Trademark Misuse: Delhi HC Orders Local Firm “Google Enterprises” To Pay Rs 10 Lakh To Google LLC

The Delhi High Court recently ordered Google Enterprises, a trading and consultancy firm, to pay Google LLC (Limited Liability Company) Rs 10 lakh in damages for misusing its mark and misrepresenting its association with the American tech giant.

A single bench of Justice Sanjeev Narula noted that the defendants misrepresented to the public that they were partners of Google India and on the basis of that misrepresentation, they also announced a fictitious Knowledge Process Outsourcing (KPO) unit.

“The modus operandi of Defendants was to dupe members of the public into believing they would get a desk job on depositing money with Defendant No. 1 and be employed with an entity supposedly associated with Plaintiff, as is indicated from the KPO unit’s brochure at Ex. PW1/11,” the bench noted.

As a result, Justice Narula granted Google a sum of 10 lakh and directed the Department of Technology (DoT) to issue instructions to telecom and internet service providers to block access to the defendants’ website.

“Defendants are directed to hand over all printed matter, including stationery, brochures, bearing the mark/name “GOOGLE” to the authorized representative of the Plaintiff representative(s) for the purpose of destruction,” the single bench directed.

Google LLC moved the high court after discovering certain brochures and news articles in 2011 about a collaboration between Google India and Tata Communications for a joint venture called E-Kutir Technology & Extension Management (P) Ltd. (Defendant No. 2).

E-Kutir was described as a KPO unit. Google, on the other hand, refuted the claim.

Appearing for Google LLC, Advocate Tanya Varma and Advocate Coral Shah informed the bench that the marks used by the defendants on their websites were identical to Google’s and that the defendants had even filed applications with the trademark registry for registration of those marks.

Justice Narula came to the conclusion that there had been dishonest use and that the defendants had committed infringement and passing off after considering the case and looking at the marks used by the defendants.

The judge added that it was obvious that the defendants were working together with regard to the websites and that they continued to operate in flagrant violation of the plaintiff’s rights and the interim injunction that was in place against them.

As a result, the court dismissed the plea and issued an order in Google’s favor.