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

1537 A
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
Respondent
Civil Appeal No. ____2015

(Section 53T of the Competition Act, 2002)
Arnob Murgwala
Appellant
v.
Zoozle GmBH
Respondent
Memorial for the appellant, 2015.
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TABLE OF CONTENTS
Table of Contents.......................................................................................................................2
Index of Authorities....................................................................................................................4
Statement of Jurisdiction............................................................................................................8
Statement of Facts......................................................................................................................9
Issues Involved.........................................................................................................................12
Summary of Arguments...........................................................................................................13
Arguments Advanced...............................................................................................................16
I.
The use of the impugned keywords by the respondent amounts to the tort of passing off
16
A.
The use of the AdVerba advertising scheme by Arnab is intended to deceive
consumers.............................................................................................................................16
B.
The defendant through this act is attempting to obtain economic benefit through the
reputation of the plaintiff......................................................................................................17
C.
By using the trademark of Arnob through AdVerba advertising scheme, Arnab has
damaged the goodwill of the plaintiffs business.................................................................17
D.
There is sufficient trade connection between the products of the plaintiff and the
defendant..............................................................................................................................18
II. The use of the impugned keywords by the respondent amounts to trademark
infringement.............................................................................................................................20
A.
Arnobs trademark is not invalid...............................................................................20

a)
The registered trade mark of the appellant is protected under the proviso
contained in section 9 of the Trade Marks Act, 1999.......................................................20
b)
The registers trade mark of the appellant is valid under sections 31 and 32 of the
Trade Marks Act, 1999.....................................................................................................22
c)
B.
The appellant is entitled to the exclusive use of the mark Murgwala................22

Arnab used this trademark in the course of trade......................................................24
a)
The conditions for use are the same as the conditions for use in the course of trade
24
b)
Assuming that the fact that any use was in the course of trade has to be proven
separately..........................................................................................................................25
C.
Arnab cannot use the defence of having used only part of the trademark................26
a)
The respondent is using the entire trademark, not part of it..................................26
b)
Even if the respondent is held to be using only a part of the trademark, it is still a
violation............................................................................................................................27
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D.
Zoozle cannot use its defence of being merely a search engine and performing the
functions of a directory........................................................................................................29
E.
This infringement is likely to cause confusion or cause the consumer to believe that
there is an association with the registered trademark...........................................................32
III.
Zoozle has entered into anti competitive agreements with the users of the AdVerba
scheme......................................................................................................................................35
A.
The agreement between Zoozle and users of the AdVerba scheme has an appreciable
adverse effect on competition..............................................................................................35
a)
Driving Existing Competitors out of the market...................................................36
b)
Creation of barriers to new entrants in the market.................................................37
c)
Ameliorating factors..............................................................................................37
B.
IV.
The agreement results in unfair competition.............................................................38

Zoozle abused its dominant position in the market.......................................................39
A.
The relevant market...................................................................................................39
B.
abuse of dominant position by denying competitors market access to the informant

40
C.
a)
The market in the particular case of the informant is unique................................40
b)
Denial of market access.........................................................................................40

Abuse of dominant position to enter into another relevant market...........................41
Prayer for Relief.......................................................................................................................43
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INDEX OF AUTHORITIES
Cases
1. 1-800 Contacts Inc. v. Lens.com Inc. 722 F.3d 1229 (10th Cir. 2013)
2. Alaknanda Cement Private Limited and another v Ultratech Cement Limited, (2011)
MUM 1130 Indlaw
3. Allen (WH) & Co v. Brown Watson Ltd [1965] RPC 191
4. Anand Brothers Private Limited Through M.D. v Union of India and others, (2014)
SC 588 Indlaw
5. Aravind Laboratories v. Modicare, (2011) 4 LW 55
6. Arshiyat Rail Infrastructure and another v. Ministry of Railways and Another, (2012)
Indlaw 25
7. British Broadcasting Co v. Talbot Motor Co Ltd [1981] FSR 228
8. Brookfield Communications, Inc. v. West Coast Entertainment Corp. 174 F.3d 10369th Cir.1999
9. C-1/36.915 Deutsche Post AG Interception of cross-border mail, 2002 4 C.M.L.R.
598
10. C-236/08 Google Inc. Louis Vuitton, 2010 E.C.R. I-2467
11. C-237/08 Google France SARL v. Viaticum SA and Another, 2010 E.C.R. I-2467
12. C-238/08 Google France SARL v. Tiger SARL and Others, 2010 E.C.R. I-2467
13. Case C-62/86, AKZO Chemie BV v Commission, 1993 5 C.M.L.R. 215
14. COMP /M4731 Google/Double Click (2008)
15. COMP/M5727 Microsoft/Yahoo! (2010)
16. Consim Info Pvt Ltd v Google India Pvt Ltd, (2010) 6 CTC 813
17. Consim Info Pvt Ltd. v. Google India Pvt Ltd., (2012) Indlaw 2621
18. Corn Products Refining Co v. Shangrila Food Products Ltd, A.I.R. 1960 SC 142
19. Creative Handicrafts v. Sedana Electric Co., (1988) PTC 348
20. Dashrath Rupsingh Rathod v State of Maharashtra and another, (2014) SC 494 Indlaw
21. Delhi Public School Society v D P S Trust, (2012) DEL 3370 Indlaw
22. District Mining Officer and Others v Tata Iron and Steel Company and Another,
(2001) SC 20066 Indlaw
23. Electrolux Coroporation v. Val-Worth Inc. 190 N.Y.S.2d 977, (1959)
24. Girnar Food and Beverages v. Godfrey Phillips India Ltd, (2001) 90 DLT 839
25. Google Inc. v. Australian Competition and Consumer Commission (2013) 249 CLR
435
26. Harrods Ltd v Harrodian School Ltd, [1996] RPC 697
27. Heineken Asia Pacific Pte. Ltd v Surjeet Lal, MANU/DE/2823/2014
28. Honda Motors Co. Ltd v Charanjit Singh, (2003) 26 PTC 1
29. Honda Motors Co. Ltd v Charanjit Singh, (2003) 26 PTC 1
30. Horlicks Limited and Others v Uttam Sadhukan , (2002) DEL 561 Indlaw
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31. Hyder Consulting (UK) Limited v Governor, State of Orissa Through Chief Engineer,
(2014) SC 799 Indlaw
32. Infederation Ltd. v. Google Inc., EWHC (Ch) 2295, (2013)
33. Inland Revenue Commissioners v. Muller & Co.s Margarine Ltd, (1901) A.C. 217
34. Interflora Inc. and Another v. Marks and Spencer Plc, EWCA Civ. 1403 (2014)
35. International News Service v. Associated Press, 248 US 215 (1918)
36. Jews For Jesus v Brodsky, 46 U.S.P.Q.2d 1652
37. Kamaljit Singh v Sarabjit Singh, (2014) SC 577 Indlaw
38. Kapoor Glass Private Limited v. Schott Glass India Private Limited, (2013) Indlaw 22
39. Labyrinth Media v Brave World [1995] EMLR 38
40. Metropolitan Opera Association v. Wagner-Nichols Recorder Corporation 101
N.Y.S.2d 488
41. Metropolitan Opera Association v. Wagner-Nichols Recorder Corporation 159
N.Y.S.2d 488
42. Micheal Holterhoff v. Ulrich Freiesleben (2002) F.S.R. 23
43. Multiplex Association of India v. United Producers/Distributors Forum and Others,
(2011) Indlaw 18
44. Murlidhar Shivram Patekar and another v State of Maharashtra, (2014) SC 649 Indlaw
45. Neeraj Malhotra, Advocate v. Deutsche Post Bank Home Finance Limited (Deutsche
Bank) and Others, (2010) Indlaw 28
46. Office Cleaning Services Limited v. Westminister Window and General Cleaners
Limited, [1946] 63 R.P.C. 39
47. Philip Morris Products S.A. & Anr.v Sameer & Others, (2014) DEL 817 Indlaw
48. Planned Parenthood Federation of America Inc. v. Bucci, 42 U.S.P.Q.2d 1930
49. Ptc India Ltd. v Central Electricity Regulatory Commission, Thr. Its Secretary, (2009)
SC 304 Indlaw
50. Reckitt & Coleman v Borden, [1990] 1 All ER 873
51. Reddaway v. Banhan, (1896) A.C. 199
52. Reddy Pharmaceuticals Ltd v. Dr. Reddys Laboratories Ltd, (2007) 35 PTC 868
53. Ronson Art Metal Works, Inc v. Gibson Lighter Manufacturing Co., 159 N.Y.S.2d
606, (1957)
54. Roy Export Company Establishment of Vaduz, Liechtenstein, et al v. Columbia
Broadcasting System Inc. 672 F.2d 1095 (1982)
55. South Asia LPG Company Pvt. Ltd. v. Competition Commission of India, (2014)
Indlaw 2530
56. Spencer & Co. Ltd v. Spencer Soft Drinks Co., (1988) PTC 147
57. Stock Exchange, Bombay v V. S. Kandalgaonkar and others, (2014) SC 669 Indlaw
58. T.V. Venugopal v. Ushodaya Enterprises Ltd, (2011) 4 SCC 85
59. Three-N-Products Private Limited v Emami Limited, (2008) CAL 210 Indlaw
60. United Iron & Steel Works v. Govt. of India, A.I.R. 1967 P&H 64
61. Wander Ltd v. Antox India Pvt. Ltd, (1990) Supp (1) SCC 727
62. Warner Bros. Entertainment Inc. and Another. v. Harinder Kohli and Others, (2008)
Indlaw 1092
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63. Wyeth Holdings Corporation v. Burnet Pharmaceuticals, (2008) 36 PTC 478

