Amity National Moot Court Competition, 2016: Winners and Best Memorial: Respondents

1537 R
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
v.
Arnab Murgawala and Zoozle GmBH
Respondents
Civil Appeal No. ____2015

(Section 53T of the Competition Act, 2002)
Arnob Murgwala
Appellant
v.
Zoozle GmBH
Respondent
Memorial for the respondents, 2015.
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Table of Contents
Index of Authorities....................................................................................................................3
Statement of jurisdiction............................................................................................................6
Statement of Facts......................................................................................................................7
Issues Involved.........................................................................................................................10
Summary of Arguments............................................................................................................11
Arguments Advanced...............................................................................................................14
I.
Use of the impugned keywords does not amount to the tort of passing off.....................14
A.
Arnabs use of the keywords was not done with an intent to deceive.......................14
B.
The defendant is not trying to obtain any undue economic benefit..........................15
C.
No misrepresentation has been made by the respondent to prospective customers. .15
D.
Use of the AdVerba scheme does not damage the business or goodwill of the
appellant...............................................................................................................................16
II.
There is no infringement of trademark.............................................................................17

A.
The use was not in the course of trade......................................................................17
B.
Even if the use was in the course of trade, Section 30 is applicable.........................18
C.
Arnab only used parts of the trademark....................................................................20

a)
Arnab is only using a part of the trademark...........................................................20
b)
Even if Arnab is not using only a part of the trademark, it is still not a violation. 21
D.
The description does not refer to MBBC..................................................................22

c)
The description was only a trade mark parody, not drawing any connection
between the respondent and the appellant........................................................................22
d)
The use of the description is in conformity with the provisions of the Trademark
Act, 1999..........................................................................................................................25
A.
The impugned keywords on account of being descriptive, generic and....................25

a)
The individual parts of the appellants trade mark are in violation of section 9
when read along with sections 15 and 17 of the Trade Marks Act,1999.........................25
b)
The respondent is entitled to the use of such impugned keywords under section 35
of the Trade Marks Act,1999............................................................................................28
c)
Sections 31(2), 32 and the proviso contained in Section 9 does not apply to the
appellant...........................................................................................................................30
d)
E.
The registered trade mark of the appellant doesnt contain any invented word....31
Zoozle is not liable for trademark infringement........................................................32
a)
Zoozle is an intermediary......................................................................................32
b)
Zoozle has not voided an intermediarys exemption from liability.......................33
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F. EVEN IF THE TRADEMARK HAS BEEN USED IN THE COURSE OF TRADE, IT

WILL NOT CAUSE CONFUSION OR CAUSE THE CONSUMER TO BELIEVE THAT
THERE IS AN ASSOCIATION WITH THE REGISTERED TRADEMARK...................35
III.
An agreement entered into under the AdVerba Scheme does not have an Appreciable
Adverse effect on competition.................................................................................................37
A.
Agreements entered into under the AdVerba scheme are not presumed to be anti
competitive...........................................................................................................................37
a)
There is no similarity in provision of services.......................................................38
b)
No necessary adverse effect on competition..........................................................38
B.
The Agreement does not cause an appreciable adverse effect on competition.........39

a)
Aggravating Factors...............................................................................................40
b)
Ameliorating Factors.............................................................................................40
IV.
Whether Zoozle abused its dominant position in the relevant market..........................41
A.
Whether Zoozle has a dominant position in the relevant market..............................41

a. Relevant Geographical Market..................................................................................41
b.
B.
Relevant Product Market.......................................................................................42

Whether Zoozle abused its dominant position in the relevant market......................42
a)
Online search advertising market..........................................................................43
b)
Denial of market access.........................................................................................43
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INDEX OF AUTHORITIES
Cases Cited
1. 1-800 Contacts Inc. v. Lens.com Inc. 722 F.3d 1229 (10th Cir. 2013).
2.
3.
4.
5.
6.
7.
8.
9.
Alan Kenneth Mckenzie Clark v. Associated Newspapers Ltd, [1998] RPC 261
Aravind Laboratories v V.A. Sami Chemical Works, A.I.R. 1987 Mad 265
B.C.W.C.S. (P) Ltd v. I.C.W. Co-op Society Ltd, (1999) 1 KLT 322
Better Living, Inc. et al., 54 F.T.C. 648 (1957), aff'd, 259 F.2d 271 (3rd Cir. 1958)
C-236/08 to C-238/08, Google Inc. Louis Vuitton, 2010 E.C.R. I-2467
C-237/08 Google France SARL v. Viaticum SA and Another, 2010 E.C.R. I-2467
C-238/08 Google France SARL v. Tiger SARL and Others, 2010 E.C.R. I-2467
Cadila Healthcare Ltd v. Gujarat Co-operative Milk Marketing Federation Ltd, (2009)
41 PTC 336
10. Cadilla Healthcare Ltd v. Cadilla Pharmaceuticals Ltd , A.I.R. 2001 SC
11. Cellular Clothing Co. Ltd. v. Maxton & Murray, [1899] A.C. 326
12. COMP/M5727 Microsoft/Yahoo! (2010); COMP /M4731Google/Double Click
(2008).
13. Consim Info Pvt Ltd. v. Google India Pvt Ltd., (2012) Indlaw 2621..
14. Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143
15. Google Inc. v. Australian Competition and Consumer Commission (2013) 249 CLR
435.
16. Harrods Ltd v. Harrodian School Ltd, [1996] RPC 697
17. Hawkins Cookers Limited v. Murugan Enterprises, (2008) 36 PTC 290
18. In Marico Limited v. Agro Tech Foods Limited, (2010) 44 PTC 736
19. J. & P. Coats Ltd v Chadha & Co., A.I.R. 1967 Del 41
20. J.R. Kapoor v. Micronix India, (1994) Supp (3) SCC 215
21. Jupiter Gaming Solutions Private Limited v. Government of Goa and Another, (2011)
Indlaw 22.
22. Kapoor Glass Private Limited v. Schott Glass India Private Limited, (2010) Indlaw
22.
23. Laugh it Off Promotions CC v. Freedom of Expression Institute 2006 (1) SA (CC) 144
(S. Afr.)
24. Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC, 507 F.3d 252 (4th Cir. 2007)
25. Manish Vij v. Indra Chugh, A.I.R. 2002 Del 243
26. N.R. Dongre v. Whirlpool Corpn., (1996) 5 SCC 714
27. National Sewing Thread & Co v. James Chadwick, A.I.R. 1953 SC 357
28. Neeraj Malhotra, Advocate v. Deutsche Post Bank Home Finance Limited (Deutsche
Bank) and Others, (2010) Indlaw 28.
29. Nestles Products (India) Ltd v. P. Thankaraja, A.I.R. 1978 Mad 336
30. Network Automation, Inc., v. Advanced Systems Concepts Inc. No., 638 F.3d 1137
(9th Cir. 2011).
31. Pankaj Gas Cylinders Limited v. Indian Oil Corporation Limited (2011) Indlaw 27.
32. Pepsi Co., Inc. v. Hindustan Coca Cola Ltd, (2003) 27 PTC 305
4|Page
33. Playboy Enterprises, Inc. v. Netscape Communications Corporation, 354 F.3d 1020
34. Pravahan Mohanty v. HDFC Bank Limited, Chennai and Another, (2011) Indlaw 19.
35. Rajkumar Dyeing and Printing Works Private Limited v. Competition Commission of
India W.P. (C) 5947/2014.
36. Rich Products Corporation v. Indo Nippon Food Ltd, (2010) 42 PTC (Del)
37. Shamsher Kataria v Honda Siel Cars India Limited and others, (2014) Indlaw 50
20.6.11.
38. Sons Limited v. Greenpeace International , (2011) 45 PTC 275
39. Three-N-Products Private Limited v Emami Limited (2009) 41 PTC 689
40. United Iron & Steel Works v. Govt. of India, A.I.R. 1967 P&H
41. Wander Ltd v. Antox India Pvt. Ltd, (1990) Supp (1) SCC 727
42. Yashoda Hospital and Research Centre Limited, Uttar Pradesh v. Indiabulls Financial
Services Limited (IFSL), New Delhi, (2011) Indlaw 5
43. Anand Brothers Private Limited Through M.D. v Union of India and others, (2014)
SC 588 Indlaw.
44. Consim Info Private Limited, Represented by its Director and Chief Executive v
Google India Private Limited and others, (2010) MAD 2449 Indlaw.
45. Dashrath Rupsingh Rathod v State of Maharashtra and another, (2014) SC 494 Indlaw
46. Filipino Yellow Pages, Inc. v. Asian Journal Publications Inc., 198 F.3d 1143, 1146-47
(9th Cir. 1999).
47. Heinz Italia S.R.L. and Another v Dabur India Limited and Others, (2008) CAL 51
Indlaw.
48. Hyder Consulting (UK) Limited v Governor, State of Orissa Through Chief Engineer,
(2014) SC 799 Indlaw.
49. Kamaljit Singh v Sarabjit Singh, (2014) SC 577 Indlaw
50. Marico Ltd. v. Agro Tech Food, (2010) DEL 1849 Indlaw.
51. Murlidhar Shivram Patekar and another v State of Maharashtra, (2014) SC 649
Indlaw.
52. Neel Electro Techniques and others v Neelkanth Power Solution and another, (2014)
MUM 647 Indlaw.
53. Newsweek Inc. v British Broadcasting Corporation, (1979) R.P.C. 441 (C.A.).
54. Ptc India Ltd. v Central Electricity Regulatory Commission, Thr. Its Secretary, (2009)
SC 304 Indlaw.
55. Stock Exchange, Bombay v V. S. Kandalgaonkar and others, (2014) SC 669 Indlaw.
56. Stokely Van Camp, Inc. and another v Heinz India Private Limited, (2012) DEL 1744
Indlaw.
57. Superfil Products Limited Represented by its Managing Director S. Narayan, Chennai
v Sreema Nets Represented by its Partner/Proprietor, Tamil Nadu and another, (2015)
MAD 3 Indlaw.
58. Warner Bros. Entertainment Inc and Another v Harinder Kohli and Others, (2008)
DEL 1092 Indlaw.
5|Page
59. Yasha Overseas and Others v Commissioner of Sales Tax and Others, (2008) SC 1243
Indlaw
Legislation
1. The Competition Act, No. 12 of 2003
2. The Indian Penal Code, 1860.
3. The Information Technology (Amendment) Act, 2008.
4. The Trade Marks Act, 1999.
Books
1. ANANTH PADMANABHAN , INTELLECTUAL PROPERTY RIGHTS: INFRINGEMENT AND
REMEDIES (1st ed. 2006)
2. P. NARAYANAN, LAW OF TRADE MARKS AND PASSING OFF (6th ed. 2004)
3. Blacks Law Dictionary 352 (6th ed. 1990)
4. J. McCARTHY, TRADEMARKS AND UNFAIR COMPETITION 19-23, (Clark Boardman
Callaghan) (1988) (4th Edn. 1988)
5. Merriam-Webster Dictionary 782 (11th ed. 2003)
STATEMENT OF JURISDICTION
I.CivilAppealNo.____2015
TheAppellanthasapproachedthisHonourableCourtunderSection135oftheTrademarks
Act,1999readwithSection38oftheSpecificReliefAct,1963.TheRespondentshumbly
submittothejurisdictionofthisHonourableCourt.
II.CivilAppealNo.____/2015
TheAppellanthasapproachedthisHonourableCourtunderSection53ToftheCompetition
Act,2002.TheRespondentshumblysubmittothejurisdictionofthisHonourableCourt.
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STATEMENT OF FACTS
BACKGROUND
ZOOZLE GMBH
Zoozle GmBH is a multinational company headquartered in Berlin that operates an internet
search engine http://www.zoozle.com. The website is used by more than 80% of Indian
internet users on a daily basis, and is accessed by 60% of internet users worldwide. The
website works by automatically generating an organic search list on the basis of queries
entered into the search toolbox by users. There is no human interface in the generation of
these search results, which are arranged in order of relevance based on an algorithm.
THE RESTAURANTS
Murgwalas 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. Arnob Murgwala and Mr. Arnab Murgwala. The amicable division of property
saw Mr. Arnob Murgwala taking control of the restaurant business. Its trademark was
registered in 1993, although it had been in use since 1959. Mr. Arnob also created a website
for MBBC www.bestbutterchicken.com which allowed prospective consumers to place
online orders for home delivery. Mr. Arnab Murgwala founded the restaurant Arnabs Butter
Chicken
(ABC)
in
the
year
1990
in
Kolkata,
creating
the
website
www.arnabbutterchicken.com. It too allows customers to place orders for home delivery.

