 17°” says that when a trademark contains any part which is not the subject of a separate application by the proprietor for registration as a trade mark or which is not separately registered by the proprietor as a trade mark or which contains any matter which is common to the trade or is otherwise of a non - distinctive character then that the trademark holder does not possess any kind of exclusive right over that part of a trademark. Itis the submission of the appellant that parts of the trademark have in this case obtained a distinctive character, which would take them out of the ambit of Section 17, The appellant relies on the case of Three-N-Products Private Limited v Emami Limited, which held that the words "the registration thereof shall not confer any exclusive right towards the end of Section 17(2) have to be understood in context. The import of such words is that the registration of the mposite mark will not ipso facto confer any exclusiv right as to the parts of the composite mark. But if the owner can establish exclusivity aliunde, the owner can assert the exclusivity.” Tn this case, it the appellant’s submission that the parts of the mark themselves had attained such a distinctive character that they had attained exclu vity aliunde, Murgwala’s Best Butter Chicken had massive sales and had spent a massive amount in advertising to generate revenue for itself”. Because of this, it has become immensely identifiable as a brand in itself. It is the appellant’s submission that each part of the brand's name has become identifiable with the brand, even when used individually in a context completely unrelated to the brand itself. Examples of this can be seen in the real world as well. When a brand becomes exceptionally popular, even individual parts of its brand name when used in a different context are automatically identified with the brand itself. For instance, in a country like India, use of the word Kentucky is likelier to make a person think of Kentucky Fried Chicken (KFC) than Kentucl state. This effect will be amplified even 37 The Trade Marks Act, No. 47 of 1999, §17(2) (1999). 38 Three-N-Products Private Limited v Emami Limited, (2008) CAL 210 Indlaw. 39 Factsheet 4 line 7. 28)Pmore when it comes to MBBC, as the fact that it is an extremely popular"? local chain means ps part of the trade name will likely cause recalling of MBBC due to the parts of the mark that itis even likelier to possess a strong hold over its consume! che, and usage of any having attained a distinctive nature by themselves. Moreover, in the case of Alaknanda Cement Private Limited and another v Ultratech Cement Limited" it was held that the plaintiff can “show that one descriptive partis inseparable from the registered whole mark”, in which case such a mark would no longer come under the jurisdiction of Section 17. This is because since a descriptive part is no longer merely a part ofa trademark icc. the trademark docs not consist of many parts but of a whole, as just taking away the part would take away the meaning of the trademark. For the trademark to possess any meaning atall, the de riptive part cannot be separated from it e. the descriptive part is inseparable from the registered whole mark.” This is truc in our case. The descriptive part of the trademark in this ease is Best Butter Chicken. It the appellants’ submission that this phrase is inseparable from the registered whole mark. The rationale behind this is clear — the word Murgwala’s as of itself has no meaning in the mind ofa consumer. Itis merely the possessive form of surname. However, when the word Murgwala’s is attached to the descriptive phrase Best Butter Chicken, the ion, Mu combined expr ;»wala’s Best Butter Chicken denotes something. This whole trademark has clear meaning ~ it refers to the butter chicken being sold by a vendor named Murgwala, and claims that this aforementioned chicken is the best in terms of quality. Removing any one of the words would mean that the trademark does not convey the meaning that it is meant to convey ~ for instance, Murgwala’s Best Butter does not convey nearly the same meaning as Murgwala’s Best Butter Chicken, Itis therefore the appellant's submission that in this case since the deseriptive part is inseparable from the registered whole mark, the respondent cannot use section 17 as a shield. D. ZOOZLE CANNOT USE ITS DEFENCE OF BEING MERELY A SEARCH ENGINE AND. PERFORMING THE FUNCTIONS OF A DIRECTORY 40 Factsheet {3 line 3. 41 Alaknanda Cement Private Limited and another v Ultratech Cement Limited, (201 1) MUM 1130 Indlaw. 