64. Yasha Overseas and Others v Commissioner of Sales Tax and Others, (2008) SC 1243
Indlaw
65. Yashoda Super Speciality Hospitals, a partnership firm, represented by its partner G.
Devender Rao v Yashoda Medicare and Research Centre Private Limited, a company
registered under Companies Act, 1956, having its registered office at New Delhi,
represented by Its Director and another, (2010) AP 534 Indlaw
Statutes
1. The Competition Act, No. 12 of 2003
2. The Consumer Protection Act, No. 68
3. The Trade Marks Act, No. 47 of 1999
4. The Indian Penal Code, 1860
5. The Information Technology (Amendment) Act, 2008
Books
1. RICHARD WHISH & DAVID BAILEY, COMPETITION LAW (7th ed. 2012)
2. ANANTH PADMANABHAN , INTELLECTUAL PROPERTY RIGHTS: INFRINGEMENT AND
REMEDIES (1st ed. 2006)
3. Blacks Law Dictionary 352 (6th ed. 1990).
4. J. McCARTHY, TRADEMARKS AND UNFAIR COMPETITION 19-23, (Clark Boardman
Callaghan) (1988) (4th Edn. 1988).
MISCELLANEOUS
5. The Information Technology (Intermediaries guidelines) Rules, 2011, Gazette of
India, section 3(2)(b) (Apr 11, 2011).
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STATEMENT OF JURISDICTION
I. Civil Appeal No. ____2015

The Appellant has approached this Honourable Court under Section 135 of the Trademarks
Act, 1999 read with Section 38 of the Specific Relief Act, 1963.
II. Civil Appeal No. ____/2015
The Appellant has approached this Honourable Court under Section 53T of the Competition
Act, 2002.
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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 enjoys great international presence and
is used by more than 80% of Indian internet users on a daily basis. The website works by
automatically generating an organic search list on the basis of queries entered into the search
toolbox by users. Zoozle claims to have no human interface in the generation of these search
results, and that they are arranged in order of relevance based on an algorithm.
THE RESTAURANTS
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. He engaged in extensive offline advertising that was
recorded in the companys financial statements for the year 2012-2013 as Rs. 1,00,00,000/-.
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
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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
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
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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,
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 Arnab and Zoozle through the use of the AdVerba scheme have infringed the
registered trade mark of the appellant?
III.
Whether the agreement entered into under the AdVerba scheme has an appreciable adverse
effect on competition?
IV.
Whether Zoozle abused its dominant position in the relevant market?
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SUMMARY OF ARGUMENTS
I. THE
USE OF THE IMPUGNED KEYWORDS BY THE RESPONDENT AMOUNTS TO THE TORT
OF PASSING OFF
For the tort of passing off four things need to be established, (i) intention to deceive, (ii)
attempt to obtain undue economic benefit and a misrepresentation which (iii) damages the
goodwill of the plaintiff. The purchase of the exact same words of the appellants registered
trade mark as keywords by the respondent indicate his intention to deceive consumers
regarding the origin of services. There also exists a high probability of confusion since both
of them are brothers. Through the use of the AdVerba advertising scheme the respondent has
tried to earn undue economic benefit by misrepresenting his services to be that of the
appellant and exploiting the goodwill of MBBC, which over a period of 56 years has become
extremely popular in Delhi, opened twenty five outlets, as well as undertaken extensive
promotional efforts within the city. Both parties also share sufficient trade connection, since
they provide similar services; which increases the likelihood of confusion.
II. THE
USE OF THE IMPUGNED KEYWORDS BY THE RESPONDENT AMOUNTS TO
TRADEMARK INFRINGEMENT
A. Arnobs trademark is not invalid