Mr. Arnab opened an outlet of ABC in Delhi in 2007. He registered the trademark used by
ABC in the year 2000.
THE 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 internet users on the website yielded hyperlinks and a description
thereof; which were chosen by the highest bidder. These hyperlinks were triggered in addition
to the organic search list, and are separated from the same by being placed above the same,
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
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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. Arnabs 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 asked them to remove certain keywords that were his registered
trademarks. Zoozle responded by saying that they believed that the keywords belonging to
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
Mr. Arnob subsequently filed a suit in the Delhi High Court seeking permanent injunction
restraining Zoozle GmBH from using 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. Arnobs appeal before the Division Bench of the High
Court was dismissed at the admission stage itself.
COMPETITION COMMISSION
In November 2012, Mr. Arnob 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,
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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. Arnob 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.
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ISSUES INVOLVED
I.
Whether the use of the impugned keywords by Arnab under the AdVerba advertising scheme
amount to the tort of passing off?
II.
Whether the description Better than the Best Butter Chicken used by the respondent in his
advertisement constitutes infringement of the appellants trademark?
III.
Whether the impugned keywords on account of being descriptive, generic and laudatory
ought not to have been registered?
IV.
Whether Arnab and Zoozle through the use of the AdVerba scheme have infringed the
registered trade mark of the appellant?
V.
Whether the agreement entered into under the AdVerba scheme has an appreciable adverse
effect on competition?
VI.
Whether Zoozle abused its dominant position in the relevant market?
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SUMMARY OF ARGUMENTS
I. USE OF THE IMPUGNED KEYWORDS DOES NOT AMOUNT TO THE TORT OF PASSING OFF
For the tort of passing off four things need to be established, (i) intention to deceive, (ii)
attempt to obtain undue economic benefit and (iii) a misrepresentation which (iv) damages
the goodwill of the plaintiff. The respondent is entitled to the use of all the parts of the
registered trade mark of the appellant since it contains his surname or generic words.
Therefore, he has made use of the AdVerba advertising scheme simply to get his services
advertised in a new market and without any intention to deceive consumers regarding the
origin of such services. There exists no possibility of confusion in the minds of the consumers
as the link to the respondents website is shown in a different manner as compared to the
organic search results. In the absence of any of the essential conditions being fulfilled, the
respondent has not resorted to the tort of passing off.
II. THE
USE OF THE IMPUGNED KEYWORDS BY THE RESPONDENT DOES NOT AMOUNT TO
TRADEMARK INFRINGEMENT
A. The use was not in the course of trade

The use was not in the course of trade, as online advertising through keywords does not yet
constitute something common or customary enough to be considered to be in the course of
trade.
B. Even if the use was in the course of trade, Section 30 is applicable
Section 30 says that trademark infringement cannot be said to have occurred when the use in
relation to goods indicates the kind, quality, or other characteristics of goods or services. In
this case, the words indicate the kind and quality of the goods. Therefore, Section 30 is
applicable.
C. Arnab only used parts of the trademark
Arnob does not have exclusive right over the parts of his trademark, and Arnab only used
parts. The argument that the parts of the trademark had attained a non-distinctive status is not
solid, as they have in fact not attained such a status.
D. The description does not refer to MBBC
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The description does not refer to MBBC at all. The expression Better than the Best Butter
Chicken is just a superlative phrase intended to portray the respondents services in a
positive light. The respondent has simply resorted to puffery, which is legal. Even if we
concede that the expression refers to MBBC then also it does not constitute infringement of
the appellants registered trade mark as the expression is just a trade mark parody. Such
parodies do not constitute use in the course of trade as is required by section 29 of the
Trademark Act 1999 to prove infringement since it is not used to draw a trade connection
between the plaintiff and the defendant.
E. The impugned keywords on account of being descriptive, generic and laudatory ought
not to have been registered
Section 9 of the Trade Marks Act, 1999, which lays down the absolute grounds for refusal of
registration states that marks devoid of any distinctive character, or intended to designate the
kind, quality and intended purpose of the product or have become customary in the current
language should not be registered. The words best butter chicken are descriptive in nature
and indicate the quality of the goods. The respondent is entitled to use such words under
section 35 of the act. This section also confers on the respondent the right to his name (which
includes surname), and therefore the respondent can make use of the word Murgwala.
F. Zoozle is not liable for trademark infringement
Zoozle, being a search engine, comes under the definition of an intermediary. An
intermediary shall not be liable for any third party information, data, or communication link
hosted by him according to the IT Act. Moreover, Zoozle has not voided its exemption from
liability under any subsection of the IT Act.
G. Even if the trademark has been used in the course of trade, it will not cause confusion
or cause the consumer to believe that there is an association with the registered
trademark
The mark of Arnab is not similar to the registered trade mark of Arnob and the identity or
similarity of the goods or services covered by such registered trade mark is not likely to cause
confusion on the part of the public, or which is likely to have an association with the
registered trade mark.
12 | P a g e
III. AN
AGREEMENT ENTERED INTO UNDER THE
ADVERBA SCHEME
DOES NOT HAVE AN
APPRECIABLE ADVERSE EFFECT ON COMPETITION

It is submitted that Zoozle does not enter into any agreements that may be presumed to be
anti-competitive, and that these agreements do not adversely affect competition as per the
Competition Act. Firstly, Zoozle does not provide similar services as the companies that it
enters into an agreement with under the AdVerba scheme; which is a prerequisitie for
presuming agreements to be anti competitive. Further, there is no necessary adverse effect of
such agreements on competition. They are simply means of advertising to a new consumer
base on the internet. Measuring this agreement against the parameters set down under Section
3(3) of the Competition Act, it is submitted that none of the factors are met and hence the
agreement cannot be presumed to be anticompetitive. Secondly, it is submitted that there is no
appreciable adverse effect on competition under Section 19(3) as the agreement does not
create barriers to new entrants into the market, nor does it hinder entry into the same. In fact,
by virtue of it allowing a competitor to advertise its services on a previously untapped
consumer source, it enhances competition. Thus, the balance of positive and negative impacts
of the agreement falls in favour of the positive and hence does not adversely affect
competition. The agreements are thus not anti competitive.
IV. ZOOZLE DID NOT ABUSE ITS DOMINANT POSITION IN THE RELEVANT MARKET
Zoozle has a dominant position in the market for online search engines, which is distinct from
the market for online search advertising. It is submitted that Zoozle does not abuse its
dominant position in these markets and that it does not deny market access to any competitor
by virtue of its AdVerba scheme. Firstly, there is nothing to suggest that Zoozle enjoys
dominance in the online search advertising market. While it does enjoy dominance in the
online search engine market, mere dominance is not anti competitive it is only when it is
abused are the provisions of the competition act attracted. Access to the relevant market in
this case is not denied as the agreement merely seeks to provide advertisement facilities to a
company, without any mind to the market involved or its competitiveness. This scheme and
the subsequent agreement are just reasonable business practices and not egregious enough to
be regarded as an abuse of dominant position.
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ARGUMENTS ADVANCED
I. USE OF THE IMPUGNED KEYWORDS DOES NOT AMOUNT TO THE TORT OF
PASSING OFF
Passing off is a common law tort, remedy for which is available to both registered as well as
unregistered trademarks,1 aimed at protecting the business reputation or goodwill of the
business.2 As held by the Supreme Court of India in the case of Wander Ltd v. Antox India
Pvt. Ltd3 a 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 [C] a misrepresentation made by a trader to his
prospective customers calculated to injure, as a reasonably foreseeable consequence, the
business or goodwill of another [D] which actually or probably causes damage to the business
or goodwill of the other trader. It is hereby submitted that none of these essential elements
required to prove passing off have been satisfied in the respondents use of Zoozles AdVerba
advertising scheme.
A. ARNABS USE OF THE KEYWORDS WAS NOT DONE WITH AN INTENT TO DECEIVE
In the year 2012 the respondent had bought around fifty keywords 4 including some which the
appellant claims to have been done with an intention to pass off his services as those of the
appellant. The court has to examine whether the adoption of the allegedly infringing mark
was
done
with
an
intention
of
exploiting
the
goodwill
of
the
user.5
It is submitted that the use of such keywords by the defendant was not done with any
intention to deceive consumers regarding the origin of services, nor to suggest an association
between
the
two
parties,
but
rather
to
promote
his
own
1ANANTH PADMANABHAN , INTELLECTUAL PROPERTY RIGHTS: INFRINGEMENT AND