29|PageSelling off of keywords can also be said to be in the course of trade when it comes to the definition given by Black’s Law Dictionary“(the authoritative value of which the appellant has already established) ~ it is “what is customarily or ordinarily done in the management of trade or business’. This can be understood by the fact that search engines do ordinarily sell keywords in the course of business ~ an example can be the AdWerds scheme carried out by Google, The appellant submits that in this case Zoozle overshot its functions as a mere search engine which does the job of a directory and therefore cannot be said to be immune from liability. One must first begin by examining the meaning of the defence taken by Zoozle — that is to 1, Why does being a search engine which performs the functions of a directory exempt Zoozle from liability? One must refer to the Amendment of the IT Act in 2008, which defined an intermediary“ as follows: "Intermediary" with respect to any particular electronic records, means any person who on behalf of another person receives, stores or transmits that record or provides any service with respect to that record and includes telecom service providers, network service providers, internet service providers, web hosting service providers, search engines, online payment sites, online-auction sites, online market places and cyber cafes Section 79(1) of the IT Act* says that an intermediary shall not be liable for any third party information, data, or communication link hosted by him. Therefore, Zoozle’s rationale is that due to its legal status as that of an intermediary, it cannot be held liable for the data hosted by it Itis important to note, however, that certain exceptions to this general exemption clause have been made it the IT Act itself. Section 79(2)(a)" says that the exemption from liability is granted only if the function of the intermediary is limited to providing access to a communication system over which 42 Black’s Law Dictionary 352 (6th ed. 1990) 43 GET YOUR AD ON GOOGLE TODAY, hitps://www.google.com/adwerds/ (last visited Jan. 21, 2015). 44 The Information Technology (Amendment) Act, No. 10 of 2009, §2(1)(w) (2008). 45 The Information Technology (Amendment) Act, No. 10 of 2009, §79(1) (2008). 30|Pageinformation made available by third parties is transmitted or temporarily stored. In this ease, it can be stated that Zoozle did not merely limit itself to providing access to a communi ion system. Instead, it conducted an auction of sorts to modify the results which can be found on the communication system’”. Moreover, when given notice that contents on its website were violating a registered trademark*, it sent baek its own legal opinion saying that the contents were not doing so”. This in no way can be said to be limited to providing access to a cess toa communication system, Since its action was not limited to providing a communication system, it cannot claim an exemption from liability. Even if one were to hold that Zoozle has not voided its exemption from liability under subsection (a), it does so under subsection (b)(iii)". This subsection speaks of the fact that an intermediary shall be exempted from liability only if it do not select or modify the information contained in the transmission. In this ease, however, Zoozle openly and notoriously modified the information contained in the re ults by auctioning off search results"! and even going so far as to show them above the organic search results™. If it were to follow its own algorithm, then it would not modify the results in any way. However, an element of human interference does appear when they auction off certain search results. In doing so, Zoozle is modifying the information contained in the transmission to generate a greater profit There are in fact two more sub-clauses under which Zoozle as an intermediary can be held to have voided its exemption from liability. 46 The Information Technology (Amendment) Act, No. 10 of 2009, §79(2)(a) (2008). 47 Factsheet {6 line 2. 48 Factsheet 47 line 6. 49 Factsheet §8 line 2. 50 The Information Technology (Amendment) Act, No. 10 of 2009, §79(2)(b)(iii) (2008). 51 Factsheet 6 line 2. 52 Factsheet 2 line 13. 31[PageAccording Section 79(3)(a), the intermediary shall not be exempt from liability if it has conspired or abetted or aided or induced whether by threats or promise or otherwise in the commission of the unlawful act®. In this case, it can be said without a shadow of doubt that the intermediary abetted the commission of the unlawful act. Section 107 of the Indian Penal Code says that one abets the doing of a thing if he intentionally aids, by any act or illegal omission, the doing of that thing, By the act of auctioning off the keyword in question, and in fact personally condur can be said without a shadow of doubt that Zoozle ig the au is aiding the doing of this act (the act here being the infringement of trademark which is taking place. The fact that they had full knowledge and intention can be inferred form the fact that they had notice and nonetheless