According to section 9, which lays down the grounds for refusal of registration of trademarks,
a trade mark cannot be refused registration if it has acquired a distinctive character as a result
of the use made of it. Mr. Arvind Kejru Murgwala established the fast food restaurant called
Murgwalas Best Butter Chicken in Delhi in the year 1959 at Connaught place. It soon
became a very popular restaurant amongst the people of Delhi. Today it is not just a single
restaurant, but a chain with over twenty five outlets within Delhi. Though the expression
Best Butter Chicken can be construed as being generic and descriptive, the trade mark is
not limited to it. The surname of the appellant when used in the trade mark acts as the
distinguishing element which helps people to identify it solely with the business of the
appellant and not think of it as a generic term covering all restaurants which provide similar
services. The registered trade mark of the appellant is an arbitrary combination of seemingly
generic words, which has become distinctive. Also the length and manner of use, nature and
extent of advertising and promotion, efforts made to promote conscious connection in the
public's mind between the trademark and the business helps in establishing the distinctive
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character. The advertisement expenditure incurred by the appellant shows that this has also
been fulfilled.
B. Arnab used this trademark in the course of trade
There is no difference for the purposes of the Act between using a mark and using a mark in
the course of trade as per section 29. Section 29(6) speaks of the fact that a person uses a
trademark in the course of trade when he uses the registered trade mark on business papers or
in advertising. It is the appellants submission that this is the case. Even if we assume that
course of trade needs to be defined separately, we can use the definition given by Blacks
Law Dictionary what is customarily or ordinarily done in the management of trade or
business. Moreover, cases have held that use of a trademark as a keyword is use in course of
trade.
C. Arnab cannot use the defence of having used only part of the trademark
The respondent is using the entire trademark, not part of it. Arnobs trademark is being
infringed. Murgwalas Best Butter Chicken is the entire trademark of the appellant
therefore, when a user enters that into Zoozle and gets Arnabs website as a result, it isnt a
part of Arnabs trademark being infringed, but his entire trademark. The purchase of these
four keywords is without a doubt causing an infringement of Arnobs complete trademark.
Even if the respondent is held to be using only a part of the trademark, it is still a violation.
This is because the separate parts of the keyword have each attained distinctive character.
D. Zoozle cannot use its defence of being merely a search engine and performing the
functions of a directory
Zoozle is not in this case performing merely the functions of a directory i.e. an entity with the
legal status of the intermediary. While intermediaries are exempt from liability, Zoozle is
voiding this exemption under multiple subsections of the IT Amendment Act.
E. This infringement is likely to cause confusion or cause the consumer to believe that
there is an association with the registered trademark
The mark of Arnab which because of its similarity to the registered trade mark of Arnob and
the identity or similarity of the goods or services covered by such registered trade mark is
likely to cause confusion on the part of the public, or which is likely to have an association
with the registered trade mark.
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III. ZOOZLE HAS ENTERED INTO ANTI COMPETITIVE AGREEMENTS WITH THE USERS OF THE
ADVERBA SCHEME
Zoozle has entered into anti competitive agreements with users of its AdVerba scheme as they
have an appreciable adverse effect on competition; and they result in unfair competition in
the market. Firstly, agreements entered under this scheme have the effect of driving existing
competitors out of the market and crate barriers to new entrants in the same. As there is no
benefit accruing to consumers and there is no improvement in the provision of services or
promotion of technical and scientific development as a result of agreements under the
scheme, cannot avail the defence of ameliorating factors under Section 19(3) of the
Competition Act and is hence regarded to have an appreciable adverse effect on competition.
Hence, it is submitted that they are in violation of Section 3(4) of the same. Secondly, the
agreement results in unfair competition the action of exploiting the goodwill of a competitor
to further ones ends amounts to commercial immorality and is regarded as an unfair free
riding on the fame of well known works. Consequently, agreements entered into under the
scheme have deleterious effects on competition and are hence in contravention of the
Competition Act.
IV. ZOOZLE ABUSED ITS DOMINANT POSITION IN THE MARKET
It is submitted that Zoozle is dominant in the online search engine market and abuses this
position by attempting to enter another relevant market by leveraging its dominance, and by
denying access to the market to competitors. Firstly, Zoozle denied the informant market
access as it is in a unique position to provide access to the online market of home delivery of
food. The AdVerba scheme exploits this position to ensure that it is only the website of the
highest bidder that is most readily accessible by being placed at the top of the search result
list, effectively disallowing competitors in the same market from being visible as an option to
the customers. Secondly, Zoozle abuses this dominant position to enter another market, which
is that of online search advertising. Having entered into this market recently in 2011, Zoozle
is not a dominant player but is exploiting its position of dominance in the closely related
internet search engine market to attaining the same.
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ARGUMENTS ADVANCED
I. THE USE OF THE IMPUGNED KEYWORDS BY THE RESPONDENT AMOUNTS TO THE
TORT OF PASSING OFF
Passing off is a common law tort, remedy for which is 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 a misrepresentation made by a
trader to his prospective customers calculated to injure, as a reasonably foreseeable
consequence, the business or goodwill of another [C] which actually or probably causes
damage to the business or goodwill of the other trader. There is also [D] sufficient trade
connection between the plaintiffs and defendants business, enough to cause a likelihood
of confusion among consumers.
A. THE USE OF THE ADVERBA ADVERTISING SCHEME BY ARNAB IS INTENDED TO
DECEIVE CONSUMERS
The keywords bought by the defendant through Zoozles advertising scheme to advertise
his own business was an intentional and deliberate effort on his part to deceive prospective
consumers regarding the origin of services. The defendant was a new entrant into the
market in Delhi for providing restaurant and food delivery services, and had to face a lot
of competition. His purchase of the keywords which are exactly identical to the registered
trademark of the plaintiff, and which will therefore cause his website to be advertised
when one is in fact searching for MBBC, a restaurant very well known in the city, shows
his intention to deceive or cause confusion on the part of the public regarding the origin of
services. Any consumer when searching for MBBC would first see the advertisement of
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.
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Arnabs Butter Chicken and would be confused, especially given the fact that the plaintiff
and the defendant are brothers and therefore probably associated.
B. THE DEFENDANT THROUGH THIS ACT IS ATTEMPTING TO OBTAIN ECONOMIC
BENEFIT THROUGH THE REPUTATION OF THE PLAINTIFF
The defendant is a new entrant into the market for the provision of restaurant and food
delivery services in Delhi. Therefore by buying keywords similar as well as identical to
the registered trademark of the plaintiff he has ensured that the advertisement for his
website will come above the organic search result of the plaintiffs website. This will help
him ensure that the consumers, who as it is have been deceived regarding the origin of
goods and services, as shown above, will enter his website and place order for food there.
Therefore the defendant has made undue economic benefit by riding on the reputation of
the plaintiffs business since he has been able to divert consumers to his business, who
were in fact looking for the plaintiffs website.
Even if we concede that the consumer might ultimately realize that the website they
landed up in was of the respondent and not the plaintiff, they might decide to patronize his
website. The contention that there is only initial interest confusion doesnt alter the fact
that the defendant is acquiring the goodwill of the appellant in order to gain undue
economic benefit.4 A diversion of consumers can take place through initial confusion if the
consumers reaching the respondents website were falsely led to believe that the site they
reached was authorized by the trademark owner even if they realize their mistake later.5
C. BY USING THE TRADEMARK OF ARNOB THROUGH ADVERBA ADVERTISING
SCHEME,
ARNAB HAS DAMAGED THE GOODWILL OF THE PLAINTIFFS BUSINESS
The leading legal authority for the definition of goodwill can be found in the case of
Inland Revenue Commissioners v Muller & Co.s Margarine Ltd.6 In this case Lord
Macnaghten said that goodwill is the benefit and advantage of the good name, reputation
4Brookfield Communications, Inc. v. West Coast Entertainment Corp. 174 F.3d 1036-9th
Cir.1999.
5Planned Parenthood Federation of America Inc. v. Bucci, 42 U.S.P.Q.2d 1930; Jews For
Jesus v Brodsky, 46 U.S.P.Q.2d 1652.
6Inland Revenue Commissioners v. Muller & Co.s Margarine Ltd, (1901) A.C. 217.
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and connection of a business. It is the attractive force which brings in custom. It is the one
thing which distinguishes an old-established business from a new business at its first
start.
The plaintiff can show presence of goodwill through actual sales or at least through
extensive pre-sale publicity that may have been undertaken by him. 7 In the year 2008,
Arnob had created a website for his business (www.bestbutterchicken.com) for the ease of
his actual and potential customers.8 He had extensively advertised his business along with
his websites URL in the mass media as well as hoardings located throughout Delhi, 9 and
in the process incurred a sizeable advertisement expenditure of Rs. 1,00,00,000/- in the
year 2012-13.10 In addition to such extensive pre-sale publicity, the terms of the agreement
dated 1st January 1989, between the Murgwala brothers, granted Arnob the exclusive use
of the mark Murgwala and the goodwill associated with it. 11 Therefore Arnab has the
potential to damage the goodwill of MBBC if his services do not live up to the level which
people have come to expect over the course of 56 years from the plaintiffs restaurants.
Goodwill would not be worth anything if it didnt have the power of attraction to bring
customers home to the source from which it emanated. 12 Since the defendant is using the
AdVerba scheme to divert attention from the plaintiffs business to his, MBBC would
slowly lose the power to attract consumers to its own outlets.
7Allen (WH) & Co v. Brown Watson Ltd [1965] RPC 191; British Broadcasting Co v. Talbot
Motor Co Ltd [1981] FSR 228; Labyrinth Media v Brave World [1995] EMLR 38.
8Factsheet 4 line 3.
12Inland Revenue Commissioners v Muller & Co.s Margarine Ltd, (1901) AC 217.
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According to the extended form of the classical trinity test 13 used by the Madras High
Court in the case of Aravind Laboratories v. Modicare14, for a successful suit of passing off
against the defendant the plaintiff has to show that the defendants action causes actual
damage or would most probably result in such damage. The final outcome in such a suit
would depend on the impact that such adoption of the plaintiffs mark will have on the
goodwill enjoyed by the plaintiff.15 If Arnab is allowed to continue with the usage of
keywords similar and identical to the Arnobs registered trademarks it will result in
substantial damage to the plaintiffs goodwill.
D. THERE IS SUFFICIENT TRADE CONNECTION BETWEEN THE PRODUCTS OF THE
PLAINTIFF AND THE DEFENDANT
In the case of passing off it is immaterial as to whether or not the products of both the
plaintiff and defendant belong to the same class. What the court only needs to examine is
whether there is sufficient trade connection between the products so as to result in
likelihood of confusion.16 In the case of Corn Products Refining Co v. Shangrila Food
Products Ltd17 the appellants product could be used to manufacture the respondents
goods. The court held that this was good enough to establish a sufficient trade connection
between the producers. In Oneida Ltd v Pankaj Jain18 kitchen cutlery and stainless steel
were considered as allied goods. In our case the services offered by both the parties are
almost identical, both offering restaurant and home delivery services. Therefore it is
submitted that there is sufficient trade connection between the two parties, enough to cause
at least a likelihood of confusion on the part of the public.
13Reckitt & Coleman v Borden, [1990] 1 All ER 873.

14Aravind Laboratories v. Modicare, (2011) 4 LW 55.
15Harrods Ltd v Harrodian School Ltd, [1996] RPC 697.
16Padmanabhan, supra note 1, at 69.
17Corn Products Refining Co v. Shangrila Food Products Ltd, A.I.R. 1960 SC 142.
18See cit 57 on pg 70
18 | P a g e
In T.V. Venugopal v. Ushodaya Enterprises Ltd 19 the court held that there could be a
situation where the mark is so well known that ipso facto others would be disentitled from
using a deceptively similar mark in respect of any goods, or in any context whatsoever. In
Honda Motors Co. Ltd v. Charanjit Singh 20 the registered trademark of the plaintiff
(involved in the production of automobiles), HONDA, was being used by the defendant in
the production of cookers. The court said that the trademark is associated with the
plaintiff especially in the field of automobiles and power equipment on account of their
superior quality and high standard. The plaintiffs business or products under the
trademark HONDA has acquired such goodwill and reputation that it has become
distinctive of its products and the defendants use of this mark for their product Pressure
Cooker tends to mislead the public to believe that the defendants business and goods are
that of the plaintiffs. Similarly, MBBC has acquired a reputation in Delhi as over a
course of 56 years it has established 25 outlets throughout the city. Therefore the
trademark of the plaintiff, bought by the defendant as keywords, who is providing similar
services, has been come to be associated by people to the superior quality and standards of
MBBC. The plaintiffs business under his registered trademark has acquired such goodwill
that it has become distinctive of its product. Even though the goods may fall under
different classes, if they are in the same trading channel they can cause confusion and
deception to pass off the goods as those of the plaintiff.21 In Honda Motors Co. Ltd v.
Charanjit Singh22 the court held the defendant liable for passing off even though the goods
of the defendant and plaintiff belonged to different classes.
However Arnab and Arnobs product belong to the same class of services where Arnab is
trying to misuse the goodwill and reputation which has come to be perceived by the people
as being characteristic of MBBC.
II. THE USE OF THE IMPUGNED KEYWORDS BY THE RESPONDENT AMOUNTS TO
TRADEMARK INFRINGEMENT
19T.V. Venugopal v. Ushodaya Enterprises Ltd, (2011) 4 SCC 85.

20Honda Motors Co. Ltd v Charanjit Singh, (2003) 26 PTC 1.
21Creative Handicrafts v. Sedana Electric Co., (1988) PTC 348.
22Honda Motors Co. Ltd v Charanjit Singh, (2003) 26 PTC 1.
19 | P a g e
A. ARNOBS TRADEMARK IS NOT INVALID