REMEDIES 56(1st ed. 2006).
2Id.
3Wander Ltd v. Antox India Pvt. Ltd, (1990) Supp (1) SCC 727.
4Factsheet 6 line 2.
5N.R. Dongre v. Whirlpool Corpn., (1996) 5 SCC 714.
14 | P a g e
interests.
Any consumer while searching for a fast food restaurant is bound to enter into the search
toolbox words like best, butter and chicken, without specifically referring to MBBC. The
word Murgwala also hasnt been used in order to deceive the consumers regarding the
origin of services because it is also the surname of the defendant, and a prospective consumer
while looking for the defendants restaurants website may use the surname of the proprietor.
The word Arnob has been used because a consumer might misspell the name of the
defendant and not in order to confuse the consumer with respect to the origin of services.
Once a common phrase in the English language which directly describes the product is
adopted by any business enterprise, such adoption naturally entails the risk that others in the
field would also be entitled to use such phrases, provided no attempt is made to ride on the
bandwagon of such enterprises product.6 Therefore the words Best Butter Chicken form a
common phrase in the English language which has been used by the respondent in order to
reflect his own services in a positive light and not as a reference to MBBC.
B. THE DEFENDANT IS NOT TRYING TO OBTAIN ANY UNDUE ECONOMIC BENEFIT
The use of Zoozles AdVerba scheme was undertaken by the respondent only for the purpose
of advertising his own services and not to obtain any undue economic benefit based on the
reputation of the appellant. The use of the keywords by the respondent was not done with an
intention to deceive any consumer regarding the origin of services, but with an honest
intention to get his own services publicized in a new market. Hence there arises no question
of the respondent trying to obtain any economic benefit by riding on the reputation of the
appellants business. There is no attempt to divert customers away from the appellants
business, but rather an attempt to get customers to his own store through such advertisements.
C. NO MISREPRESENTATION HAS BEEN MADE BY THE RESPONDENT TO PROSPECTIVE
CUSTOMERS
A misrepresentation would be present if the use of the AdVerba advertising scheme by the
respondents was of such a nature that would create confusion in the minds of the consumers
that the services of the respondent belong to or are associated with the services of the
appellant.
6 Cadilla Healthcare Ltd v. Cadilla Pharmaceuticals Ltd , A.I.R. 2001 SC 1952.

15 | P a g e
As opposed to infringement where mere imitation or similarity between two trademarks is

sufficient to establish that the plaintiffs rights were violated, 7 in passing off the defendant
wont be liable as long as the surrounding circumstances connected with the use of the mark
was sufficient to distinguish the goods from those of the plaintiff. 8 It is submitted that there
would be no likelihood of confusion on part of the consumers when some selected keywords
are entered by a person into Zoozles search toolbox which trigger the display of display the
website links of both the appellants and respondents business. This is because the link to the
appellants website would come under the organic search list of hyperlinks, 9 whereas the
respondents link, being advertised through the AdVerba scheme would appear above the
organic search list10 and is distinguishable from it since they are shaded in a light yellow
colour11 and the words Sponsored Ads would appear alongside them.12 Other than all these
elements which help distinguish the respondents website from that of the appellant, a
description of the respondents website is also added under his link 13, an option which is not
available to websites which appear as organic search results. Hence there is no chance of the
respondents services being misrepresented as those of the appellant as no customer would
decipher a commercial connection between the appellant and respondent simply because the
links of their websites may appear alongside each other.
D. USE OF THE ADVERBA SCHEME DOES NOT DAMAGE THE BUSINESS OR GOODWILL
OF THE APPELLANT
7J. & P. Coats Ltd v Chadha & Co., A.I.R. 1967 Del 41.
8Three-N-Products Private Limited v Emami Limited (2009) 41 PTC 689 ; National Sewing
Thread & Co v. James Chadwick, A.I.R. 1953 SC 357.
16 | P a g e
Passing off cannot be established merely because a similar name was adopted by the
respondent, as the final outcome would depend on the impact that such adoption would have
on the goodwill of the trade mark of the appellant.14
As shown, the use of certain keywords which the appellant claims amounts to the tort of
passing off, has in fact been used by the respondent solely for the purpose of advertising his
own services without any intention to damage the goodwill of the appellant. In the absence of
any intent to deceive, any undue economic benefit and misrepresentation, the question of the
goodwill of the appellant being injured on account of the respondents action does not arise.
To show actual damage the appellant has to let in evidence as to the damage suffered by him
on account of the respondent.15 There is no evidence with the appellant to show any damage
that has already accrued to him. Also, no probable damage can occur because of the actions
of the respondent as he has only done this with the bona fide intention of promoting his
services, and not to adversely affect the goodwill of his competitor.
II. THERE IS NO INFRINGEMENT OF TRADEMARK
The Trademark Act says16 that a registered trademark is infringed by a person who, not be
being a registered proprietor or a person using by way of permitted use, uses in the course of
trade a mark which because of its similarity to the registered trade mark 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 pubic, or which is likely to have an association with the
registered trade mark. Moreover, infringement also occurs when a person uses a registered
trademark.
14Harrods Ltd v. Harrodian School Ltd, [1996] RPC 697.

15Aravind Laboratories v V.A. Sami Chemical Works, A.I.R. 1987 Mad 265.
16 The Trade Marks Act, No. 47 of 1999, 29(2)(b) (1999).
17 | P a g e
Subsection (5)17 and (6)18 speak of infringement by using a registered trademark. A registered
trademark is infringed by a person if he uses such registered trade mark, as his trade name or
part of his trade name, or name of his business concern or part of the name of his business
concern dealing in goods or services in respect of which the trade mark is registered. 6 (d)
defines using a registered trademark as uses the registered trade mark on business papers or
in advertising.
A. THE USE WAS NOT IN THE COURSE OF TRADE
In the absence of a definition of course of trade being given in the act, the appellant submits
that the Court should refer to the definition of the word given in Blacks Law Dictionary.
There exists past precedence on why Blacks Law Dictionary should be referred to in the
case of Hyder Consulting (UK) Limited v Governor, State of Orissa Through Chief
Engineer19, the Supreme Court referred to Blacks Law Dictionary for clarification when the
Arbitration and Conciliation Act, 1996, was silent as to the meaning of the terms sum and
interest. Similarly, the Supreme Court has also turned to Blacks Law Dictionary to
understand the meaning of terms like finding 20, preponderance of evidence21, statutory
lien22, and so on for various 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 required23.
17 The Trade Marks Act, No. 47 of 1999, 29(5) (1999).
19 Hyder Consulting (UK) Limited v Governor, State of Orissa Through Chief Engineer,
(2014) SC 799 Indlaw.
20 Anand Brothers Private Limited Through M.D. v Union of India and others, (2014) SC
588 Indlaw.
21 Murlidhar Shivram Patekar and another v State of Maharashtra, (2014) SC 649 Indlaw.
22 Stock Exchange, Bombay v V. S. Kandalgaonkar and others, (2014) SC 669 Indlaw.
23 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; Ptc India Ltd. v Central
Electricity Regulatory Commission, Thr. Its Secretary, (2009) SC 304 Indlaw.
18 | P a g e
Therefore the course of trade can now be defined as what is customarily or ordinarily done
in the management of trade or business24.
It is the respondents submission that this definition implies that the purchase of keywords
does not constitute course of trade. The rationale behind this is simple for something to be
in the course of trade, it must be ordinarily done in the management of trade. What this means
is that it must be a part of the mainstream, an expected, necessary and obvious part of running
a business. It is not the respondents contention that advertising is not a part of the course of
trade. Instead, the contention is that online advertising specifically is not yet a part of the
course of trade as it is not something which is as of now customarily done in the course of
trade. A study done by Boston University has shown that only three per cent of the total
advertising expenditure carried out by small businesses is being used online25. This
percentage is so low as to be almost negligible.
Moreover, this is looking at online advertising in totality. If one were to examine in isolation
the business expenditure of an average enterprise on the purchase of keywords as a
percentage of total advertising expenditure, it would be a fraction of this three per cent.
It is the respondents submission that online advertising through keywords does not yet
constitute something common or customary enough to be considered to be in the course of
trade.
B. EVEN IF THE USE WAS IN THE COURSE OF TRADE, SECTION 30 IS APPLICABLE
It is the submission of the respondent that this does not constitute the course of trade. Instead
of being used in the course of trade, the use of these words was merely in a descriptive sense.
It is imperative here that the Court also consider the fact that the only way Arnabs Butter
Chicken can advertise at all would be to describe the nature of the services it renders or the
nature of the commodity it sells. According to Section 30(2)(a) 26, trademark infringement
24 Blacks Law Dictionary 352 (6th ed. 1990).
25 UNLOCKING THE DIGITAL-MARKETING POTENTIAL OF SMALL BUSINESSES,
https://www.bcgperspectives.com/content/articles/digital_economy_marketing_sales_unlocki
ng_digital_marketing_small_businesses/ (last visited Jan. 21, 2015).
26 The Trade Marks Act, No. 47 of 1999, 30(2)(a) (1999).
19 | P a g e
cannot be said to have occurred when the use in relation to goods or services indicates the
kind, quality, quantity, intended purpose, value, geographical origin, the time of production of
goods or of rendering of services or other characteristics of goods or services.
In this case, the words being used are words like best, butter, and chicken. It is therefore the
respondents submission that these words indicate the kind and the quality of the goods in
question. Moreover, it must also be considered that there is no alternative way of discussing
these services and their nature. Therefore, if the Court were to rule in the favour of the
appellant, it would be crippling the plaintiff immeasurably and ensuring that he cannot in all
fairness advertise his product.
It was held in the case of Marico Ltd. v. Agro Tech Food27, where the clause of contention
was low absorb technology that not only the plaintiff has no exclusive rights whatsoever to
the trademarks because they are such which fall within the mischief of Section 30(2)(a), the
respondent/defendant is always fully justified and entitled to use the descriptive words in any
and every manner that it so chooses and pleases to do. If there are no rights of the plaintiff to
exclusive user of the trademark then where does arise the question of disentitlement of a
defendant to use the trademark of the appellant inasmuch as any person who adopts a
descriptive word mark does so at its own peril in that any other person will also be fully
entitled to use the same in view of a specific statutory rights thereto, and there are various
other statutory rights including that under Section 30(2) (a).
In the case of Stokely Van Camp, Inc. and another v Heinz India Private Limited 28, the judge
observed that Once one were to come to the conclusion that the expression "Rehydrate
Replenish Refuel" are commonly used in the trade which relates to energy drinks or
supplements then it matters little where it is displayed on the product - as it prima facie
establishes that the said words/expressions are commonly used in the trade to describe the
characteristic of the goods in issue. Due to this reason he ruled that there could be no
violation because of the provisions of Section 30(2)(a) as long as it could be established that
the words in question are commonly used in the trade.
27 Marico Ltd. v. Agro Tech Food, (2010) DEL 1849 Indlaw.