went ahead with allowing these keywords to continue being used. Therefore, under Section 79(3)(a), Zoozle is not exempt from liability Section 3(b) says that if upon receiving actual knowledge, or on being notified by the appropriate Government or its agency that any information, data or communication link residing in or connected to a computer resour controlled by the intermediary is being used to commit the unlawful act, the intermediary fails to expeditiously remove or disable access to that mater I on that resource without vitiating the evidence in any manner, then the intermediary voids its exemption from lizbility®. In this case, the first part of this section is applicable — Zoozle received actual knowledge that a computer resource being controlled by it was being used to commit an unlawful act, However, at this point, it refused to step in and expeditiously remove access to that material, Instead, it went so far as to use its own legal ion as to whether or not the material in question was unlawful”. This opi something which itis nowhere empowered to do. On being made aware by the appellant that it was w the unlawful material, Since it contributing to infringement, it should have disabled aces failed to do that, itis the appellant’s submission that it has voided its exemption from liability. 53 The Information Technology (Amendment) Act, No. 10 of 2009, §79(3)(a) (2008). 54 The Indian Penal Code, No. 45 of 1860, §107 (1860) 55 The Information Technology (Amendment) Act, No. 10 of 2009, §79(3)(b) (2008), 56 Factsheet {7 line 6. 57 Factsheet §8 line 2. 32|PageMoreover, the Intermediaries Guidelines Rules, 2011, say that the intermediary has an obligation to inform the users of computer resource not to host, display, upload, modify, publish, transmit, update or share any information that infringes any patent, trademark, copyright or other proprietary rights.°* However, if the intermediary, on whose computer system the information is stored or hosted or published, upon obtaining knowledge by itself or been brought to aciual knowledge by an affected person in writing or through email signed With electronic signature about any such information as mentioned above, shall act within thirty six hours and where applicable, work with user or owner of such information to disable such information, It is clear that in this case Zoozle has not fulfilled its function of acting the wa intermediary is legally obligated to act. It had been brought to its notice by the affected party i.e. the appellant in writing that it was in fact hosting information was violatory of the trademark held by the appellant. However, rather than act upon this information within thirty six hours, Zoozle did not act. Instead, it replied nearly a month later stating that it did not believe that the act in question constituted a trademark violation. There are two problems here firstly, the fact that Zoozle is supposed to act within thirty six hours, which it did not do. Instead, it did nothing about the problem for nearly a month. Secondly, after taking nearly a month, rather than acting the way an intermediary is supposed to and leaving the legal dispute to the Court, Zoozle intervened and based on its own legal opinion chose to not take down the infringing keywords, E, THIS INFRINGEMENT IS LIKELY TO CAUSE CONFUSION OR CAUSE THE CONSUMER ‘To BELIEVE THAT THERE IS AN ASSOCIATION WITH THE REGISTERED TRADEMARK Finally, itis the appellant's submission that in this ease the mark of Amab which because of its similarity to the registered trade mark of Arnob and the identity or similarity of the goods or services covered by such registered trade mark is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. 58 The Information Technology (Intermediaries guidelines) Rules, 2011, Gazette of India, section 3(2)(b) (Apr 11, 2011) 59 The Information Technology (Intermediaries guidelines) Rules, 2011, Gazette of India, ion 3(3)(4) (Apr 11, 2011), 33|PageThere is no gold standard for the understanding of trademarks being likely to cause confusion, In this ease, it is necessary to fall back upon past decisions which have been made by this honourable Court and look upon them as precedence. In the case of Delhi Public School Society v D P $ Trust™, the plaintiff, the Delhi Public School Society, was granted an injunction. This despite the fact that the two trademarks, in terms of design at least, were not deceptively similar. jis Was because of the fact that the two societies worked ina similar line i.e. they were both engaged in the setting up of schools. This, along with the similarity of the names between the two, was found to have enough similarity as to cause confusion amongst the consumers at large. Since out of the two the Delhi Public School Society was the better established, it was understood that