a) The registered trade mark of the appellant is protected under the
proviso contained in section 9 of the Trade Marks Act, 1999
According to section 9, which lays down the grounds for refusal of registration of trade
marks, any mark which is devoid of a distinctive character, or is intended to designate the
kind, quality or intended purpose of the services rendered or has become customary in the
current language is not to be registered unless before the date of application for registration it
has acquired a distinctive character as a result of the use made of it. It is submitted that the
registered trade mark of MBBC has acquired a distinctive character in the course of its 34
years of existence before the registration of the trade mark.
Mr. Arvind Kejru Maurgwala established the fast food restaurant called Murgwalas Best
Butter Chicken in Delhi in the year 1959 at Connaught place. It soon became a very popular
restaurant amongst the people of Delhi. Today it is not just a single restaurant, but a chain
with over twenty five outlets within Delhi.
Courts have held that when descriptive words are involved, even a small distinguishing
element in the use would be regarded as adequate. In Office Cleaning Services Limited v.
Westminister Window and General Cleaners Limited the Court of Appeal held that where
the name of the business consists of words descriptive of that business a slight difference will
be a sufficient distinction. The House of Lords, upholding this decision said that "Where a
trader adopts words in common use for his trade name, some risk of confusion is inevitable.
But that risk must be run unless the first user is allowed unfairly to monopolise the words.
The Court will accept comparatively small differences as sufficient to avert confusion." It is
submitted that though the expression Best Butter Chicken can be construed as being
generic and descriptive, the trade mark is not limited to it. The surname of the appellant when
used in the trade mark acts as the distinguishing element which helps people to identify it
solely with the business of the appellant and not think of it as a generic term covering all
restaurants which provide similar services. The registered trade mark of the appellant is an
arbitrary combination of seemingly generic words, which has become distinctive. The
respondent has the option of choosing a number of different words as keywords, which his
purchase of forty six other keywords show, and therefore he need not buy this exact
combination of four words which form the appellants registered trade mark.
20 | P a g e
In so far as trademarks are concerned, they are generally classified in the order of their
increasing distinctiveness: generic, descriptive, suggestive, arbitrary and fanciful. The more
distinctive the mark, the greater the protection afforded by law. When a trademark is not
inherently distinctive, it may nevertheless be protected if it has acquired distinctiveness, also
known as "secondary meaning". But it depends upon the length and manner of use, nature
and extent of advertising and promotion, efforts made to promote conscious connection in the
public's mind between the trademark and the business and extent to which the public actually
identifies the mark and the product or service as measured by Consumer Surveys. The
appellants trade mark fulfills all the aforementioned conditions required to establish the fact
that it has acquired a secondary meaning. The trade mark has been in use for a long time
(fifty six years). The trade mark has also been advertised extensively by the appellant through
the mass media as well as hoardings in Delhi. The long period of existence supplemented by
the advertising efforts undertaken promote a conscious connection in the publics mind as
they relate the expression Murgwalas Best Butter Chicken only to the appellants business.
The courts have also held that if by long association with a persons products or services, a
descriptive word acquires a secondary meaning then theyre entitled to protection. In
Reddaway v. Banhan it was held that the term camel hair belting, an expression containing
solely generic words, had acquired a secondary meaning. The appellants trade mark had
existed for thirty four years before getting registered, in the course of which it became
extremely popular among the people of Delhi. Today it has twenty five outlets in Delhi. All
these facts go to show that Murgwalas Best Butter Chicken serves the trade mark purpose
of helping people identify the source of services as belonging to the business of the appellant
and not think of it a generic description.
A descriptive trade mark may be entitled to protection if it has assumed a secondary meaning
which identifies it with a particular product or as being from a particular source. Therefore it
can be seen that usage of a combination of descriptive words over a long period of time can
lead to identification of the source of goods based on the mark.
b) The registers trade mark of the appellant is valid under sections 31 and
32 of the Trade Marks Act, 1999
The original registration of the trade mark by the appellant in 1993 is prima facie evidence of
its validity.
21 | P a g e
If it is proven that after registration and before commencement of these legal proceedings
challenging the validity of the registration of the appellants trade mark it has acquired a
distinctive character in relation to the services for which it is registered then it will not be
declared invalid.
In the year 2008 (after registration and before commencement of legal proceedings) the
appellant even created a website for his business which allows prospective consumers to
view the menu online and place orders for home delivery, with the guarantee that orders
placed on the website will be delivered in thirty minutes or less. He also undertook extensive
advertising of not only his business but also the websites URL in the mass media as well as
several hoardings in several places across the city. The companys financial statements for
the assessment year 2012-13 recorded advertisement expenditure at a whopping
1,00,00,000/-. All these efforts supplemented the good name and reputation that the
appellants business had even before registration and therefore lend to the establishment of
the distinctive character of the appellants trade mark.
c) The appellant is entitled to the exclusive use of the mark Murgwala
According to the agreement dated 01.01.1989 entered into between the appellant and the
respondent, the mark Murgwala and the goodwill associated with it belonged exclusively to
the defendant.
In Spencer & Co. Ltd v. Spencer Soft Drinks Co. the court recognized that a family mark
such as Spencer can be entitled to trade mark protection since the mark was in use for a
considerably long period of time and had acquired distinctiveness in so far as the applicants
goods were concerned. Similarly, the mark Murgwala has been in use by the appellants
business for a long period of time (fifty six years) and has acquired distinctiveness as shown
above.
In Reddy Pharmaceuticals Ltd v. Dr. Reddys Laboratories Ltd the defendant contended that
the word Reddy was a common surname and hence none could claim monopoly over this.
They also contended that their managing director had Reddy as his surname and that this was
a sufficient enough condition for adopting this name. The Delhi High Court rejected these
contentions and held that the name Reddy had acquired distinctiveness over a period of time.
The court considered as material the reputation of the plaintiffs company.
22 | P a g e
The Punjab and Haryana High Court in the case of United Iron & Steel Works v. Govt. of
India had to decide whether the initials of the applicant UIS could be registered as a trade
mark. The high court held that one of the recognized tests for determining distinctiveness was
whether the registration would tend to protect the public from imposition or the result would
be reverse of it. The court observed that by using the name of an individual or of a firm as a
trade mark, no one should be allowed to prevent any person or firm of a same or similar name
from using its name or initials in connection with the goods manufactured by the second
firm. However if the initials or the name or part of the name had, by constant and extensive
use, acquired distinctiveness, the mark would be entitled to registration and subsequent
protection.
Therefore the contention of the respondent that he is entitled to the use of the mark
Murgwala since it is his surname also is not valid due to the acquired distinctiveness it has
with the appellants business.
There can be no statutory requirement regarding the number of years or exact extent of the
period after the expiry of which a mark may be deemed to have acquired distinctiveness and
this would depend on the facts and circumstances of each case. In the case of United Iron &
Steel Works v Govt. of India a period of two years was held to be sufficient to have enabled
the mark of the appellant to acquire such distinctiveness. In that case the court had to decide
whether the initials of the plaintiff could be registered as a trade mark. As opposed to this the
appellant enjoyed popularity within Delhi for a period of 34 years prior to registration and
here the appellant is claiming exclusivity with respect to the entire trade mark and not some
shortened version of it.
If the respondent argues that the mark Murgwala is made up of two separate words Murg
and Wala, two common words in the Hindi language which when put together form a new
word, then it would be termed as an invented word, which are entitled to a higher degree of
protection. An invented word could be a composite word derived out of two common or
generic words.
B. ARNAB USED THIS TRADEMARK IN THE COURSE OF TRADE
a) The conditions for use are the same as the conditions for use in the
course of trade
23 | P a g e
The Trademark Act does not explicitly define course of trade, though it does allude to it
multiple times. The appellant submits that the reason course of trade is not defined separately
in the Act is that it is meant to be used in combination with the word use. That is to say, when
the legislation defines various conditions which when fulfilled means a person is using a
trademark, it actually means that those conditions when fulfilled mean a person is using it in
the course of trade as well. There is no difference for the purposes of the Act between using a
mark and using a mark in the course of trade as per section 29. It is, after all, a known fact
that to interpret a legislation one must understand the intent of its framers23, and it is likely
that the reason the framers defined when one would be using a trademark but did not
separately define when you would be using it in the course of trade is because they wanted to
imply that use in the context of section 29(6) meant use in the course of trade itself.
This is substantiated in the way this has been interpreted by Courts. In the case of Heineken
Asia Pacific Pte. Ltd v Surjeet Lal24, when the Court, while discussing the elements necessary
to prove infringement, go through the definition of infringement as is provided in Section 26.
When they look at individual factors which comprise infringement, they look at use and
mention that the criteria for showing use are mentioned in Section 29(6): Section 29(6)(c)
expressly provides that for the purpose of Section 29, a person uses a registered mark if he,
inter- alia, imports or exports goods under the mark. At that the Court ends its analysis. It
does not at any time try to consider whether such use was in the course of trade. Similarly, in
the case of Philip Morris Products S.A. & Another v Sameer & Others25, the judge ruled that
reading Section 29(1) along with Section 29(6) was sufficient to show that trademark
infringement had occurred. This again is extremely indicative of the fact that the Court felt
that use was synonymous with use in the course of trade in the context of the Trademark Act.
23 District Mining Officer and Others v Tata Iron and Steel Company and Another, (2001)
SC 20066 Indlaw.
24 Heineken Asia Pacific Pte. Ltd v Surjeet Lal, MANU/DE/2823/2014.
25 Philip Morris Products S.A. & Anr.v Sameer & Others, (2014) DEL 817 Indlaw.
24 | P a g e
The appellant submits that use in the course of trade is the same as use in the context of
Section 29, and hence, according to subsection 626, a person uses a trademark in the course of
trade when he:
(a) affixes it to goods or the packaging thereof:
(b) offers or exposes goods for sale puts them on the market, or stock them for those purposes
under the registered trade mark, or offers or supplies services under the registered trade mark:
(c) imports or exports goods under the mark: or
(d) uses the registered trade mark on business papers or in advertising.
If he does any of these four acts, hes using the trademark in the course of trade.
It is quite clear in this case that condition (d) is being fulfilled.
b) Assuming that the fact that any use was in the course of trade has to be
proven separately
In the absence of a definition being given in the act, the appellant submits that the Court
should refer to the definition of the word given in 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 Engineer27, 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 finding28, preponderance of evidence29, statutory lien30, and so on for various
26 The Trade Marks Act, No. 47 of 1999, 29(6) (1999).
27 Hyder Consulting (UK) Limited v Governor, State of Orissa Through Chief Engineer,
(2014) SC 799 Indlaw.
28 Anand Brothers Private Limited Through M.D. v Union of India and others, (2014) SC
588 Indlaw.
29 Murlidhar Shivram Patekar and another v State of Maharashtra, (2014) SC 649 Indlaw.
30 Stock Exchange, Bombay v V. S. Kandalgaonkar and others, (2014) SC 669 Indlaw.
25 | P a g e
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 required31.
Therefore the course of trade can now be defined as what is customarily or ordinarily done
in the management of trade or business32. It is the appellants submission that advertising
most definitely comes under this definition. This is because through general practice, it is
observable that advertising constitutes an essential and customary feature in the management
of any business today, especially if that business is operating on a scale where its competitors
are spending large amounts of money on advertising. It can be observed that the competitor in
this case had spent one crore rupees as advertising expenditure in this year itself. This points
towards the fact that advertising was customary or expected in this trade or business.
Finally, it has been held in the case of Shell Company Australia Ltd. v. Esso Standard Oil
(Australia) Ltd that the use of mark in advertisement is use in course of trade. In the
Interflora case it was held that use by the advertiser of a sign as a keyword in the context of
an internet referencing service is the means to trigger the display of its advertisement and so
does constitute use of the sign in the course of trade in relation to the goods or services so
advertised. Similarly, in the case of Rescuecom Corp. v. Google Inc. it was held that using a
trademark as a keyword is a use in commerce.
These judgements, while not binding, do hold persuasive value, and the appellant requests the
Court to consider this authoritative.
C. ARNAB CANNOT USE THE DEFENCE OF HAVING USED ONLY PART OF THE
TRADEMARK
a) The respondent is using the entire trademark, not part of it
According to Section 17(1)33, 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.
31 Kamaljit Singh v Sarabjit Singh, (2014) SC 577 Indlaw; Yasha Overseas and Others v
Commissioner of Sales Tax and Others, (2008) SC 1243 Indlaw; Dashrath Rupsingh Rathod
v State of Maharashtra and another, (2014) SC 494 Indlaw; Ptc India Ltd. v Central
Electricity Regulatory Commission, Thr. Its Secretary, (2009) SC 304 Indlaw.
32 Blacks Law Dictionary 352 (6th ed. 1990).
26 | P a g e
Subsection 234 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
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, then the registration thereof shall not confer any
exclusive right in the matter forming only a part of the whole of the trade mark so registered.
It is the appellants submission that this section does not provide an adequate defence for the
respondent. The rationale behind this is simple while a part of a trademark is not protected
and in this case there is no reason to believe that the proprietor has registered it separately as
a trademark, if one is to examine the way the mechanism of AdVerba works there is an
obvious case to be made out for infringement.
The way the mechanism works is if any combination of words out of the 50 keywords that
have been bought by the respondent is entered into Zoozle, then it will show the website of
the respondent as a result35. This includes a possible scenario where the user may type in
Murgwalas Best Butter Chicken and be directed to Arnabs Butter Chicken, as that will be
the result on the very top in case of such a search.
Such a case is clearly a case of trademark infringement, with Arnobs trademark being
infringed. Murgwalas Best Butter Chicken is the entire trademark of the appellant36
therefore, when a user enters that into Zoozle and gets Arnabs website as a result, it isnt a
part of Arnabs trademark being infringed, but his entire trademark. The purchase of these
four keywords is without a doubt causing an infringement of Arnobs complete trademark.
Therefore Arnab cannot use the defence of Arnob not having exclusive right over part of his
trademark.
b) Even if the respondent is held to be using only a part of the trademark,