28 Stokely Van Camp, Inc. and another v Heinz India Private Limited, (2012) DEL 1744
Indlaw.
20 | P a g e
In Filipino Yellow Pages, Inc. vs. Asian Journal Publications, Inc. 29, the Court decided on a
test for figuring out whether or not a term is generic.In determining whether a term is
generic, we have often relied upon the "who-are-you/what-are-you" test: "A mark answers the
buyer's questions "Who are you?' 'Where do you come from?' 'Who vouches for you?' But the
generic name of the product answers the question 'What are you?' ". Under this test, "if the
primary significance of the trademark is to describe the type of product rather than the
producer, the trademark is a generic term and cannot be a valid trademark. Words like best,
butter, and chicken fit this perfectly they describe the type of product, rather than the
producer and hence are not protected.
In fact, in the case of Heinz Italia S.R.L. and Another v Dabur India Limited and Others 30, the
Court even held that the word Glucose D could not be protected despite its fairly distinctive
character as Glucose D is a genetic mark and the respondent has legitimate and statutory right
to use thereof permitted by Section 30(2)(a). In comparison, words like best, butter, and
chicken are so generic that the idea of giving them protection is very nearly laughable.
Due to this reason, they fall squarely within the ambit of Section 30(2)(a), and hence cannot
be said to constitute infringement.
C. ARNAB ONLY USED PARTS OF THE TRADEMARK
a) Arnab is only using a part of the trademark
According to Section 17(1)31, when a trade mark consists of several matters, its registration
shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.
Subsection 232 of the same section expounds on that by saying 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
29 Filipino Yellow Pages, Inc. v. Asian Journal Publications Inc., 198 F.3d 1143, 1146-47 (9th
Cir. 1999).
30 Heinz Italia S.R.L. and Another v Dabur India Limited and Others, (2008) CAL 51
Indlaw.
21 | P a g e
contains any matter which is common to the trade or is otherwise of a non - 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 proprietor as a trade mark; or
(b) Contain any matter which is common to the trade or is otherwise of a non - distinctive
character; 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.
The respondent submits that because of the following conditions, he cannot be held for
infringement as the appellant has no exclusive right over use of part of his trademark.
The respondent has at no point used the trademark as a whole. He only purchased fifty
individual words as keywords33. These keywords included generic keywords such as best,
butter, and chicken. In fact, the only non-generic keywords that this list of fifty words
contained (besides mis-spellings of generic words) were the words Arnab (and its misspelling Arnob) and Murgwala. It is stated in the Trademark Act itself that nothing in the Act
shall entitle the proprietor or a registered user of a registered trade mark to interface with any
bona fide use by a person of his own name 34. If he were to be restrained from using his own
name, that would go against statute blatantly. Therefore, that cannot be done.
Moreover, the problem only speaks of the possibility of any three of these words in
combination into the Zoozle search bar, the search result page would contain a suggested
post35. The trademark consists of a total of four words the problem only speaks of
purchased results when a combination of any three of the fifty words are typed in
combination. It does not mention at all that a combination of four words could cause
infringement.
The respondent submits that since there exists no protection for a partial trademark, and the
sponsored results in question only show up in cases of three words being entered (there is no
reason whatsoever to believe that that entering all four words i.e. Murgawalas Best Butter
33 Factsheet 6 line 2.
34 The Trade Marks Act, No. 47 of 1999, 35 (1999).
22 | P a g e
Chicken would give a result for Arnabs company), this renders impossible the chance of the
trademark being infringed.
b) Even if Arnab is not using only a part of the trademark, it is still not a
violation
An argument can be made that the appellant possesses an exclusive right over the parts of a
trademark as well. This is according to subsection 2 of section 1736 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. This implies directly the fact that if the
parts of a trademark are of a distinctive character, then in that case the trademark holder does
possess rights over them specifically as well.
However, that does not hold true in our case.
The trademark in question is Murgwalas Best Butter Chicken. With the exception of the
word Murgwala, the other three words are generic. They cannot be said to hold any kind of
distinctive character.
D. THE DESCRIPTION DOES NOT REFER TO MBBC
The respondent is a proprietor of a restaurant which also offers home delivery services. Being
a new entrant into the geographical market of Delhi the respondent sought to advertise this
through the use of Zoozles AdVerba advertising scheme which offers the option to the
advertiser to add a short description along with the link to his website. 37
Being a new vendor and needing to create a niche for himself in a flooded market, it is quite
natural for Arnab to resort to aggressive marketing and a targeted sales strategy. To
accomplish this, he resorted to puffery, which is defined as a term frequently used to denote
the exaggerations reasonably to be expected of a seller as to the degree of quality of his
product. Puffery is legal.38

23 | P a g e
The best butter chicken is a superlative phrase; it is grammatically impossible for anything to
be better than the best butter chicken. Thus the fact remains that this was an exaggeration
reasonably to be expected as to the degree of quality of his product. There is no proof as to
the fact that Arnab intended for the phrase to be used as a comparative in any way, and
absolutely no proof as to show that Arnab was trying to pass off his product as that of
Arnobs.
c) The description was only a trade mark parody, not drawing any
connection between the respondent and the appellant
The respondent submits that even if we were to assume for a moment that the Court is to hold
Arnabs products description to be referring to MBBC, it would still not constitute
infringement, because this is a trademark parody.
Trade Mark parodies, such as the one used by the respondent do not constitute use in the
course of trade39 as is required by section 29 of the Trademark Act 1999. This is because in a
trade mark parody the mark of the plaintiff is not used in order to draw any trade connection
between the plaintiff and the defendant,40 but for quite the opposite reason, i.e. to distinguish
between them. It is used to draw a clear separation between the plaintiffs goods or services
and those of the defendant.
In the case of trade mark parodies there is a reference made to the competitors trade mark,
however it is done to convince customers that their product or service has various
comparative advantages over the products or services of their rivals. It is obvious that such
comparison cannot occur without drawing in a reference to the rivals product or brand
name.41 The reference to the plaintiffs mark is only nominative in character, i.e. to identify
the plaintiffs mark as it is, without seeking to derive any connection between this mark and
the defendant.
38Better Living, Inc. et al., 54 F.T.C. 648 (1957), aff'd, 259 F.2d 271 (3rd Cir. 1958).
39Padmanabhan, supra note 1, at 71.
24 | P a g e
In Pepsi Co., Inc. v. Hindustan Coca Cola Ltd 42 the Delhi High Court held that usage of the
plaintiffs mark by the defendant in the course of trade has to be in relation to the goods of
the appellant and in such manner rendering such use likely to be construed as being used as a
trade mark by the respondent. The court said that if a trader were to compare his goods with
the goods of a rival without in any way advertising that the rivals trade mark was used in
relation to his goods, there was prima facie no infringement. The court concluded that the use
of the phrase in the defendants advertisement could at best be construed as mocking or
parodying in the context in which it is used and would not amount to infringement of the
plaintiffs trade mark. Similarly, the description Better than the Best Butter Chicken has
been added by the respondent only for the purposes of advertising his own services and its
use cannot be construed to be used as a trademark. The respondent was simply comparing his
services to those of the plaintiff without, in any way, advertising that Arnobs trademark was
being used in relation to his services. The use was only nominative in character, to identify
the respondents services in a more positive light without seeking to derive any connection
with the appellants business. As opposed to the aforementioned Delhi High court case, the
use of such a description by the respondent doesnt even amount to parodying or mocking
of the appellants trade mark, since the respondent is simply making an advertising claim that
his services are better than those of the plaintiff. In Tata Sons Limited v. Greenpeace
International43 the court observed that the defendants argument that they can make
reasonable comment, ridicule, and parody of the registered trade marks, is persuasive.
In Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC 44 the court held that a successful
parody might actually enhance the famous marks distinctiveness by giving it iconic status,
with the brunt of the joke ending up as yet more famous. Therefore there is no intention on
the part of the defendant to malign or injure in any way the reputation of the appellants
business as this advertisement can be considered at most, as an acknowledgement of the good
name of MBBC and not as a mockery of it.
42Pepsi Co., Inc. v. Hindustan Coca Cola Ltd, (2003) 27 PTC 305.
43Sons Limited v. Greenpeace International , (2011) 45 PTC 275.
44Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC, 507 F.3d 252 (4th Cir. 2007).
25 | P a g e
Also, the fact that the message could have been conveyed by means other than parody would
not be decisive or even significant.45 Therefore an argument that such a description could
have been advertised through any other mode but AdVerba is also not valid.
In Alan Kenneth Mckenzie Clark v. Associated Newspapers Ltd46 the court concluded that the
defendant had to establish two things. Firstly, that such representation (express or implied)
hadnt been authored by the plaintiff and secondly, that a substantial body of readers would
not be misled. Thus, a parody which occasioned only a momentary and inconsequential
deception was both successful and permissible, but a parody which occasioned an enduring
deception was held to be neither.47 In the description used by the respondent there can be no
confusion, either express or implied, that it has been authored in any way by the appellant.
The words Better than the Best Butter Chicken very clearly distinguishes the services of the
respondent from that of the appellant and hence no reason that the consumers can be misled
regarding the origin of services.
In Hawkins Cookers Limited v. Murugan Enterprises 48 the Delhi High Court held that the
defendant had fulfilled the condition of honest use since no customer could decipher a
commercial connection between the plaintiff and the defendant. The use was more in the
nature of indicating the intended purpose of the product marketed by the defendant, and not
one that resulted in the dilution of the value of the plaintiffs trade mark by taking any unfair
advantage of its distinctive character or repute. The respondents use of the description was
also done with a bona fide intention not intending to draw any kind of commercial connection
between himself and the appellant. It was done solely with the intention to indicate the
purpose of his services, that they are of a high quality, and does not diminish the value of the
appellants trademark by taking any undue advantage of its repute.
d) The use of the description is in conformity with the provisions of the
Trademark Act, 1999
45Laugh it Off Promotions CC v. Freedom of Expression Institute 2006 (1) SA (CC) 144 (S.
Afr.).
46Alan Kenneth Mckenzie Clark v. Associated Newspapers Ltd, [1998] RPC 261.
48Hawkins Cookers Limited v. Murugan Enterprises, (2008) 36 PTC 290.
26 | P a g e
Section 30 of the Trademark Act, 1999 lays down certain exceptions which will not constitute
infringement
of
trademark
as
specified
in
Section
29.
As long as the use of the registered trademark is done in accordance with honest practices in
industrial or commercial matters and is not such as to take unfair advantage of the trademark
it will not be held as infringement.49 The use of the description by the respondent is an honest
practice common in various commercial matters where companies make use of comparative
advertising in order to convince prospective customers about various advantages their
product has over those of their competitors. It is obvious that such comparison is not possible
without
reference
to
the
competitors
product
or
brand
name.
A trademark is not infringed where it is used in relation to goods or services in order to