allowing the DPS Trust to carry on with its chosen name could carry irreparable damage to the Delhi Public School Society, as it was possible that prospective consumers would be misled into believing that the schools being run by the DPS Trust were in fact Delhi Public Schools. This case holds direct application to our case. MBBC and ABC are two food brands which are owned by two brothers, out of which MBBC is by far the better known and more established. In such a scenario, when a consumer searches for Murgwala’s Best Butter Chicken and the top result is Arnab’s Butter Chicken, it is likely that he will be misled into believing that Amab’s Butter Chicken is the flagbearer of the Murgwala chicken brand (which the brothers’ father started) when in reality itis MBBC which holds that position. Therefore, he is likely to buy chicken from ABC, assuming that it holds the market position and sells the kind of chicken that is in fact MBBC’s domain. The fact that this is likely to lead to confusion is exacerbated by the fact that both the companies operate in the exact same market in terms of the object they are selling, increasing manifold the possibility of there being confusion in the mind of the buyer. Another factor that must be considered is that of initial interest confusion. Initial interest confusion is a “bait and switch” tactic that permits a competitor to lure consumers away from a service provider by passing off services as those of the provider, notwithstanding that the confusion is dispelled by the time of sale. For example, the likelihood that a potential purchaser of a specialised computer program may be drawn to the junior user, thinking it 60 Delhi Public School Society v D P S Trust, (2012) DEL 3370 Indlaw. 34|Pagethe senior user, is actionable "confusion" even if over the course of several months of the purchasing decision-making process, the buyer's confusion is dissipated. The analogy to trademark initial interest confusion is a jobseeker who misrepresents educational background on aresume, obtains an interview and at the interview explains that the inflated resume claim isa mistake or a typo. The misrepresentation has enabled the job-seeking to obtain a coveted interview. a clear advantage over others with the same background who honestly stated their educational achievements on their resumes. In such a situation, it is not possible to say that the misrepresentation caused no competitive damage.“ Moreover, it was held in the case of Horlicks Limited and Others v Uttam Sadhukan® that intent does not matter. Even if the offending party adopted innocently a name which infringed the trademark of the plaintiff, infringement is infringement and does not need mens rea There is no requirement to prove intent —all that needs to be shown is that infringement has happened which is likely to lead to confusion. Ttis the appellant’s submission that this is a case of initial interest confusion. Itis possible that once a potential buyer goes on to the website of Arnab’s Butter Chicken, he will realise that Amab is selling a product different from Arnob, However, the mere fact that the consumer has been lured to Arnab’s website in the first place means that this has caused confusion on the part of the public. Therefore, itis a clear cut case o| Even if the consumer is not confused by the similarity between the names of the two companies and lead into believing that the respondent’s company is actually the appellant’, it is likely that duc to the extreme similarity in the names and type of product between the two companies that the consumer will think that there is some sort of association between the product being sold by the respondent and the one being sold by the appellant. There are reasonable grounds for us to say that such an association is likely to be made Firstly, the two products are in the same field exactly i.e. butter chicken, Secondly, the appellant has already established himself in this field. Thirdly, due to the fact that the 61 4J. McCARTHY, TRADEMARKS AND UNFAIR COMPETITION 19-23, (Clark Boardman Callaghan) (1988) (4" Edn, 1988). 