35 Factsheet 2 line 8.
27 | P a g e
it is still a violation
Subsection 2 of Section 1737 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.
It is the submission of the appellant that parts of the trademark have in this case obtained a
distinctive character, which would take them out of the ambit of Section 17.
The appellant relies on the case of Three-N-Products Private Limited v Emami Limited38,
which held that the words "the registration thereof shall not confer any exclusive right
towards the end of Section 17(2) have to be understood in context. The import of such words
is that the registration of the composite mark will not ipso facto confer any exclusive right as
to the parts of the composite mark. But if the owner can establish exclusivity aliunde, the
owner can assert the exclusivity.
In this case, it the appellants submission that the parts of the mark themselves had attained
such a distinctive character that they had attained exclusivity aliunde.
Murgwalas Best Butter Chicken had massive sales and had spent a massive amount in
advertising to generate revenue for itself39. Because of this, it has become immensely
identifiable as a brand in itself. It is the appellants submission that each part of the brands
name has become identifiable with the brand, even when used individually in a context
completely unrelated to the brand itself. Examples of this can be seen in the real world as
well. When a brand becomes exceptionally popular, even individual parts of its brand name
when used in a different context are automatically identified with the brand itself. For
instance, in a country like India, use of the word Kentucky is likelier to make a person think
of Kentucky Fried Chicken (KFC) than Kentucky the state. This effect will be amplified even

38 Three-N-Products Private Limited v Emami Limited, (2008) CAL 210 Indlaw.
28 | P a g e
more when it comes to MBBC, as the fact that it is an extremely popular40 local chain means
that it is even likelier to possess a strong hold over its consumers psyche, and usage of any
part of the trade name will likely cause recalling of MBBC due to the parts of the mark
having attained a distinctive nature by themselves.
Moreover, in the case of Alaknanda Cement Private Limited and another v Ultratech Cement
Limited41 it was held that the plaintiff can show that one descriptive part is inseparable from
the registered whole mark, in which case such a mark would no longer come under the
jurisdiction of Section 17. This is because since a descriptive part is no longer merely a part
of a trademark i.e. the trademark does not consist of many parts but of a whole, as just taking
away the part would take away the meaning of the trademark. For the trademark to possess
any meaning at all, the descriptive part cannot be separated from it i.e. the descriptive part is
inseparable from the registered whole mark.
This is true in our case. The descriptive part of the trademark in this case is Best Butter
Chicken. It is the appellants submission that this phrase is inseparable from the registered
whole mark. The rationale behind this is clear the word Murgwalas as of itself has no
meaning in the mind of a consumer. It is merely the possessive form of surname. However,
when the word Murgwalas is attached to the descriptive phrase Best Butter Chicken, the
combined expression, Murgwalas Best Butter Chicken denotes something. This whole
trademark has clear meaning it refers to the butter chicken being sold by a vendor named
Murgwala, and claims that this aforementioned chicken is the best in terms of quality.
Removing any one of the words would mean that the trademark does not convey the meaning
that it is meant to convey for instance, Murgwalas Best Butter does not convey nearly the
same meaning as Murgwalas Best Butter Chicken.
It is therefore the appellants submission that in this case since the descriptive part is
inseparable from the registered whole mark, the respondent cannot use section 17 as a shield.
D. ZOOZLE CANNOT USE ITS DEFENCE OF BEING MERELY A SEARCH ENGINE AND
PERFORMING THE FUNCTIONS OF A DIRECTORY
41 Alaknanda Cement Private Limited and another v Ultratech Cement Limited, (2011) MUM 1130 Indlaw.
29 | P a g e
Selling off of keywords can also be said to be in the course of trade when it comes to the
definition given by Blacks Law Dictionary42(the authoritative value of which the appellant
has already established) it is what is customarily or ordinarily done in the management of
trade or business. This can be understood by the fact that search engines do ordinarily sell
keywords in the course of business an example can be the AdWords scheme43 carried out by
Google.
The appellant submits that in this case Zoozle overshot its functions as a mere search engine
which does the job of a directory and therefore cannot be said to be immune from liability.
One must first begin by examining the meaning of the defence taken by Zoozle that is to
say, why does being a search engine which performs the functions of a directory exempt
Zoozle from liability? One must refer to the Amendment of the IT Act in 2008, which defined
an intermediary44 as follows: "Intermediary" with respect to any particular electronic records,
means any person who on behalf of another person receives, stores or transmits that record or
provides any service with respect to that record and includes telecom service providers,
network service providers, internet service providers, web hosting service providers, search
engines, online payment sites, online-auction sites, online market places and cyber cafes.
Section 79(1) of the IT Act45 says that an intermediary shall not be liable for any third party
information, data, or communication link hosted by him. Therefore, Zoozles rationale is that
due to its legal status as that of an intermediary, it cannot be held liable for the data hosted by
it.
It is important to note, however, that certain exceptions to this general exemption clause have
been made it the IT Act itself.
Section 79(2)(a)46 says that the exemption from liability is granted only if the function of the
intermediary is limited to providing access to a communication system over which
42 Blacks Law Dictionary 352 (6th ed. 1990).
43 GET YOUR AD ON GOOGLE TODAY, https://www.google.com/adwords/ (last visited
Jan. 21, 2015).
44 The Information Technology (Amendment) Act, No. 10 of 2009, 2(1)(w) (2008).
45 The Information Technology (Amendment) Act, No. 10 of 2009, 79(1) (2008).
30 | P a g e
information made available by third parties is transmitted or temporarily stored. In this case,
it can be stated that Zoozle did not merely limit itself to providing access to a communication
system. Instead, it conducted an auction of sorts to modify the results which can be found on
the communication system47. Moreover, when given notice that contents on its website were
violating a registered trademark48, it sent back its own legal opinion saying that the contents
were not doing so49. This in no way can be said to be limited to providing access to a
communication system. Since its action was not limited to providing access to a
communication system, it cannot claim an exemption from liability.
Even if one were to hold that Zoozle has not voided its exemption from liability under
subsection (a), it does so under subsection (b)(iii)50. 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 transmission. In this case, however, Zoozle openly and
notoriously modified the information contained in the results by auctioning off search
results51 and even going so far as to show them above the organic search results52. If it were to
follow its own algorithm, then it would not modify the results in any way. However, an
element of human interference does appear when they auction off certain search results. In
doing so, Zoozle is modifying the information contained in the transmission to generate a
greater profit.
There are in fact two more sub-clauses under which Zoozle as an intermediary can be held to
have voided its exemption from liability.
46 The Information Technology (Amendment) Act, No. 10 of 2009, 79(2)(a) (2008).