indicate the kind and quality of rendering of services.50 The use of the description in the
superlative form suggests the high quality of services that the respondent is promising his
prospective customers through such a, advertising strategy.
A. THE
IMPUGNED KEYWORDS ON ACCOUNT OF BEING DESCRIPTIVE, GENERIC AND
LAUDATORY OUGHT NOT TO HAVE BEEN REGISTERED
Common words and words of a descriptive character are entitled to lesser protection under
trade mark law. This is because the strength of a mark is considerably reduced when words
commonly found in the dictionary or commonly used in conversation figure as a part of the
trademark, that too in a descriptive context.51
a) The individual parts of the appellants trade mark are in violation of
section 9 when read along with sections 15 and 17 of the Trade Marks
Act,1999
According to section 15(1) of the Trade Marks Act, 1999 if a proprietor wants to be entitled
to the exclusive use of any part of the trademark, he has to apply to the register the whole and
the part as separate trademarks. Each separate trademark has to satisfy all the conditions
applying to, and have the incidents of, an independent trademark. 52 It is submitted that the
separate parts of the appellants registered trade mark are in violation of section 9 of the
49The Trade Marks Act, No. 47 of 1999, 30(1) (1999).
50The Trade Marks Act, No. 47 of 1999, 30(2)(a) (1999).
27 | P a g e
Trade Marks Act, which lays down the absolute grounds for refusal of registration, since they
are (i) devoid of any distinctive character,53 (ii) they serve in trade to designate the kind,
quality and intended purpose of the goods or services54 and (iii) and have become customary
in the current language and in the bona fide and established practices of the trade.55
If a registered trade mark consists of several matters, its registration confers exclusive right to
the proprietor only to the use of the trade mark taken as a whole. 56 In addition, if a trade mark
consists of any part which hasnt been separately registered by the proprietor for registration
as a trade mark57 or contains anything which is common to the trade or otherwise of a nondistinctive character,58 the registration does not confer any exclusive right to such part.
Therefore if it is shown that the appellant did not register the parts of his registered trade
mark separately or if such parts were of a non-distinctive character, then the appellant cannot
contest the respondents right to the use of these individual words which form parts of his
trade mark.
The appellant registered the trade mark of MBBC only as a whole and not as separate parts,
in the year 1959.59 It is submitted that no individual part of the trademark satisfies the
conditions applying to an independent trade mark.
McCarthys Desk Encyclopedia of Intellectual Property which the judge relied on in the case
of Consim Info Pvt Ltd v Google India Pvt Ltd 60 defines a descriptive mark as a word,
picture or other symbol that directly describes something about the goods or services in
53The Trade Marks Act, No. 47 of 1999, 9(1)(a) (1999).
54The Trade Marks Act, No. 47 of 1999, 9(1)(b) (1999).
55The Trade Marks Act, No. 47 of 1999, 9(1)(c) (1999).
57The Trade Marks Act, No. 47 of 1999, 17(2)(a)(ii) (1999).
58The Trade Marks Act, No. 47 of 1999, 17(2)(b) (1999).
28 | P a g e
connection with which it is used as a mark. Such a term may be descriptive of a desirable
characteristic of the goods; the intended purpose, function or use of the goods.the issue of
descriptiveness is usually tested from the view point of the hypothetical customer, who has
the basic amount of knowledge about the product, which is conveyed by advertising and
promotion currently available in the market place. In Filipino Yellow Pages, Inc. v. Asian
Journal Publications, Inc.61 the court laid down a test to determine would be called a generic
term. It said that "if the primary significance of the trademark is to describe the type of
product rather than the producer, the trademark is a generic term and cannot be a valid
trademark."
It is submitted that the words best butter chicken are also descriptive marks. This is because
they have been used by the respondent in order to describe his goods as being of a desirably
high quality. They have been used to designate the quality (as indicated by the words best),
kind and intended purpose (as indicated by the words butter chicken) of the services
rendered by him.62 Also these three words have become customary in the current language, 63
as they have become extremely common in the English language
In Cadila Healthcare Ltd v. Gujarat Co-operative Milk Marketing Federation Ltd 64 the
plaintiff sought monopoly over the expression sugar free which it claimed had acquired
exclusivity as a trademark in relation to the various products manufactured by it. The court
held that the defendant was not using the words sugar free in a trademark sense of seeking
to distinguish the goods of the defendant from similar goods of other traders, but in a
descriptive sense. Hence such use neither amounted to misrepresentation nor was there any
likelihood of deception. The adjective sugar free is a true description of the goods of the
defendant and was intended to convey such a message to the purchasing public. No ordinary
sensible member of the public would be confused and there was no evidence to establish
60Consim Info Pvt Ltd v Google India Pvt Ltd, (2010) 6 CTC 813.
61Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143.
64Cadila Healthcare Ltd v. Gujarat Co-operative Milk Marketing Federation Ltd, (2009) 41
PTC 336.
29 | P a g e
prima
facie
that
such
confusion
has
resulted
or
is
likely
to
result.
Similarly, the words best butter chicken have been used by the respondent in a descriptive
rather than a trade mark sense. They havent been used to refer to either the appellants or
respondents business and distinguish between them, but simply to indicate the quality and
purpose of the respondents services. The expression is only a description of the services, and
was intended to convey such a message to prospective customers. Hence theres no likelihood
of deception or confusion on the part of the customers regarding the origin of such services as
the expression is just a combination of frequently used English words.
The bench in Cadila Healthcare Ltd v. Gujarat Co-operative Milk Marketing Federation Ltd 65
held that once a common phrase in the English language which directly described the product
was adopted by any business enterprise, such adoption naturally entailed the risk that others
in the field would also be entitled to use such phrases provided no attempt was made to ride
on the bandwagon of such enterprises product. Therefore any trader who adopted such mark
was assumed to do so with clear knowledge of the possibility of other traders also using the
said mark in a descriptive sense. The appellants by adopting the expression best butter
chicken opened themselves to the risk of other people using the same or similar expression
as part of their products description. The appellant can claim a monopoly over the use of
commonly used words.
In J.R. Kapoor v. Micronix India66 the word Micro was being used by both the appellant as
well as the respondent. The Supreme Court said that anyone producing any product would be
justified in using the said word as part of his trade name. Since the word micro was a
common or general name descriptive of the products which were sold the users of such
products were unlikely to be misguided or confused by the said word. Similarly words like
butter chicken is a general name which describes the product being sold by the respondent
and users are unlikely to be misguided by said words.
b) The respondent is entitled to the use of such impugned keywords under
section 35 of the Trade Marks Act,1999
65Cadila Healthcare Ltd v. Gujarat Co-operative Milk Marketing Federation Ltd, (2009) 41
PTC 336.
66 J.R. Kapoor v. Micronix India, (1994) Supp (3) SCC 215.
30 | P a g e
Section 35 entitles the proprietor of a registered trade mark the bona fide use of his own
name, of any of his predecessors in business or any bona fide description of the character or
quality of his goods or services. Although it is not specifically mentioned in the definition of
a mark, the word name would include surname. 67 The use of the word Murgwala as a
keyword is therefore in line with section 35 as it is the surname of the respondent as well his
predecessor, and also it is a bona fide description of the quality of his goods and services as
shown above.
Prima facie the question of a name being able to distinguish goods or services will depend on
how common the name is.68 One also has to consider the probability of somebody having the
same name likely to enter the same business and the probability of choosing his surname or
personal name as a trade mark for the same or similar goods. 69 A word which according to its
ordinary signification is a surname was prima facie not distinctive not capable of
distinguishing under section 9 of the Trade and Merchandise Act 1958.70 Ordinary
signification means the ordinary meaning of the word to people in India. 71 The name
Murgwala is made a combination of two Hindi words Murg, meaning chicken, and Wala
meaning person. Therefore the ordinary signification of the name Murgwala is a person
offering chicken. Therefore such a name is not entitled to exclusive usage. Fantastic Sams
a mark was refused registration in respect of hair dressing services being a combination of a
laudatory and a familiar Christian name, considering the common practice of hairdressers
using their Christian names as a trading style.72 Applying the same reasoning as held in the
aforementioned case, there exists a very high possibility of a person having his surname as
Murgwala and using it as a trade mark for services related to food delivery and restaurants.
The appellant is hence not be entitled to any protection.
67 P. Narayanan, Law of Trade Marks and Passing Off 154 (6th ed. 2004).
68 Narayanan, supra note 67, at 153.
72 Fantastic Sams Service Mark [1990] RPC 531.
31 | P a g e
In Manish Vij v. Indra Chugh73 the Delhi High Court was faced with the issue of deciding
whether the word kabadibazaar had acquired a secondary meaning. The court reasoned that
a trade mark would be descriptive if it imparted information directly, and it would be
suggestive if it conveyed an idea that required some imagination to connect the mark with
the goods. The information conveyed by the mark could touch upon some characteristic,
quality or ingredient of the product. Applying these principles to the facts the court concluded
that the word kabadibazaar was made up of two generic words which in conjunction with
each other imparted information directly. In the absence of any showing of acquired
distinctiveness the plaintiff was not entitled to any protection. Applying the same line of
reasoning to our case, the name Murgwala is also made up of two generic words which
convey information about the business directly instead of conveying an idea that required
some imagination on the part of the customers to connect the mark to the services of the
appellant. Hence such a name is not entitled to any protection.
In Marico Limited v. Agro Tech Foods Limited 74 the court held that the plaintiffs trademark
LOSORB was not entitled to any protection as it was basically a minor variation of the
description expression LOW ABSORB which is not an unusual juxtaposition of the two
words LOW and ABSORB. Similarly the combination of the two words Murg and
Wala is not an unusual one since together they form a grammatically correct word.
The defendants are in the same line of business as that of the plaintiff, and therefore have no
alternative but to advertise their services in a manner descriptive of such services. For
instance, if a proprietor is trying to advertise his restaurant which sells butter chicken, he
would have no other alternative but to use these words. Though there are a few words
synonymous with chicken, he cannot be expected to use the word poultry instead of
chicken, or margarine instead of butter. If we let, for example, that an injunction be granted
preventing the respondent from using such words in combination, it would lead to the
consequence of reducing the choice of words available to the competitors to a very few and
resulting in the appellant monopolizing such words, which will be very disastrous. Such a
view was also upheld in Consim Info Pvt Ltd v Google India Pvt Ltd.
73 Manish Vij v. Indra Chugh, A.I.R. 2002 Del 243.
74In Marico Limited v. Agro Tech Foods Limited, (2010) 44 PTC 736.
75Consim Info Pvt Ltd v Google India Pvt Ltd, (2010) 6 CTC 813.
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75
The use of the
combination of words can be taken to be inevitable and unavoidable, even if presumed to not
be a bona fide description of the character or quality of services, saved by section 35. Even in
Playboy Enterprises, Inc. v. Netscape Communications Corporation 76 that a finding of
infringement might result in the loss of otherwise generic words from the English language at
the competitors need with the result that the plaintiff would effectively monopolise those
words.
c) Sections 31(2), 32 and the proviso contained in Section 9 does not
apply to the appellant
It is submitted that at no point before or after registration or application for registration of the
trade mark of the appellant did it acquire a distinctive character in relation to the services for
which it has been registered.
In Cellular Clothing Co. Ltd. v. Maxton & Murray77 Lord Shand observed that when the only
representation by the defendant consists of a term or terms, which aptly and correctly
described the goods offered for sale, then the plaintiff has to prove that these terms no longer
mean what they say or no longer mean only what they say but have acquired the secondary
and further meaning that the particular goods or good made by the plaintiff. Unless that is
proven there is no room for a charge of violation of any right since the defendants are only
exercising the right which they possess as much as the plaintiff does. The expression
Murgwalas Best Butter Chicken as shown above consists of terms which are completely
descriptive in nature and devoid of any distinctiveness. The respondent by including these
words in his representation is only exercising his right to aptly and correctly describe his
services.
In B.C.W.C.S. (P) Ltd v. I.C.W. Co-op Society Ltd 78 the Kerala High Court held that Indian
Coffee House was a generic name used by all co-operative societies of the ex-employees of
the Coffee Board who functioned independent of each other. Though it might be true that the
Indian Coffee House might have earned a name and goodwill due to the services rendered by
them in their catering establishments, that by itself would not enable the plaintiff to prevent
76Playboy Enterprises, Inc. v. Netscape Communications Corporation, 354 F.3d 1020.
77Cellular Clothing Co. Ltd. v. Maxton & Murray, [1899] A.C. 326.
78B.C.W.C.S. (P) Ltd v. I.C.W. Co-op Society Ltd, (1999) 1 KLT 322.
33 | P a g e
other ex-employees of the Coffee Board or any other owner of a catering establishment to run
their
establishment
under
the
name
Indian
Coffee
House.
In Rich Products Corporation v. Indo Nippon Food Ltd 79 the plaintiff contended that the
expression whip topping used as a part of the plaintiffs trademark had acquired secondary
meaning. The court rejected this contention saying that the expression whip topping was
used commonly in the industry in a descriptive sense. Likewise, the expression best butter
chicken is something which is bound to be used commonly by a number of restaurants in a
descriptive sense. Hence the registered trade mark of the appellant has not acquired any
distinctiveness, and coupled with its generic nature it is not entitled to any protection under
the act.
d) The registered trade mark of the appellant doesnt contain any invented
word
Invented words are entitled to a higher degree of protection. 80 In United Iron & Steel Works v.
Govt. of India81 it was observed that invented words intended to serve as trade marks are
usually easy to pronounce as a common man is expected to associate things of a particular
manufacturer with that particular mark which, in the case of an invented word, normally has
phonetic significance.
To establish that a word is an invented one, it not only has to be proved that the words in
question are not found in any dictionary but it has also to be shown that the word is even
otherwise unknown in the languages which are commonly spoken in the country. The word
must not indicate any obvious meaning.82 The three words best butter chicken are widely
used words and found in the English dictionary.
Also, a conjunction of two generic words doesnt mean that the resultant word will be
considered as an invented word. In Nestles Products (India) Ltd v. P. Thankaraja 83 the
Madras High Court held that the mark INSTEA was not to be considered an invented word,
79Rich Products Corporation v. Indo Nippon Food Ltd, (2010) 42 PTC (Del) 660.
81United Iron & Steel Works v. Govt. of India, A.I.R. 1967 P&H 64.
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as it was just a conjunction of the words instant and tea. The word Murgwala cant be
claimed by the appellant to be an invented word as it is the conjunction of two common Hindi
words, as shown above.
E. ZOOZLE IS NOT LIABLE FOR TRADEMARK INFRINGEMENT
Firstly, it is the respondents submission that Zoozle is not liable as it was merely acting as a
directory and any possible infringement was not in the course of trade.
As has already been established, the course of trade is defined as what is customarily or
ordinarily done in the management of trade or business84.
Taking this into consideration, it is the respondents submission that the act of selling of
keywords did not amount to infringement of trademark as this act was not in the course of
trade.
It is a well-established fact that an understanding of course of trade is arrived at by looking at
what is customary in a given trade. If one is to look at the business of search engines, out of
an estimated 280 or so search engines85, there is only one with a known programme for
selling keywords (google). On that basis, it can be said that selling keywords with a view to
earning profits is not customary in this business, and thus cannot be said to be in the course of
trade.
a) Zoozle is an intermediary
Zoozle, being a search engine, comes under the definition of an intermediary according to the
IT Act. The Act 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
83Nestles Products (India) Ltd v. P. Thankaraja, A.I.R. 1978 Mad 336.
84 Blacks Law Dictionary 352 (6th ed. 1990).
85 COMPREHENSIVE LIST OF SEARCH ENGINES, http://www.thesearchenginelist.com/
(last visited Jan. 21, 2015).
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service providers, search engines, online payment sites, online-auction sites, online market
places and cyber cafes86. The fact that Zoozle is a search engine is not in dispute by either
party. Therefore, according to the provisions of the Act itself, Zoozle is an intermediary.
Section 79(1) of the IT Act says 87 that an intermediary shall not be liable for any third party
information, data, or communication link hosted by him. Therefore, it is the submission of the
respondent that due to the fact that Zoozle has the legal status of an intermediary, it cannot be
held liable for the data hosted by it.
b) Zoozle has not voided an intermediarys exemption from liability
The IT Act also specifies certain conditions which when fulfilled mean that an intermediary is
no longer void from liability. It is the respondents submission that none of these conditions
has been fulfilled, and therefore Zoozle retains the intermediarys exemption from liability.
Section 79(2)(a) says that88 the exemption from liability is granted only if the function of the
intermediary is limited to providing access to a communication system over which
information made available by third parties is transmitted or temporarily stored. It is the
respondents submission that this clause cannot be held to be applicable in this case. This is
because Zoozle did only provide access to a communication system consisting of information
which was made available by third parties 89. Even keywords are purchased by third parties,
not by Zoozle itself, therefore it is submitted that the advertisements were still being made
available by a third party only. Therefore, Zoozle is not in breach of its liability under this
clause.
It is the submission of the respondent that Zoozle has not voided its exemption from liability
under Section 79(2)(B)(iii) either. This subsection speaks of the fact that an intermediary
shall be exempted from liability only if it does not select or modify the information contained
in the transmission90. The reason Zoozle is not culpable in this case is because it has at no
pointed selected or modified the information contained in the transmission. Selection and
86 The Information Technology (Amendment) Act, No. 10 of 2009, 2(1)(w) (2008).
87 The Information Technology (Amendment) Act, No. 10 of 2009, 79(1) (2008).
88 The Information Technology (Amendment) Act, No. 10 of 2009, 79(2)(a) (2008).
36 | P a g e
modification imply that certain information is being left out for other information. In this
case, however, Zoozle simply adding certain other information91 in the form of sponsored ads.
The actual information contained in the transmission i.e. the organic results is not being
tampered with92. Therefore, Zoozle has not voided its exemption from liability under this
section.
According to 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 act93. 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
thing94. To begin with, it is the respondents submission that there has been no illegal act
committed in this case. However, even if the court were to say that infringement has
occurred, Zoozle is not responsible for abetting it. This is because Zoozle can be responsible
only if one proves intention. While there was intention to sell the keywords in question, that
is not relevant. What is relevant is that there needs to be intention to aid an illegal act i.e. in
this case there needs to be intention to aid trademark infringement. There was definitely no
such intention in this case. In fact, when made aware that there may be a danger of
infringement, Zoozle went out of its way to ascertain that infringement had not happened 95.
Therefore, there was no abetment on the part of Zoozle to commit an illegal act, and it has not
voided its exemption from liability under Section 79(3)(A).
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 resource controlled by the intermediary is being used
90 The Information Technology (Amendment) Act, No. 10 of 2009, 79(2)(B)(iii) (2008).
93 The Information Technology (Amendment) Act, No. 10 of 2009, 79(3)(A) (2008).
94 The Indian Penal Code, No. 45 of 1860, 107 (1860).
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to commit the unlawful act, the intermediary fails to expeditiously remove or disable access
to that material on that resource without vitiating the evidence in any manner, then the
intermediary voids its exemption from liability96. To begin with, Zoozle was not notified by
the appropriate Government or its agency of the fact that a resource it controlled was being
used to commit the unlawful act. Therefore, that part of the section is obviously not operative.
Secondly, if we are to look at the other part of the section, which imposes a duty upon Zoozle
to act upon receiving actual knowledge, Zoozle still did not do anything wrong. This is
because of the presence of the phrase actual knowledge. In the absence of a definition in the
Act, one will have to depend upon a general understanding of the phrase. The word real,
according to Merriam-Webster dictionary97, refers to something which is existing in fact;
known to be correct or precise. The allegation by a trademark holder that his trademark has
been infringed without a Court ruling as to the same is just that an unsubstantiated
allegation. It cannot be said to comprise actual knowledge.
Therefore, the respondent submits that Zoozle has not voided its exemption from liability
under Section 79(3)(B).
F. EVEN IF THE TRADEMARK HAS BEEN USED IN THE COURSE OF
TRADE, IT WILL NOT CAUSE CONFUSION OR CAUSE THE CONSUMER
TO BELIEVE THAT THERE IS AN ASSOCIATION WITH THE REGISTERED
TRADEMARK
Finally, it is the respondents submission that in this case the mark of Arnab is not similar to
the trademark of Arnob and the identity or similarity of the goods or services covered by such
registered trade mark is not likely to cause confusion on the part of the public, nor is it likely
to indicate that there exists some association with the registered trademark.
There is no gold standard for the understanding of trademarks being likely to cause
confusion. In this case, it is necessary to fall back upon past decisions which have been made
by this honourable Court and look upon them as precedence.
96 The Information Technology (Amendment) Act, No. 10 of 2009, 79(3)(B) (2008).