62 Horlicks Limited and Others v Uttam Sadhukan , (2002) DE! 61 Indlaw 35] Paskeyword Murgwala® is being used by the respondent to advertise his product, it seems likely that the consumer could draw an inference that the butter chicken being sold by Arnab is a part of the Murgwala brand of butter chicken. Therefore, it seems likely thet the consumer will think that there is likely to have an association with the registered trade mark, and therefore, on this ground, the respondent is guilty of infringing the appellant's trademerk. In the case of Yashodh Super Speciality Hospitals, a partnership firm, represented by its partner G. Devender Rao v Yashoda Medicare and Research Centre Private Limited, a company registered under Companies Act, 1956, having its registered office at New Delhi, represented by Its Direcior and another, it was held that Yashoda had established itself and made its name in the industry of healtheare. It now possessed a certain reputation in this field. Yashoda Medicare was not strictly the same as Yashoda Super Speciality Hospitals, in fact it jistinguished in that it was more research focused as opposed to running a slew of hospitals. Despite this fact, however, Yashoda Hospitals’ application for an injunction owing to trademark infringement was granted. This is because due to Vashoda Hospitals’ prior reputation in the medical field, it could lead to confusion and even lead to consumers thinking that there is an association between Yashoda Super Speciality Hospitals and Yashoda Medicare and Research Centre Private Limited. In our case, the two companies are even in the exact same field i.e. the sale of the same food product. This means that itis even likelier that the consumer may end up thinking that the two companies are associated, and by doing so, the respondent will benefit from the prestige and established goodwill of the appellant in the Delhi area II1.Z00ZLE HAS ENTERED INTO ANTI COMPETITIVE AGREEMENTS WITH THE USERS OF THE ADVERBA SCHEME It is submitted that Zoozle has entered i (0 agreements with users of its AdVerba scheme that have an appreciable adverse effect on competition. Further, the agreement results in unfair competition in the relevant market. 63 Factsheet 6 line 3. 64 Yashoda Super Speciality Hospitals, a partnership firm, represented by its partner G. Devender Rao v Yashoda Medicare and Research Centre Private Limited, a company registered under Companies Act, 1956, having its registered office at New Delhi, represented by Its Director and another, (2010) AP 534 Indlaw. 36|PageA. THE AGREENENT BETWEEN ZOOZLE AND USERS OF THE ADVERBA SCHEME HAS. AN APPRECIABLE ADVERSE EFFECT ON COMPETITION An agreement entered into between two persons at different levels or stages in different markets that causes or is likely to cause an appreciable adverse effect on competition in India is in violation of Section 3(4) of the Competition act.‘ Such agreements are void." This section is not exhaustive and hence covers all agreements that are deemed to have an appreciable adverse effect on competition by measur factors enumerated 1g them aga under Section 19(3) of the Competition Act.” In the present case, Zoozle enters into an agreement with its consumers under the AdVerba scheme to advertise their website. The scheme provides to the highest bidder for a keyword; the opportunity to trigger a specific result above the organic search list generated when a user enters a certain query into Zoozle’s search engine. This result is separated from the organic search list by being highlighted in light yellow and being termed as “suggested posts”, with the words “sponsored ads” being written alongside them.” It is submitted that despite this separation between advertisements and organic results confusion may be created in the minds of the consumers as to whether these posts are suggested by Zoozle, or are simply proffered as advertisements.” Zoozle seems to, in the cyes of a rational user; be proffering a particular result as the most appropriate when the query entered on the website is specifically for another service. These posts do not Multiplex Association of India v. United Producers/Distributors Forum and Others, (2011) Indlaw 18, 66 The Competition Act, No. 12 of 2003, § 3(2) (2002). 67 South Asia LPG Company Pvt. Ltd. v, Competition Commission of India, (2014) Indlaw '30; Neeraj Malhotra, Advocate v, Deutsche Post Bank Home Finance Limited (Deutsche Bank) and Others, (2010) Indlaw 28. 68 Factsheet, § 6. 69 Factsheet, 2 70 Factsheet, § 2 71 Warmer Bros, Entertainment Inc. and Another. v. Harinder Kohli and Others, (2008) Indlaw 1092; Interflora Inc. and Another v. Marks and Spencer Ple, EWCA Civ. 1403 (2014). 37|Pagenecessarily have to linked to the bidders’ business and can be triggered by any keyword, regardless of whether they are associated with the website that it being displayed as part of the advertisement, The advertiser seems to be “endeavouring to reap where (he) has not sown”” by exploiting the goodwill of a competitor to advertise his own business. Hence, Zooule is directing a consumer of its search engine services to the website of persons, with whom it has entered into a contract; disregarding the organic search list and the algorithm therein. This negatively affects existing competitors in the market when the reasons for advertising one’s website online are considered, which include the delivery of relevant, tailored and consumer specific services to a wide market of consumers on the internet.” The appreciable adverse effect that an agreement has on competition is measured on the basis of aggravating and ameliorating factors specified under section 19(3).”