50 The Information Technology (Amendment) Act, No. 10 of 2009, 79(2)(b)(iii) (2008).
31 | P a g e
According Section 79(3)(a), the intermediary shall not be exempt from liability if it has
conspired or abetted or aided or induced whether by threats or promise or otherwise in the
commission of the unlawful act53. In this case, it can be said without a shadow of doubt that
the intermediary abetted the commission of the unlawful act. Section 107 of the Indian Penal
Code says54 that one abets the doing of a thing if he intentionally aids, by any act or illegal
omission, the doing of that thing. By the act of auctioning off the keyword in question, and in
fact personally conducting the auction, it can be said without a shadow of doubt that Zoozle
is aiding the doing of this act (the act here being the infringement of trademark which is
taking place. The fact that they had full knowledge and intention can be inferred form the fact
that they had notice and nonetheless went ahead with allowing these keywords to continue
being used. Therefore, under Section 79(3)(a), Zoozle is not exempt from liability.
Section 3(b) says that if upon receiving actual knowledge, or on being notified by the
appropriate Government or its agency that any information, data or communication link
residing in or connected to a computer resource controlled by the intermediary is being used
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 liability55. In this case, the first part of this section is
applicable Zoozle received actual knowledge that a computer resource being controlled by
it was being used to commit an unlawful act56. However, at this point, it refused to step in and
expeditiously remove access to that material. Instead, it went so far as to use its own legal
opinion as to whether or not the material in question was unlawful57. This is something which
it is nowhere empowered to do. On being made aware by the appellant that it was
contributing to infringement, it should have disabled access to the unlawful material. Since it
failed to do that, it is the appellants submission that it has voided its exemption from liability.
53 The Information Technology (Amendment) Act, No. 10 of 2009, 79(3)(a) (2008).

54 The Indian Penal Code, No. 45 of 1860, 107 (1860).
55 The Information Technology (Amendment) Act, No. 10 of 2009, 79(3)(b) (2008).
32 | P a g e
Moreover, the Intermediaries Guidelines Rules, 2011, say that the intermediary has an
obligation to inform the users of computer resource not to host, display, upload, modify,
publish, transmit, update or share any information that infringes any patent, trademark,
copyright or other proprietary rights.58 However, if the intermediary, on whose computer
system the information is stored or hosted or published, upon obtaining knowledge by itself
or been brought to actual knowledge by an affected person in writing or through email signed
with electronic signature about any such information as mentioned above, shall act within
thirty six hours and where applicable, work with user or owner of such information to disable
such information59.
It is clear that in this case Zoozle has not fulfilled its function of acting the way an
intermediary is legally obligated to act. It had been brought to its notice by the affected party
i.e. the appellant in writing that it was in fact hosting information was violatory of the
trademark held by the appellant. However, rather than act upon this information within thirty
six hours, Zoozle did not act. Instead, it replied nearly a month later stating that it did not
believe that the act in question constituted a trademark violation. There are two problems here
firstly, the fact that Zoozle is supposed to act within thirty six hours, which it did not do.
Instead, it did nothing about the problem for nearly a month. Secondly, after taking nearly a
month, rather than acting the way an intermediary is supposed to and leaving the legal dispute
to the Court, Zoozle intervened and based on its own legal opinion chose to not take down the
infringing keywords.
E. THIS INFRINGEMENT IS LIKELY TO CAUSE CONFUSION OR CAUSE THE CONSUMER
TO BELIEVE THAT THERE IS AN ASSOCIATION WITH THE REGISTERED TRADEMARK
Finally, it is the appellants submission that in this case the mark of Arnab which because of
its similarity to the registered trade mark of Arnob and the identity or similarity of the goods
or services covered by such registered trade mark is likely to cause confusion on the part of
the public, or which is likely to have an association with the registered trade mark.
58 The Information Technology (Intermediaries guidelines) Rules, 2011, Gazette of India,

section 3(2)(b) (Apr 11, 2011).
59 The Information Technology (Intermediaries guidelines) Rules, 2011, Gazette of India,
section 3(3)(4) (Apr 11, 2011).
33 | P a g e
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.
In the case of Delhi Public School Society v D P S Trust60, the plaintiff, the Delhi Public
School Society, was granted an injunction. This despite the fact that the two trademarks, in
terms of design at least, were not deceptively similar.
This was because of the fact that the two societies worked in a similar line i.e. they were both
engaged in the setting up of schools. This, along with the similarity of the names between the
two, was found to have enough similarity as to cause confusion amongst the consumers at
large. Since out of the two the Delhi Public School Society was the better established, it was
understood that allowing the DPS Trust to carry on with its chosen name could carry
irreparable damage to the Delhi Public School Society, as it was possible that prospective
consumers would be misled into believing that the schools being run by the DPS Trust were
in fact Delhi Public Schools.
This case holds direct application to our case. MBBC and ABC are two food brands which
are owned by two brothers, out of which MBBC is by far the better known and more
established. In such a scenario, when a consumer searches for Murgwalas Best Butter
Chicken and the top result is Arnabs Butter Chicken, it is likely that he will be misled into
believing that Arnabs Butter Chicken is the flagbearer of the Murgwala chicken brand
(which the brothers father started) when in reality it is MBBC which holds that position.
Therefore, he is likely to buy chicken from ABC, assuming that it holds the market position
and sells the kind of chicken that is in fact MBBCs domain.
The fact that this is likely to lead to confusion is exacerbated by the fact that both the
companies operate in the exact same market in terms of the object they are selling, increasing
manifold the possibility of there being confusion in the mind of the buyer.
Another factor that must be considered is that of initial interest confusion. Initial interest
confusion is a bait and switch tactic that permits a competitor to lure consumers away from
a service provider by passing off services as those of the provider, notwithstanding that the
confusion is dispelled by the time of sale. For example, the likelihood that a potential
purchaser of a specialised computer program may be drawn to the junior user, thinking it was
60 Delhi Public School Society v D P S Trust, (2012) DEL 3370 Indlaw.
34 | P a g e
the senior user, is actionable "confusion" even if over the course of several months of the
purchasing decision-making process, the buyer's confusion is dissipated. The analogy to
trademark initial interest confusion is a jobseeker who misrepresents educational background
on a resume, obtains an interview and at the interview explains that the inflated resume claim
is a mistake or a typo. The misrepresentation has enabled the job-seeking to obtain a coveted
interview, a clear advantage over others with the same background who honestly stated their
educational achievements on their resumes. In such a situation, it is not possible to say that
the misrepresentation caused no competitive damage.61
Moreover, it was held in the case of Horlicks Limited and Others v Uttam Sadhukan62 that
intent does not matter. Even if the offending party adopted innocently a name which infringed
the trademark of the plaintiff, infringement is infringement and does not need mens rea.
There is no requirement to prove intent all that needs to be shown is that infringement has
happened which is likely to lead to confusion.
It is the appellants submission that this is a case of initial interest confusion.
It is possible that once a potential buyer goes on to the website of Arnabs Butter Chicken, he
will realise that Arnab is selling a product different from Arnob. However, the mere fact that
the consumer has been lured to Arnabs website in the first place means that this has caused
confusion on the part of the public. Therefore, it is a clear cut case of infringement.
Even if the consumer is not confused by the similarity between the names of the two
companies and lead into believing that the respondents company is actually the appellants, it
is likely that due to the extreme similarity in the names and type of product between the two
companies that the consumer will think that there is some sort of association between the
product being sold by the respondent and the one being sold by the appellant.
There are reasonable grounds for us to say that such an association is likely to be made.
Firstly, the two products are in the same field exactly i.e. butter chicken. Secondly, the
appellant has already established himself in this field. Thirdly, due to the fact that the
61 4 J. McCARTHY, TRADEMARKS AND UNFAIR COMPETITION 19-23, (Clark Boardman