97 Merriam-Webster Dictionary 782 (11th ed. 2003).
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In the case of Superfil Products Limited Represented by its Managing Director S. Narayan,
Chennai v Sreema Nets Represented by its Partner/Proprietor, Tamil Nadu and another 98, both
the companies were selling fishing lines, and were therefore in an identical product market.
The plaintiff with an intention to create a brand identity for its quality products among the
target consumers as well as general public, and further to signify a patronage with its reputed
Trade Name Superfil, has conceived, conceptualized, adopted and used the trade mark i.e,
Superfil Fishing Lines, and the Device of an 'Elephant' in appropriate colour, font, style and
layout, and has been continuously, uninterruptedly and extensively using the said Trademark
since its commencement of usage in relation to fishing line and other said products. The
plaintiff found out that the defendant was using a label comprising of two elephants with the
words "Super Soft" and "Super Strong" and the words "Sreema Lines Fishing Lines". Use of
the "Elephant" device and the word "Super" along with other words seemed to point towards
deceptive similarity, confusion and thus, amount to infringement. However, the defendant's
trade mark comprises label device of two elephants facing each other with the words super
soft and super strong and the word Sreema Lines Fishing Lines; whereas the plaintiff's trade
mark label comprises a device of a single elephant and the slogan Soft, Strong, and
Transparent. Despite this extreme similarity, the court ruled that the two were not deceptively
similar. In our case, the two brand names are extremely different. Moreover, theyre even
using different fonts and symbols99. In comparison, it is extremely unlikely that this case can
be said to constitute likelihood of confusion.
In the case of Newsweek Inc. v British Broadcasting Corporation 100, the plaintiffs were
publishers of the weekly news magazine Newsweek. The defendants proposed transmitting
4 times a week a programme entitled Newsweek. When the plaintiff in this case tried to get
an injunction against them, the Court held that despite the fact that there was a common field
of activity between the parties, namely the provision of a news service, anybody who went
into even a little detail would realise that the two things were not the same. A rational man
would not confuse the two. Only a moron in a hurry would get confused, and on this point the
98 Superfil Products Limited Represented by its Managing Director S. Narayan, Chennai v
Sreema Nets Represented by its Partner/Proprietor, Tamil Nadu and another, (2015) MAD 3
Indlaw.
99 Factsheet Annexure I; Annexure II.
100 Newsweek Inc. v British Broadcasting Corporation, (1979) R.P.C. 441 (C.A.).
39 | P a g e
case was dismissed. Similarly in this case, the two brands have entirely different names, and
logos, and fonts101. Only a moron in a hurry would get confused. Hence, there is no general
likelihood of confusion.
In the case of Neel Electro Techniques and others v Neelkanth Power Solution and another 102,
the plaintiff sought an injunction against the defendants from in any manner using, directly or
indirectly, the mark 'Neel' or 'Neelkanth' or any other mark, domain name, device, logo, label
etc. which was similar/deceptively similar to the registered mark of the Plaintiffs, namely,
'Neel'. However, there was no relief given, as the two marks were not deceptively similar, and
therefore the Court ruled against the plaintiff. In this case, there is much less similarity than
in the Neel Electro Techniques case. Taking into account the precedence established by that
case, it is the respondents submission that the Court should hold that there is no likelihood of
confusion and therefore there is no trademark infringement in this particular case.
It is also the respondents submission that the doctrine of initial interest confusion must not
be considered by the Court. 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 103.
However, this doctrine makes the burden on the plaintiff too light, as proving a mere
possibility of initial confusion is not what is required under Indian law, but the likelihood of a
consumer being genuinely misled. For this reason, the doctrine of initial interest confusion
has been rejected repeatedly by Indian courts and hence has no standing in Indian law. This
doctrine has been rejected in the case Consim Info Private Limited, Represented by its
Director and Chief Executive v Google India Private Limited and others 104 and in the case of
Warner Bros. Entertainment Inc and Another v Harinder Kohli and Others 105. Therefore, the
respondent submits that this doctrine be wholly rejected.
101 Factsheet Annexure I; Annexure II.
102 Neel Electro Techniques and others v Neelkanth Power Solution and another, (2014)
MUM 647 Indlaw.
103 4 J. McCARTHY, TRADEMARKS AND UNFAIR COMPETITION 19-23, (Clark Boardman
Callaghan) (1988) (4th Edn. 1988).
104 Consim Info Private Limited, Represented by its Director and Chief Executive v Google
India Private Limited and others, (2010) MAD 2449 Indlaw.
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III. AN AGREEMENT ENTERED INTO UNDER THE ADVERBA SCHEME DOES NOT HAVE
AN
APPRECIABLE ADVERSE EFFECT ON COMPETITION
The respondent submits that Zoozle does not enter into agreements that have an
appreciable adverse effect on competition under its AdVerba scheme as they cannot be
presumed to be anti competitive.106 Further, these agreements do not adversely affect
competition under the parameters specified in Section 19(3) of the Competition Act.107
A. AGREEMENTS ENTERED INTO UNDER THE ADVERBA SCHEME ARE NOT PRESUMED
TO BE ANTI COMPETITIVE
Section 3(3) of the Competition Act deals with agreements presumed to have an
appreciable adverse effect on competition. These agreements are regarded as anti
competitive because the consequences of entering into such agreements necessarily
include an adverse effect on competition within India.108 To prove presumption of an
appreciable adverse affect on competition, any of the criteria specified under section 3(3)
of the competition act must be fulfilled. An appreciable effect on competition does not
necessarily cause any of these situations specified; but is in fact created by the same.109
a) There is no similarity in provision of services
Zoozle is in the market for providing online search engine services, and has recently
entered the market for online search advertising, the nature of competition within which is
not known.110 For an agreement to be hit by Section 3(3) of the Act, it must be entered into
by two entities which are engaged in identical or similar trade of goods or provision of
105 Warner Bros. Entertainment Inc and Another v Harinder Kohli and Others, (2008) DEL
1092 Indlaw.
106 The Competition Act, No. 12 of 2003, 3(3) (2002),
107 The Competition Act, No. 12 of 2003, 19(3) (2002).
108 Rajkumar Dyeing and Printing Works Private Limited v. Competition Commission of
India W.P. (C) 5947/2014.
109 Neeraj Malhotra, Advocate v. Deutsche Post Bank Home Finance Limited (Deutsche
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services.111 Consumers of the AdVerba scheme are engaged in the provision of services
that are neither online search advertising nor those provided by online search engines.
Customers of the scheme are those people who seek to advertise their business or
company to attract as much commerce as they can, and not other search engines or
websites offering online search advertising services.112 For instance, in the present case of
Mr. Arnab Murgwala, the agreement entered is to advertise his website that provides home
delivery services of food.113 The parties claimed to have entered into anti competitive
agreements are thus not players in the same market, in fact one of the parties seeks to
secure the services of the other to forward his own business.
b) No necessary adverse effect on competition
In any case, the consequences of such agreements do not necessarily adversely affect
competition.114 It is submitted that while applying the law in the internet context;
emerging technologies require a flexible approach.115 In a similar case under European
jurisdiction where disputes [...] (arose) from the use, as keywords in an internet
referencing service [...] which correspond to trademarks, without consent having been
given by the proprietors of those trademarks116; it was held that such use of a trademark in
a referencing service was not liable to have an adverse effect on the advertising function of
110 Factsheet, 2.
111 The Competition Act, No. 12 of 2003, 3(3) (2002); Yashoda Hospital and Research
Centre Limited, Uttar Pradesh v. Indiabulls Financial Services Limited (IFSL), New Delhi,
(2011) Indlaw 5.
112 Consim Info Pvt Ltd. v. Google India Pvt Ltd., (2012) Indlaw 2621..
113 Factsheet, 6.
114 1-800 Contacts Inc. v. Lens.com Inc. 722 F.3d 1229 (10th Cir. 2013); Case C-236/08,
Google v Louis Vuitton, 2010 E.C.R. I-2467; Google Inc. v. Australian Competition and
Consumer Commission (2013) 249 CLR 435.
115 Network Automation, Inc., v. Advanced Systems Concepts Inc. No., 638 F.3d 1137 (9th
Cir. 2011).
116 Case C-236/08, Google v Louis Vuitton, 2010 E.C.R. I-2467.
42 | P a g e
the trademark.117 This conclusion has been affirmed in Australian 118 and American119
jurisdictions as well, with nascent jurisprudence in India120 pertaining to internet search
provider liability alluding to the same. As the usage of anothers trademark on an internet
referencing service does not dilute the effect of the advertising power of the same, it is
submitted that there is no effect on the competition in the market wherein the advertising
effect of the trademark is being measured.
For an agreement to be hit by section 3(3) of the act, the consequences of the same must
have a prima facie detrimental effect on competition, which is held only and only if any
trade practice tested on the parameters laid down in clauses (a) to (d) of section 3(3) in
relevant markets falls foul to any of those parameters 121. The agreement between Zoozle
and its customers under the AdVerba scheme in no way determines or influences the prices
of services provided, or controls production such that the provision of services to the
public is restricted. The agreement merely allows customers to advertise their website to a
consumer base on a new forum, which is the internet.
Hence, as the two parties involved in the AdVerba agreement do not provide similar
services or goods, and in any case the agreement is not presumed to adversely affect
competition, the agreement is not anti competitive under section 3(3).
B. THE AGREEMENT DOES NOT CAUSE AN APPRECIABLE ADVERSE EFFECT ON
COMPETITION
An agreement entered into between Zoozle and its customers through the AdVerba scheme
is not anti competitive as it does not cause an appreciable adverse effect on competition.
Any agreement that adversely affects competition as specified under Section 19(3) of the
117 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. I2467, 2508 98.
118 Google Inc. v. Australian Competition and Consumer Commission (2013) 249 CLR 435.
119 1-800 Contacts Inc. v. Lens.com Inc. 722 F.3d 1229 (10th Cir. 2013).
120 Consim Info Pvt Ltd. v. Google India Pvt Ltd., (2012) Indlaw2621.
43 | P a g e
Act is said to be anti competitive.122 The underpinning economic policy of Section 3 of the
Competition Act is given in its preamble where it is asserted that the Act seeks to [...]
prevent practices having adverse effect on competition, to promote and sustain
competition in markets, to protect the interests of consumers [...] 123.124Measuring whether
the AdVerba scheme restricts the competitive process under section 19(3) of the
competition act involves an analysis of the balance between the positive and negative
factors listed under Section 19(3) (a)-(f)125.
The AdVerba scheme allows its customers to advertise their website and is simply a
service that is being provided to them, with Zoozle not being responsible for the nature of
the advertisement posted itself, as it simply provides a platform for the same. 126 These
services are provided on the basis of an online auction system wherein interested parties
may bid for any keyword which they wish to purchase and use for the purpose of
advertising their website. This auction system in no way adversely affects competition as
Zoozle does not discriminate between potential bidders and provides all its customers the
opportunity to utilize these services.127
a) Aggravating Factors
An agreement entered into under the AdVerba scheme does not create barriers to new
entrants into the market, and nor does it hinder entry into the market. 128 It simply allows a
business to advertise its services to the average citizen on the internet. Neither is there any
122 The Competition Act, No 12 of 2013, 3(1), 3(4), (2002).
123 The Competition Act, No. 12 of 2003, Preamble (2002).
125 Shamsher Kataria v Honda Siel Cars India Limited and others, (2014) Indlaw 50
20.6.11.
126Case C-236/08, Google v Louis Vuitton, 2010 E.C.R. I-2467; Google Inc. v. Australian
Competition and Consumer Commission (2013) 249 C.L.R. 435.
127 Factsheet, 2.
128 The Competition Act, No 12 of 2003, 19(3)(a-c).
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effect on existing competitors in the market to the extent of them being driven out as the
agreement is entered into without any prejudice against any particular parties and it is
open to all through an online auction.129 Hence multiple parties can bid for keywords that
may be relevant to their business in an attempt to advertise their services. Potential
advertisers are given a chance to compete in the market, and that they fail to do so
effectively does not warrant a remedy under competition law, the purpose of which is to
secure the forces of competition, and not pander to the desires of individual competitors.130
b) Ameliorating Factors
On the other hand, it is submitted that this scheme broadens a new form of advertisement
and increases the outreach of online businesses to a large portion of the population that
may otherwise not be as readily accessible. An agreement to advertise the website of a
businessman and provide a description of the same to a user of the search engine doesnt
affect competition adversely and in fact only enhances it. Users and potential customers of
the service are now aware of a wider range of companies in the relevant market that
provide the service they seek This accrues to consumers benefits as it brings to them
services that they couldnt avail before. Moreover, efficient display of advertising that
reaches out to a large majority of internet users, and specifically those searching for a
particular product improves the provision of services.
Thus, balancing the positive and possible negative effects of the agreement entered into
between Zoozle and users of its Adverba scheme; it is submitted that the agreement does
not have an appreciable adverse effect on competition and in fact, enhances it.
IV. WHETHER ZOOZLE ABUSED ITS DOMINANT POSITION IN THE RELEVANT MARKET
It is submitted that Zoozle did not abuse its dominant position in the relevant market, and
that an agreement under its Adverba scheme does not deny market access to any
competitor.
A. WHETHER ZOOZLE HAS A DOMINANT POSITION IN THE RELEVANT MARKET
129 Factsheet, 2.
130 See, Kapoor Glass Private Limited v. Schott Glass India Private Limited, (2010) Indlaw
22.
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For Zoozle to enjoy a dominant position in the relevant market 131, care must be given to
the relevant geographical and product markets.132 The geographic market is that where
conditions of competition are sufficiently homogeneous and can be distinguished from
neighbouring areas because in those areas, the conditions of competition are appreciably
different.133 The product market comprises of all those goods and services regarded as
interchangeable with the service in question by the consumer.134
a. Relevant Geographical Market
In the market for online advertising, as such campaigns are mostly national in scope; 135 it
is submitted that the relevant product market is that of India. However in some instances,
as in the specific case of Mr. Arnab where the relevant market is limited to Delhi because
the conditions of competition in Delhi are unique viz. Mr. Arnobs presence and claim of
trademark infringement. It is thus submitted that the relevant geographic market for
Zoozles AdVerba scheme is dynamic on account of the regional nature of the
agreements,136 depending from case to case and in the particular case of Mr. Arnab is New
Delhi.
b. Relevant Product Market
Regarding the relevant product market, it is submitted that agreements entered into
between Zoozle and potential customers of the AdVerba scheme do not involve provision
of services in the same sector, and hence there is no definite relevant product market
within which both the users of the agreement and Zoozle operate. The major service
provided by Zoozle is as an online search engine, in which it enjoys a great deal of
131 The Competition Act, No. 12 of 2003, 2(r) (2002).
133 The Competition Act, No. 12 of 2003, 2(s) (2002).
134 The Competition Act, No. 12 of 2003, 2(t) (2002).
135See COMP/M5727 Microsoft/Yahoo! (2010); COMP /M4731Google/Double Click
(2008).
136 Factsheet, 2.
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prominence; with 80% of Indian internet users accessing the website every day. 137
Additionally, ever since 2011 it has entered the online search advertising market as well. 138
In the present instance however, Mr. Arnab entered into an agreement under the AdVerba
scheme with Zoozle to advertise his business of his restaurant and provide for orders for
home delivery of food. The products or services provided by the parties to the agreement
in no way interact or form a relevant market for products to interact with in a fashion that
may be deemed as anti competitive.
Hence, it is submitted that Zoozle has a dominant position in the national market of India
as an online search engine.
B. WHETHER ZOOZLE ABUSED ITS DOMINANT POSITION IN THE RELEVANT MARKET
Section 4 of the competition act prohibits any action by an enterprise or group that abuses
its dominant position in relevant markets to the detriment of the consumers. 139 This abuse
of dominant position under the competition act can only exist in a relevant market. 140 It is
important to note that an abuse of dominant position is constituted by an exhaustive list
of practices141 that are prohibited under competition law in India.142
a) Online search advertising market
Zoozle allows the advertisement of ones website to online consumers as a business