* a) Driving Exist By virtue of the AdVerba scheme, existing competitors in the market are likely to be driven out as the purpose with which they provide their services to customers through an online intermediary is being nullified. This is so because the intermediary itself is propagating one amongst all the competitors as representative of that market, by terming the search result containing its web link as a “suggested post” thereby implying its greater relevance and accompanying importance to the consumer.”* Hence existing competitors are disallowed visibility in the market by virtue of having a single competitor be given the opportunity to advertise their own website at the expense of the goodwill of the trademark of the former. This results in their potential customers being poached and hence may lead to them being driven out of the market b) Creation of barriers to new entrants in the market 72 International News Service v. Associated Press, 248 US 215 (1918); Roy Export Company Establishment of Vaduz, Liechtenstein, et al v. Columbia Broadcasting System Inc. 672 F.2d 1095 (1982). 73 1-800 Contacts Inc. v. Lens.com Ine. 722 F.3d 1229 (10" Cir. 2013). 74 Multiplex Association of India v. United Producers/Distributors Forum and Others, (2011) Indlaw 18, 75 Factsheet, 2 38|PageMoreover, barriers are created to new entrants into this market as it is being polarized in favour of the person with whom Zoozle entered into an agreement under the AdVerba scheme. Even if a new entrant tries to display his website online, it will be overshadowed by the “suggestions” posted by Zoozle that seem to endorse a particular consumer in the market. Moreover, “the lower down in the list of results that the link to a webpage ranked, the less likely (is) a user to click on that link”; which suggests that new entrants in a competitive market will be precluded from having complete access to it by virtue of the AdVerba scheme, which allows for competitors in a market to ensure that a link to their website is at the top of the list, regardless of the search query entered, c) Ameliorating factors Ameliorating factors” such as those specified in sub sections (d) to (f) of the section are inapplicable and hence insufficient defences to hide behind, as there is no improvement in production or distribution of goods and neither is there any promotion of technical and scientific development. While the respondent may argue that there is an accrual of benefits to consumers, it is submitted that as the consumers are being misled into believing that their most appropriate search response is something other than what it actually is; and that their results are not they are actually looking for ~ they do not receive any benefit under this scheme either, Hence, it is submitted that the agreement between Zoozle and users of its AdVerba scheme center does indeed have an appreciable adverse effect on competition, B. THE AGREEMENT RESULTS IN UNFAIR COMPETITION Unfair trade practices are dealt with under the consumer protection act and are understood as trade practices that adopt unfair or deceptive practices such as false representation of goods or services, for the purpose of promoting the provision of services.” The same has a wider ambit under American and European jurisprudence where it is a “broad and flexible 76 Infederation Ltd. v. Google Inc., EWHC (Ch) 2295, (2013). 77 Multiplex Association of India v. United Producers/Distributors Forum and Others, (2011) Indlaw 18. 78 The Consumer Protection Act, No. 68 of 1986 § 2(1)(r) (1986). 39|Pagedoctrine”” that encompasses “any form of commercial immorality” or simply “endeavouring to reap where (one) has not sown”', In cases such as these, “the question is whether this activity is fair competition presenting web users with useful altematives or whether it is a form of unfair free iding on the fame of well known marks” Intent, honesty and state of mind is also an important consideration while determining whether a trade practice is considered as unfair." An agreement entered into under the AdVerba scheme allows people to advertise their business on a popular online search en} ine by purchasing certain keywords pursuant to the same. The informant’s trademarks were used as keywords and on them being entered as search queries directed the potential customers to the website of a competitor. This, along with the terminology of these paid advertisements as “suggested” indicate that the advertiser seeks to exploit the goodwill garnered by the trademark of the informant and use it for furthering his own purpose. This sort of commercial immorality is possible only when it is observed as a concerted action under the aegis of the AdVerba agreement. It is this agreement that allows the advertisement and brands it as “suggested” which results in potential customers of the informant who were looking for his website to be misled into that of another; which amounts to unfair competition as one party is “taking the expenditures and labours of another and “misappropriating (it) for the commercial advantage of one person”. 