Callaghan) (1988) (4th Edn. 1988).
62 Horlicks Limited and Others v Uttam Sadhukan , (2002) DEL 561 Indlaw.
35 | P a g e
keyword Murgwala63 is being used by the respondent to advertise his product, it seems likely
that the consumer could draw an inference that the butter chicken being sold by Arnab is a
part of the Murgwala brand of butter chicken. Therefore, it seems likely that the consumer
will think that there is likely to have an association with the registered trade mark, and
therefore, on this ground, the respondent is guilty of infringing the appellants trademark.
In the case of Yashoda Super Speciality Hospitals, a partnership firm, represented by its
partner G. Devender Rao v Yashoda Medicare and Research Centre Private Limited, a
company registered under Companies Act, 1956, having its registered office at New Delhi,
represented by Its Director and another64, it was held that Yashoda had established itself and
made its name in the industry of healthcare. It now possessed a certain reputation in this field.
Yashoda Medicare was not strictly the same as Yashoda Super Speciality Hospitals, in fact it
was distinguished in that it was more research focused as opposed to running a slew of
hospitals. Despite this fact, however, Yashoda Hospitals application for an injunction owing
to trademark infringement was granted. This is because due to Yashoda Hospitals prior
reputation in the medical field, it could lead to confusion and even lead to consumers thinking
that there is an association between Yashoda Super Speciality Hospitals and Yashoda
Medicare and Research Centre Private Limited.
In our case, the two companies are even in the exact same field i.e. the sale of the same food
product. This means that it is even likelier that the consumer may end up thinking that the
two companies are associated, and by doing so, the respondent will benefit from the prestige
and established goodwill of the appellant in the Delhi area.
III. ZOOZLE HAS ENTERED INTO ANTI COMPETITIVE AGREEMENTS WITH THE USERS
OF THE
ADVERBA SCHEME
It is submitted that Zoozle has entered into agreements with users of its AdVerba scheme
that have an appreciable adverse effect on competition. Further, the agreement results in
unfair competition in the relevant market.
64 Yashoda Super Speciality Hospitals, a partnership firm, represented by its partner G.
Devender Rao v Yashoda Medicare and Research Centre Private Limited, a company
registered under Companies Act, 1956, having its registered office at New Delhi, represented
by Its Director and another, (2010) AP 534 Indlaw.
36 | P a g e
A. THE AGREEMENT BETWEEN ZOOZLE AND USERS OF THE ADVERBA SCHEME HAS
AN APPRECIABLE ADVERSE EFFECT ON COMPETITION
An agreement entered into between two persons at different levels or stages in different
markets that causes or is likely to cause an appreciable adverse effect on competition in
India is in violation of Section 3(4) of the Competition act. 65 Such agreements are void.66
This section is not exhaustive and hence covers all agreements that are deemed to have an
appreciable adverse effect on competition by measuring them against factors enumerated
under Section 19(3) of the Competition Act.67
In the present case, Zoozle enters into an agreement with its consumers under the AdVerba
scheme to advertise their website.68 The scheme provides to the highest bidder for a
keyword; the opportunity to trigger a specific result above the organic search list generated
when a user enters a certain query into Zoozles search engine. 69 This result is separated
from the organic search list by being highlighted in light yellow and being termed as
suggested posts, with the words sponsored ads being written alongside them.70
It is submitted that despite this separation between advertisements and organic results
confusion may be created in the minds of the consumers as to whether these posts are
suggested by Zoozle, or are simply proffered as advertisements. 71 Zoozle seems to, in the
eyes of a rational user; be proffering a particular result as the most appropriate when the
query entered on the website is specifically for another service. These posts do not
65 Multiplex Association of India v. United Producers/Distributors Forum and Others, (2011)
Indlaw 18.
66 The Competition Act, No. 12 of 2003, 3(2) (2002).
67 South Asia LPG Company Pvt. Ltd. v. Competition Commission of India, (2014) Indlaw
2530; Neeraj Malhotra, Advocate v. Deutsche Post Bank Home Finance Limited (Deutsche
Bank) and Others, (2010) Indlaw 28.
68 Factsheet, 6.
69 Factsheet, 2.
70 Factsheet, 2.
71 Warner Bros. Entertainment Inc. and Another. v. Harinder Kohli and Others, (2008)
Indlaw 1092; Interflora Inc. and Another v. Marks and Spencer Plc, EWCA Civ. 1403 (2014).
37 | P a g e
necessarily have to linked to the bidders business and can be triggered by any keyword,
regardless of whether they are associated with the website that it being displayed as part of
the advertisement. The advertiser seems to be endeavouring to reap where (he) has not
sown72 by exploiting the goodwill of a competitor to advertise his own business. Hence,
Zoozle is directing a consumer of its search engine services to the website of persons, with
whom it has entered into a contract; disregarding the organic search list and the algorithm
therein. This negatively affects existing competitors in the market when the reasons for
advertising ones website online are considered, which include the delivery of relevant,
tailored and consumer specific services to a wide market of consumers on the internet.73
The appreciable adverse effect that an agreement has on competition is measured on the
basis of aggravating and ameliorating factors specified under section 19(3).74
a) Driving Existing Competitors out of the market
By virtue of the AdVerba scheme, existing competitors in the market are likely to be
driven out as the purpose with which they provide their services to customers through an
online intermediary is being nullified. This is so because the intermediary itself is
propagating one amongst all the competitors as representative of that market, by terming
the search result containing its web link as a suggested post thereby implying its greater
relevance and accompanying importance to the consumer.75 Hence existing competitors are
disallowed visibility in the market by virtue of having a single competitor be given the
opportunity to advertise their own website at the expense of the goodwill of the trademark
of the former. This results in their potential customers being poached and hence may lead
to them being driven out of the market.
b) Creation of barriers to new entrants in the market
72 International News Service v. Associated Press, 248 US 215 (1918); Roy Export Company
Establishment of Vaduz, Liechtenstein, et al v. Columbia Broadcasting System Inc. 672 F.2d
1095 (1982).
73 1-800 Contacts Inc. v. Lens.com Inc. 722 F.3d 1229 (10th Cir. 2013).
Indlaw 18.
75 Factsheet, 2.
38 | P a g e
Moreover, barriers are created to new entrants into this market as it is being polarized in
favour of the person with whom Zoozle entered into an agreement under the AdVerba
scheme. Even if a new entrant tries to display his website online, it will be overshadowed
by the suggestions posted by Zoozle that seem to endorse a particular consumer in the
market. Moreover, the lower down in the list of results that the link to a webpage (is)
ranked, the less likely (is) a user to click on that link 76; which suggests that new entrants
in a competitive market will be precluded from having complete access to it by virtue of
the AdVerba scheme, which allows for competitors in a market to ensure that a link to their
website is at the top of the list, regardless of the search query entered.
c) Ameliorating factors
Ameliorating factors77 such as those specified in sub sections (d) to (f) of the section are
inapplicable and hence insufficient defences to hide behind, as there is no improvement in
production or distribution of goods and neither is there any promotion of technical and
scientific development. While the respondent may argue that there is an accrual of benefits
to consumers, it is submitted that as the consumers are being misled into believing that
their most appropriate search response is something other than what it actually is; and that
their results are not they are actually looking for they do not receive any benefit under
this scheme either.
Hence, it is submitted that the agreement between Zoozle and users of its AdVerba scheme
enter does indeed have an appreciable adverse effect on competition.
B. THE AGREEMENT RESULTS IN UNFAIR COMPETITION
Unfair trade practices are dealt with under the consumer protection act and are understood
as trade practices that adopt unfair or deceptive practices such as false representation of
goods or services, for the purpose of promoting the provision of services. 78 The same has a
wider ambit under American and European jurisprudence where it is a broad and flexible
76 Infederation Ltd. v. Google Inc., EWHC (Ch) 2295, (2013).

Indlaw 18.
78 The Consumer Protection Act, No. 68 of 1986 2(1)(r) (1986).
39 | P a g e
doctrine79 that encompasses any form of commercial immorality 80 or simply

endeavouring to reap where (one) has not sown 81. In cases such as these, the question is
whether this activity is fair competition presenting web users with useful alternatives or
whether it is a form of unfair free riding on the fame of well known marks 82 Intent,
honesty and state of mind is also an important consideration while determining whether a
trade practice is considered as unfair.83
An agreement entered into under the AdVerba scheme allows people to advertise their
business on a popular online search engine by purchasing certain keywords pursuant to the
same. The informants trademarks were used as keywords and on them being entered as
search queries directed the potential customers to the website of a competitor. This, along
with the terminology of these paid advertisements as suggested indicate that the
advertiser seeks to exploit the goodwill garnered by the trademark of the informant and
use it for furthering his own purpose. This sort of commercial immorality is possible only
when it is observed as a concerted action under the aegis of the AdVerba agreement. It is
this agreement that allows the advertisement and brands it as suggested which results in
potential customers of the informant who were looking for his website to be misled into
that of another; which amounts to unfair competition as one party is taking the
expenditures and labours of another84 and misappropriating (it) for the commercial
advantage of one person85.
79 Ronson Art Metal Works, Inc v. Gibson Lighter Manufacturing Co., 159 N.Y.S.2d 606,
(1957).
80 Metropolitan Opera Association v. Wagner-Nichols Recorder Corporation 101 N.Y.S.2d
488.
81 Roy Export Company Establishment of Vaduz, Liechtenstein, et al v. Columbia
Broadcasting System Inc. 672 F.2d 1095 (1982).
82 Consim Info Pvt Ltd. v. Google India Pvt Ltd., (2012) Indlaw 2621.
83 Micheal Holterhoff v. Ulrich Freiesleben (2002) F.S.R. 23.
84 Electrolux Coroporation v. Val-Worth Inc. 190 N.Y.S.2d 977, (1959).
85 Metropolitan Opera Association v. Wagner-Nichols Recorder Corporation 159 N.Y.S.2d
488.
40 | P a g e
IV. ZOOZLE ABUSED ITS DOMINANT POSITION IN THE MARKET
It is submitted that Zoozle dominates the relevant market of online search engines and
abuses this position by attempting to enter another relevant market by leveraging its
dominance. It denies competitors access to their relevant markets and thereby abuses its
market position.
A. THE RELEVANT MARKET
Dominant position is understood as a position of strength that allows it to operate