practice and in the process does not discriminate between potential advertisers. While
Zoozle has dominance in the market for online search engines, there is nothing to suggest
that this dominance extends to the online search advertising market as well. The relevant
market for discussion within which there is a possibility of abuse of dominant position is
137 Factsheet, 1.
138 Factsheet, 2.
140 Pravahan Mohanty v. HDFC Bank Limited, Chennai and Another, (2011) Indlaw 19.
141 Jupiter Gaming Solutions Private Limited v. Government of Goa and Another, (2011)
Indlaw 22.
142 The Competition Act, No. 12 of 2003, 4(2) (2002)..
47 | P a g e
hence that involving services related to online search engines within India. The AdVerba
scheme only involves agreements relating to online search advertising and hence that
becomes a market relevant in the determination of abuse of dominant position as well.
The action of entering into an agreement to display the website of a company as a
suggested post, which is essentially the adverba agreement; in no way restricts the access
to the relevant market of online search engines. Under section 4, the presence of or
implies that the conditions determining an abuse of dominant position are in the
alternative, ie each clause can be treated as a stand-alone and for inquiring whether
there has been an abuse, one or more of these clauses could be invoked.143
b) Denial of market access
The AdVerba scheme does not influence the conditions in the purchase of services or
affect the price of the same in an unfair or discriminatory manner as the scheme is offered
to all without any prejudice, and ultimately the platform for advertising is provided to the
highest bidder.144 There is nothing to suggest that the scheme results in the denial of
market access to competitors, on the contrary it secures the access to a market of
competitors by means of advertisement. It was observed in Pankaj Gas Cylinders Limited
v. Indian Oil Corporation Limited145 that reasonable business practices cannot amount to
abuse of dominant position in a relevant market. Entering into such an agreement under
the AdVerba scheme is simply a reasonable business practice and is not egregious enough
to be regarded as an abuse of dominant position.
None of the necessary conditions are met in the present case of Zoozle for abuse of
dominant position as specified under Section 4.
Thus it is submitted that neither does Zoozle abuse its dominant position in the market and
nor does it, by virtue of its Adverba agreement scheme does not enter into anti competitive
agreements with its customers.
143 Pravahan Mohanty v. HDFC Bank Limited, Chennai and Another, (2011) Indlaw 19.
144 Factsheet, 2.
145 (2011) Indlaw 27.
48 | P a g e
PRAYER FOR RELIEF
Wherefore in light of the Issues Involved, Arguments raised, and Authorities cited, Mr. Arnob
Murgwala and Zoozle GmBH, the Respondents, respectfully request the Court to adjudge and
declare that:
1. Mr. Arnab Murgwala and Zoozle GmBH have not infringed the registered trade mark
of the appellant.
2. Mr. Arnab Murgwala and Zoozle GmBH
have not passed off the respondents
services as those belonging to the appellant.

