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Author	Assoc Prof Gargi Chakrabarti
Organisation/Institution	Dharmashastra National Law University Jabalpur
Country	INDIA
Panel	Intellectual Property Rights
Title	Use of Trademark as ‘Keyword’/’Meta-tag’ and Intermediary Liability: Need of a Regional Guideline for Asia
Abstract	Use of registered trademark (TM)as a ‘meta-tag’ or as a ‘keyword’ is a common practice in the current era of booming e-commerce. Legal regimes are equipped well to handle the traditional ‘use’ of TM, but not to the ‘use’ of TM as ‘Keyword’/’Meta-tag’. Issues and challenges are – (i) whether ‘use’ of TM as ‘Keyword’/’Meta-tag’ can be considered as ‘use’ in trademark sense, because this is ‘invisible’ use; (ii) whether such ‘use’ of TM can cause ‘likelihood of confusion’ for consumers, which would tantamount to TM infringement; and (iii) whether search engine operators can be held liable for contributory liability. Judicial interpretation of such issues varies largely in different jurisdictions. In India, Delhi High Court Single Bench found use of TM as keyword as TM infringement in Makemytrip case [CS(COMM)268/2022]; but Division Bench of Delhi High Court found no infringement [FAO (OS)(COMM)147/2022]. Korean Patent Court found no infringement when TM was used as keyword in paid search by third party [VSP-NTC case, Judgement of 15/09/2010, Patent Court, 2010 Heo 3271]; however, the Korean Supreme Court held the opposite [VSP NTC case, Judgement of 24/05/2012, Supreme Court, 2010 Hu 3073]. In Japan, the Court found TM infringement in case of TM used in meta description [IKEA case, 2012 (wa) 21067]; but found no infringement when TM was used as meta description/keywords, as these are ‘invisible’ [BIKE LIFTER, 2015 (wa) 547]. Chinese Guangzhou Interm. People’s Ct. of Guangdong held keyword advertising provider jointly liable for TM infringement [Nedfon case, 2008 HUI ZHONG FA MIN SAN ZHONG ZI 119]; whereas Delhi High Court found no such liability [Makemytrip case]. Taiwan IP Court as First Instance Court found no infringement liability for search engine provider in case of TM keyword in ‘Happy Sauce’ case [2012 Min-Shan-Su-Zi 22]; however, Second Instance Court found contributory liability [2013 Min-Shang-Shang-Zi 8]. Analysis of legal regime of Asian countries (e.g. India, Japan, China, Korea, Singapore, Taiwan) will be done, along with analysis of the judicial decisions, to get the better insight on this complex, to reach a possible solution by providing regional guideline for Asia to address such issues and challenges, and to find the way forward to economic development of Asia in this digital era.
Biography	Dr Gargi Chakrabarti is an Associate Professor (Law), Controller of Examination (COE), Dean of Faculties (Additional Charge), Director of Centre for Advocacy, Practice and Research on IP (CAPRIP) and In-Charge of Academic Outreach Committee (AOC) at Dharmashastra National Law University, Jabalpur, Madhya Pradesh. She was a post-doctoral research fellow at the Max Planck Institute of Innovation and Competition, Munich, Germany. She is awarded a PhD from NALSAR University of Law, Hyderabad, and an M.Phil. from NLS, Bangalore. She has completed an LL.M. in International and Comparative IP Law from London Metropolitan University, London, UK. She has more than 15 years of teaching and research experience. Her areas of interest include Intellectual Property Law, Cyber Law, Competition Law and Environment Law. She has more than 40 publications to her credit, and she has presented several research papers at international and national levels. She has been a Tutor for WIPO Academy since 2019, completing 12 online IP Courses on Trademark and GI. She received the Faculty of the Year award in LEAP 2025 by the London School of Digital Business.