The document discusses the Consim controversy regarding Google AdWords. Consim Info, which owns the matrimony portal BharatMatrimony.com, filed a trademark infringement lawsuit against Google and other matrimony portals. Consim argued that when users searched for Bharatmatrimony on Google, ads from competitors were displayed, diverting business away from them. While Google claimed its policies only allow ads for domains trademarked in that country, the court ruled in favor of Consim and prohibited Google from displaying competitors' ads when related search terms were used. The document analyzes arguments on both sides and concludes that trademark law for e-commerce is still developing and companies must be prepared for new internet marketing challenges

1. GOOGLE ADWORDS & CONSIM
CONTROVERSY
SUBMITTED BY: RAHUL SONI
LL.M. (BUSINESS LAW)
ID NO. 530

2. STEPS OF RESEARCH
Observation
Formulation of ‘Idea’
Introduction
Consim controversy
Conclusions

3. OBSERVATION:
This paper shall state that the trademark law
concerning the internet is unsettled, which increasing
trademark infringement and leading to a number of
lawsuits. The paper explores such aspects like domain
name and adwords in relation
to trademark infringement
under consim controversy.

4. IDEA
The internet offers tremendous opportunities to creative
businesses to expand their traditional views of marketing.
However, due to essential nature of the internet system,
which works both on a software system where both
temporary copying and storing is a common place, and a
domain name based system that is overcrowded, companies
must tread carefully when developing marketing strategies
for the internet and demonstrate that trademark law
concerning the internet is unsettled, and will remain the
same for sometime, leading to a number of lawsuits.

5. INTRODUCTION:
A). GENERAL
•Trademarks tie a face to the product. The face is often a
name or a symbol, but it can also be a sound or
smell or even a ‘look’.
• At common law, trademark consisted of a word, phrase,
logo, pattern, colour design or other indicator of the source
of the product under Section 2(1) (zb).
•The purpose of a trademark, traditionally, has been to
protect against the confusions to the consumers when
selecting the products or services.
•Trademarks perform a filtering function for the
consumers, wherein they are able to lower the time and
cost expended for the search of a product based on the
trustworthiness of a producer’s mark.

6. B). TRADEMARK INFRINGEMENT & INTERNET
Dilution is lessening the capacity of a famous mark to identify
and distinguish goods or services.
For dilution, following things should be considered by the
court:
(1)the famousness of a mark,
(2) the commercial use of the trademark in the commerce,
(3) whether the use began after the mark became famous,
(4) whether the use has caused dilution of the distinctive
quality of the mark.
• David v. Goliath was the first issue before the courts while
dealing with the issues of ‘cyber squatting’.

7. CONSIM CONTROVRSY:
Consim Info, which owns matrimony
portal BharatMatrimony.com, filed a
trademark infringement case against the
internet search company Google and three
other matrimony portals Jeevansathi.com,
Shaadi.com and SimplyMarry.com in the
Madras High Court.
WHY?
AN INDIAN company has sued Google
over what it claims is trademark
infringement as it accused the search engine
giant of using it's trademark to divert
business to the competitors.
Consim Info, which runs a number a
portal
including
the
popular
BharatMatrimony.com has stated that when
a user searched for Bharatmatrimony on
Google, the search engine dishes up
advertisements of the competitors.

8. It also said that trademarks are also shown by Google in
links from competitors and as such demanded that
advertisements of competitors are not shown when words
similar to its trademarks are searched.
While not denying that Bharatmatrimony might also be
benefiting, when users searched for the competitors, Consim
said it wants this practice to be stopped.
Apart from Google India, Consim Info has also asked People
Interactive Pvt Ltd, Jeevansathi Internet Services Pvt Ltd and
Times Business Solutions Ltd, to surrender all compact discs,
master copies, advertising materials, pamphlets, brochures,
etc, which bear Consim’s trademarks and/or any other
variants to the company.
While the compensation demanded by Consim Info is only
Rs. 10.05 lakh, this case might force Google India to change it’s
trademark policy.

9. GOOGLE: THE LOST FAITH
Google relied on the fact that its policy protects
the domain name if and only if, the domain
name has been registered as a trademark in
the respective domestic law of trademarks and
a copy of the same has been filed with Google.
 But, at the time infringement was alleged, there
were no competitive ads for Jet Airways,
Microsoft, IBM and many others…
 However, the question of domain name being
capable of registration as a trademark has
been discussed by the Indian courts in several
cases before the SC
 Hence the issue was of „clear infringement of
competitive policy on the internet and
protection of goodwill‟.


10. THE GLOBAL PERCEPTIONS
USA: Google merely provides neutral
tools.
Jurin V. Google, 2010. But in
Rescuecom Corp. v. Google Inc. , held
liable the use of the trademarked word
Europe: not
infringement, alternative
to goods & services.
(Article 5 (1)(a) of
directive 89/104).
Israel: Sponsored linksno illicit advantage that
would amount to
trademark infringement.
Australia: Australian
Competition and
Consumer Commission
(ACCC): not trademark
infringement.
India: restrain from
displaying their names
in the website in the
“Adwords” programme

11. Arguments in Favour
1. Prevention of competitive advertising on E-commerce
platform like Google.
2. Users did not get distracted or misguide, It save time &
money.
3. Trademark is protected even over internet on intangible
manner.
4. Internet offers tremendous opportunities to creative
businesses to expand their traditional views of marketing
like online shopping, payments etc.
5. Trademark act as filtering method which limit the
searching capabilities of search engine.
6. Users get limited information, based on the trademark
over internet.
7. Territorial effect of Trademark in Search Engine
Capabilities.

12. Arguments in Against
1. Search engine is like a dictionary, the reference to a certain
words in a dictionary, cannot be termed as infringement
but in Yahoo!.Inc V. Akash Arora and Anr.
2. Adwords software are available on internet which can
prohibit such ads, so it does not limit the search
capabilities of search engine.
3. Consim had only obtained registration of a ‚combination‛
of words and accordingly, they cannot claim monopoly
over each of the constituent words of the trademark such
as ‚tamil‛, ‚telugu‛ and ‚matrimony‛, as these are
generic terms and part of the public domain.
4. The competitive bidding over the search results of the
search engines involves the democratic enlightenment of
the companies. .
5. There is nothing in the Google’s Policy which is against
the interest of any company.

13. EFFECT AFTER JUDGMENT:
No Adwords
now:

14. CONCLUSIONS:
1. The trademark law for the e-commerce has not gained maturity
and a lot is required to be done in this field in order to combat
with the latest upcoming issues.
2. The companies entering the e-commerce should be well
prepared and should have necessary information regarding the
trends and practices of the same.
3. The Indian community should resort to the issues running in a
careful manner in order to protect the trade rights and trade
related rights of the corporate houses in order to maintain the
democracy in the commerce world and internet arena.
4. The govt may introduce some of the guidelines for the search
engines to be adopted while developing national databases so
that the display pages do not contravene the economic interests
of the companies.