79 Ronson Art Metal Works, Inc v. Gibson Lighter Manufacturing Co., 159 N.Y.S.2d 606, (1957). 80 Metropolitan Opera As 488, ociation v. Wagner-Nichols Recorder Corporation 10] N.YS.2d 81 Roy Export Company Establishment of Vaduz, Liechtenstein, et al v. Columbia Broadeasting System Ine. 672 F.2d 1095 (1982). 82 Consim Info Pvt Ltd. v. Google India Pvt Ltd., (2012) Indlaw 2621. 83 Micheal Holtethoff v. Ulrich Freiesteben (2002) F.SR. 23. 84 Electrolux Coroporation v. Val-Worth Ine. 190 N.Y.S.2d 97, (1959), S.2d 85 Metropolitan Opera Association v. Wagner-Nichols Recorder Corporation 159 N. 488 40|PageIV. ZoozZLE ABUSED ITS DOMINANT POSITION IN THE MARKET It is submitted that Zoozle dominates the relevant market of online search engines and abuses this position by attempting to enter another relevant market by leveraging its dominance. It denies competitors access to their relevant markets and thereby abuses its market position. A. THE RELEVANT MARKET Dominant position is understood as a position of strength that allows it to operate independently of competitive forces prevailing in the market, or affect its competitors or ant firm consumers in its favour.’® The actual scope of a domi 's special responsibility must be considered in relation the degree of dom mice held by that firm and to the special characteristics of the market which may affect the competitive situation.” It is submitted that Zoozle has a dominant position in the market in terms of market share, dependence of consumers on the enterprise, and size and resources of the enterprise. This is evidenced by the fact that internationally, 60% of people use it for their intemet search queries and in India, more than 80% of people access the website on a daily basis. * Any advertising scheme on the website will potentially reach more than 80% of internet users aed that n the country.” Tt can be pres n entity is dominant in a particular market in absentia any other evidence if it has a market share persistently above SO per cent.” Market share, size, resources and importance of the company are all relevant factors while determining whether or not a dominant position is enjoyed in « particular market! Moreover, Zoozle is based in Berlin and makes its presence felt extremely strongly in 86 The Competition Act, No. 12 of 2003, § 4 Explanation (a) (2002), ‘border mail, 2002 4 C.M.L.R. 598. 87 C-1/36.915 Deutsche Post AG — Interception of cros 88 Factsheet, | 89 COMP/MS5727 MicrosofV/Y ahoo! (2010), 90 Case C-62/86, AKZO Chemie BV v Commission, 1993 5C.MLL.R. 215. 91 The Competition Act, No 12 of 2003, § 19(4), (2002). 41yP10:37AM 6 © a = 83 SCRIBD (_ Search Q ) Download now A India,”’ which indicates that it is an international enterprise with a great deal of resources. Thus, Zoozle has a very high stake in the marke has enough resours es and power to be dominantly influential in international markets and is depended upon by a large majority of consumers in India.”* All of these factors indicate that in terms of online search engines, Zoozle does enjoy a dominant position in the Indian market.“ B. ABUSE OF DOMINANT POSITION BY DENYING COMPETITORS MARKET ACCESS TO ‘THE INFORMANT An enterprise is said to have abused its dominant position if it exploits the same to deny market access to its competitors.”® The extent of the dominant firms’ special responsibility is measured on the basis of the degree of dominance held in that market where the competitive situation is being evaluated,” The informant is denied access to the unique market involved, resulting in an abuse of dominant position. a) The market in the particular case of the informant is unique The market in this case is unique inasmuch as it is accessed through utilizing another service, namely that of online search engines. The informant competes with the respondent in the present case in a market i olving the service of home delivery of food by placing an order online.”” Customers in this market are more aware of the trademarks of the competitors involved than the competitors themselves, and hence their only point of access to the same is by entering these trademarks of parts thereof on search engines, seeking a particular result. Thus, these websites on the internet can only be reached through online search engines such as that of Zoozle, a market in which Zoozle enjoys dominance. 92 Factsheet. 1. 93 The Competition Act, No. 12 of 2003, § 19(4), (2002). 