3. The AdVerba Advertisement Scheme is not an abuse of dominant position by Zoozle
GmBH.
4. The agreement entered into under the AdVerba scheme does not have an an
appreciable adverse effect on competition
5.
The impugned keywords contained in Mr. Arnob Murgwalas registered trade mark
should be revoked on account of being descriptive, generic and laudatory.
All of which is respectfully affirmed and submitted,

On behalf of the Respondents,
Mr Arnab Murgwala and Zoozle GmBH.
49 | P a g e

Amity National Moot Court Competition, 2016: Winners and Best Memorial: Respondents

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Amity National Moot Court Competition, 2016: Winners and Best Memorial: Respondents

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1537 R

The Supreme Court of India

Civil Appeal No. ____2015

Civil Appeal No. ____2015

Memorial for the respondents, 2015.

The defendant is not trying to obtain any undue economic benefit..........................15

No misrepresentation has been made by the respondent to prospective customers. .15

There is no infringement of trademark.............................................................................17

The use was not in the course of trade......................................................................17

Even if the use was in the course of trade, Section 30 is applicable.........................18

Arnab only used parts of the trademark....................................................................20

Arnab is only using a part of the trademark...........................................................20

The description does not refer to MBBC..................................................................22

The impugned keywords on account of being descriptive, generic and....................25

Zoozle has not voided an intermediarys exemption from liability.......................33

F. EVEN IF THE TRADEMARK HAS BEEN USED IN THE COURSE OF TRADE, IT

There is no similarity in provision of services.......................................................38

No necessary adverse effect on competition..........................................................38

The Agreement does not cause an appreciable adverse effect on competition.........39

Whether Zoozle abused its dominant position in the relevant market..........................41

Whether Zoozle has a dominant position in the relevant market..............................41

Relevant Product Market.......................................................................................42

Online search advertising market..........................................................................43

Denial of market access.........................................................................................43

www.arnabbutterchicken.com. It too allows customers to place orders for home delivery.

USE OF THE IMPUGNED KEYWORDS BY THE RESPONDENT DOES NOT AMOUNT TO

A. The use was not in the course of trade

AGREEMENT ENTERED INTO UNDER THE

DOES NOT HAVE AN

APPRECIABLE ADVERSE EFFECT ON COMPETITION

1ANANTH PADMANABHAN , INTELLECTUAL PROPERTY RIGHTS: INFRINGEMENT AND

6 Cadilla Healthcare Ltd v. Cadilla Pharmaceuticals Ltd , A.I.R. 2001 SC 1952.

As opposed to infringement where mere imitation or similarity between two trademarks is

II. THERE IS NO INFRINGEMENT OF TRADEMARK

14Harrods Ltd v. Harrodian School Ltd, [1996] RPC 697.

27 Marico Ltd. v. Agro Tech Food, (2010) DEL 1849 Indlaw.

36 The Trade Marks Act, No. 47 of 1999, 17(2) (1999).

A trademark is not infringed where it is used in relation to goods or services in order to

IMPUGNED KEYWORDS ON ACCOUNT OF BEING DESCRIPTIVE, GENERIC AND

LAUDATORY OUGHT NOT TO HAVE BEEN REGISTERED

The use of the

E. ZOOZLE IS NOT LIABLE FOR TRADEMARK INFRINGEMENT

96 The Information Technology (Amendment) Act, No. 10 of 2009, 79(3)(B) (2008).

APPRECIABLE ADVERSE EFFECT ON COMPETITION

Zoozle allows the advertisement of ones website to online consumers as a business

PRAYER FOR RELIEF

have not passed off the respondents

services as those belonging to the appellant.

All of which is respectfully affirmed and submitted,

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