independently of competitive forces prevailing in the market, or affect its competitors or
consumers in its favour.86 The actual scope of a dominant firms special responsibility
must be considered in relation the degree of dominance held by that firm and to the special
characteristics of the market which may affect the competitive situation.87
It is submitted that Zoozle has a dominant position in the market in terms of market share,
dependence of consumers on the enterprise, and size and resources of the enterprise. This
is evidenced by the fact that internationally, 60% of people use it for their internet search
queries and in India, more than 80% of people access the website on a daily basis. 88 Any
advertising scheme on the website will potentially reach more than 80% of internet users
in the country.89 It can be presumed that an entity is dominant in a particular market in
absentia any other evidence if it has a market share persistently above 50 per cent. 90
Market share, size, resources and importance of the company are all relevant factors while
determining whether or not a dominant position is enjoyed in a particular market. 91
Moreover, Zoozle is based in Berlin and makes its presence felt extremely strongly in
86 The Competition Act, No. 12 of 2003, 4 Explanation (a) (2002).
87 C-1/36.915 Deutsche Post AG Interception of cross-border mail, 2002 4 C.M.L.R. 598.
88 Factsheet, 1.
89 COMP/M5727 Microsoft/Yahoo! (2010).
90 Case C-62/86, AKZO Chemie BV v Commission, 1993 5 C.M.L.R. 215.
91 The Competition Act, No 12 of 2003, 19(4), (2002).
41 | P a g e
India,92 which indicates that it is an international enterprise with a great deal of resources.
Thus, Zoozle has a very high stake in the market, has enough resources and power to be
dominantly influential in international markets and is depended upon by a large majority
of consumers in India.93 All of these factors indicate that in terms of online search engines,
Zoozle does enjoy a dominant position in the Indian market.94
B. ABUSE OF DOMINANT POSITION BY DENYING COMPETITORS MARKET ACCESS TO
THE INFORMANT
An enterprise is said to have abused its dominant position if it exploits the same to deny
market access to its competitors.95 The extent of the dominant firms special responsibility
is measured on the basis of the degree of dominance held in that market where the
competitive situation is being evaluated.96 The informant is denied access to the unique
market involved, resulting in an abuse of dominant position.
a) The market in the particular case of the informant is unique
The market in this case is unique inasmuch as it is accessed through utilizing another
service, namely that of online search engines. The informant competes with the respondent
in the present case in a market involving the service of home delivery of food by placing
an order online.97 Customers in this market are more aware of the trademarks of the
competitors involved than the competitors themselves, and hence their only point of access
to the same is by entering these trademarks of parts thereof on search engines, seeking a
particular result. Thus, these websites on the internet can only be reached through online
search engines such as that of Zoozle, a market in which Zoozle enjoys dominance.
92 Factsheet, 1.
93 The Competition Act, No. 12 of 2003, 19(4), (2002).
94 See COMP/M5727 Microsoft/Yahoo! (2010).
95 The Competition Act, No. 12 of 2003, 4(2) (c) (2002).
96 See, Kapoor Glass Private Limited v. Schott Glass India Private Limited, (2013) Indlaw
22.
97 Factsheet, 4, 5.
42 | P a g e
b) Denial of market access
The AdVerba scheme exploits this position in the market, allowing the highest bidder in its
auction to represent the appellants website as indicative of their own services. The online
market is distinct from offline markets, 98 and Zoozles AdVerba scheme discriminates
between competitors providing similar services online by mandatorily placing one over the
other even when that differs from the organic search results. An agreement under the
AdVerba scheme allows one competitor to advertise and promote his website above that of
his competitors, and when a search is made specifically for the competitor, the advertiser
can promote his own business instead of the same.
In the case of the informant, due to the nature of the AdVerba scheme and its allowance of
registered trademarks being passed off as representative of others; a potential customer
searching for the website of the appellant will be directed towards that of the respondent
by virtue of it being suggested by Zoozle. Considering that access to this market is only
through such search engines, and acknowledging Zoozles super dominance 99 in the
market for the same, the appellant is denied access to this market. Customers in this
unique market are precluded from being given access to the website of the informant as it
is lower down in the list of search results and hence less likely to be clicked.100
This is solely because of the involvement of Zoozle under its AdVerba scheme and as it a
competitor access to the market, it amounts to an abuse of dominant position.
C. ABUSE OF DOMINANT POSITION TO ENTER INTO ANOTHER RELEVANT MARKET
Section 4(2)(e) of the Competition Act asserts that there shall be an abuse of dominant
position if an enterprise or a group uses its dominant position in one relevant market to
enter into, or protect another relevant market.101 It is necessary to define two markets so as
to establish abuse of dominance under section 4(2)(e) of the competition act. 102 The two
98 COMP /M4731 Google/Double Click (2008).
99 Richard Whish & David Bailey, Competition law 681 (7th ed. 2012).
100 Infederation Ltd. v. Google Inc., EWHC (Ch) 2295, (2013).
101 Competition Act, 2002, 4(2), 4(2) (e).
102 Arshiyat Rail Infrastructure and another v. Ministry of Railways and Another, (2012)
Indlaw 25.
43 | P a g e
markets in the present case are those of online search engines and online search
advertising services.103 Zoozle entered into the online search advertising market in 2011.104
It is submitted that Zoozle, through its AdVerba scheme abuses its dominant position as it
uses this dominance in the online search engine market to enter into another relevant
market, that being that of online search advertising There is nothing to suggest that there
wasnt already a market for online search advertising before Zoozles foray into the same.
Even if there was, Zoozle did not have any stake in that market. It is only in 2011 that
Zoozle entered the market to provide advertisements on its website. 105 In doing so, it used
its presence as a major internet search provider to ensure that it could potentially gain a
foothold in the new market. This it did through exploiting its dominant position in the
online search engine market which is where the advertisements are posted. It is only
because more than 80% of Indian online traffic went through Zoozles website that it
entered into the online search advertising market and attempted to secure its dominance
therein as well through the AdVerba scheme. This is an abuse of its dominant position and
is hence violative of the competition act.
103 Google Inc. v. Australian Competition and Consumer Commission (2013) 249 CLR 435;
Joined Cases C-236/08 to C-238/08, Google Inc. Louis Vuitton, Google France SARL v.
Viaticum SA and Another, Google France SARL v. Tiger SARL and Others, 2010 E.C.R. I2467.
104 Factsheet, 2.
105 Factsheet, 1, 2.
44 | P a g e
PRAYER FOR RELIEF
Wherefore in light of the Issues Involved, Arguments raised, and Authorities cited, Mr. Arnab
Murgwala and , the Appellant, respectfully requests the Court to adjudge and declare that:
1. Mr. Arnab Murgwala and Zoozle GmBH infringed the registered trade mark of the
appellant.
2. Mr. Arnab Murgwala and Zoozle GmBH passed off the respondents services as those
belonging to the appellant.
3. The AdVerba Advertisement Scheme is an abuse of dominant position by Zoozle
GmBH.
4. The agreement entered into under the AdVerba scheme has an appreciable adverse
effect on competition
All of which is respectfully affirmed and submitted,

On behalf of the Appellant,
Mr Arnob Murgwala.
45 | P a g e

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1537 A

The Supreme Court of India

Civil Appeal No. ____2015

Civil Appeal No. ____2015

Memorial for the appellant, 2015.

Arnobs trademark is not invalid...............................................................................20

The appellant is entitled to the exclusive use of the mark Murgwala................22

The respondent is using the entire trademark, not part of it..................................26

Driving Existing Competitors out of the market...................................................36

Creation of barriers to new entrants in the market.................................................37

The agreement results in unfair competition.............................................................38

The relevant market...................................................................................................39

abuse of dominant position by denying competitors market access to the informant

The market in the particular case of the informant is unique................................40

Denial of market access.........................................................................................40

Prayer for Relief.......................................................................................................................43

63. Wyeth Holdings Corporation v. Burnet Pharmaceuticals, (2008) 36 PTC 478

I. Civil Appeal No. ____2015

USE OF THE IMPUGNED KEYWORDS BY THE RESPONDENT AMOUNTS TO THE TORT

USE OF THE IMPUGNED KEYWORDS BY THE RESPONDENT AMOUNTS TO

A. Arnobs trademark is not invalid

ARNAB HAS DAMAGED THE GOODWILL OF THE PLAINTIFFS BUSINESS

13Reckitt & Coleman v Borden, [1990] 1 All ER 873.

19T.V. Venugopal v. Ushodaya Enterprises Ltd, (2011) 4 SCC 85.

A. ARNOBS TRADEMARK IS NOT INVALID

a) The respondent is using the entire trademark, not part of it

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

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

46 The Information Technology (Amendment) Act, No. 10 of 2009, 79(2)(a) (2008).

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

58 The Information Technology (Intermediaries guidelines) Rules, 2011, Gazette of India,

61 4 J. McCARTHY, TRADEMARKS AND UNFAIR COMPETITION 19-23, (Clark Boardman

76 Infederation Ltd. v. Google Inc., EWHC (Ch) 2295, (2013).

doctrine79 that encompasses any form of commercial immorality 80 or simply

IV. ZOOZLE ABUSED ITS DOMINANT POSITION IN THE MARKET

Dominant position is understood as a position of strength that allows it to operate

b) Denial of market access

PRAYER FOR RELIEF

All of which is respectfully affirmed and submitted,

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