94 See COMP/M5727 MicrosofVY shoo! (2010).. 95 The Competition Act, No. 12 of 2003, § 4(2) (e) (2002) 96 See, Kapoor Glass Private Limited v. Schott Glass India Private Limited, (2013) Indlaw 22. 97 Factsheet, 4 4, 5. 42|Page What is Scribd? $5 M 62 cE) Home Books Audiobooks Documents a @ <b) Denial of market access The AdVarba scheme exploits this position in the market, allowing the highest bidder in its auction to represent the appellants” website as indicative of their own services. The online market is distinct from offline markets,” and Zoozle’s AdVerba scheme discriminates between competitors providing similar services online by mandatorily placing one over the other even when that differs from the organic search results. An agreement under the AdVerba scheme allows one competitor to advertise and promote his website above that of his competitors’, and when a search is made specifically for the competitor, the advertiser can promote his own business instead of the same In the case of the informant, due to the nature of the AdVerba scheme and its allowance of registered trademarks being passed off as representative of others: a potential customer searching for the website of the appellant will be directed towards that of the respondent by virtue of it being “suggested” by Zoozle. Considering that access to this market is only through such search engines, and acknowledging Zoozie’s “super dominance” in the market for the same, the appellant is denied access to this market, Customers in this unique market are precluded from being given access to the website of the informant as it is lower down in the list of search results and hence less likely to be clicked. '"” This is solely because of the involvement of Zoozle under its AdVerba scheme and as it a competitor access to the market, it amounts to an abuse of dominant position. (C. ABUSE OF DOMINANT POSITION TO ENTER INTO ANOTHER RELEVANT MARKET Section 4(2)(e) of the Competition Act asserts that there shall be an abuse of dominant position if an enterprise or a group uses its dominant position in one relevant market to enter into, or protect another relevant market." It is ne ssary 10 define two markets so as to establish abuse of dominance under section 4(2)(e) of the competition act.'" The two 98 COMP/M4731 Google/Double Click (2008). 99 Richard Whish & David Bailey, Competition law 681 (7" ed. 2012). 100 Infederation Ltd. v. Google Ine., EWHC (Ch) 2295, (2013). 101 Competition Act, 2002, §§ 4(2) 4(2) €). 102 Arshiyat Rail Infrastructure and another v. Ministry of Railways and Another, (2012) Indlaw 25. 43|Pagemarkets in the present case are those of online search engines and online search io advertising ser search advertising market in 2011 It is submitted that Zoozle, through its AdVerba scheme abuses its dominant position as it uses this dominance in the online search engine market to enter into another relevant market, that being that of online search advertising There is nothing to suggest that there wasn’t already a market for online search advertising before Zoozle’s foray into the same. Even if there was, Zoozle did not have any stake in that market. It is only in 2011 that Zoozle entered the market to provide advertisements on its website.""* In doing so, it used its presence as a major internet search provider to ensure that it could potentially gain a foothold in the new market. This it did through exploiting its dominant position in the online search engine market which is where the advertisements are posted. It is only because more than 80% of Indian online traffic went through Zoozle’s website that it entered into the online search advertising market and attempted to secure its dominan therein as well through the AdVerba scheme. This is an abuse of its dominant position and is hence violative of the competition act. 103 Google Inc. v. Australian Competition and Consumer Commission (2013) 249 CLR 435 Joined Cases C-236/08 to C-238/08, Google Inc. Louis Vuitton, Google France SARL v Viaticum SA and Another, Google France SARL v. Tiger SARL and Others, 2010 E.C.R.I- 246 104 Factsheet, 4 2. 105 Factsheet, $41, 2 4a)PRAYER FOR RELIEF Wherefore in light of the Issues Involved, Anzuments raised, and Authorities cited, Mr. Arnab Murgwala and , the Appellant, respectfully requests the Court to adjudge and declare that: 1. Mr. Arnab Murgwala and Zoozle GmBH infringed the registered trade mark of the appellant. Mr, Arnab Murgwala and Zoozle GmBH passed off the respondent's services as those belonging to the appellant. 3. The AdVerba Advertisement Scheme is an abuse of dominant position by Zoozle GmBH, 4. The agreement entered into under the AdVerba scheme has an appreciable adverse ct on competition All of which is respectfully affirmed and submitted, On behalf of the Appellant, Mr Arnob Murgwala, 45|Page