upGrad files Rs 3 cr trademark infringement suit against edtech firm Scaler

Accuses Scaler of using its brand name 'upGrad' through Google Ads to appear on top of search results on Google Search Engine and in turn gaining illicit benefit

Ronnie Screwvala-led edtech unicorn upGrad,  has filed a suit for trademark infringement against another EdTech company called Scaler. The suit has been filed in the Delhi High Court for violation of the intellectual property relating to upGrad’s trademark. It has also sought damages of more than Rs 3 crore. upGrad accused Scaler of using its brand name ‘upGrad’ through Google Ads to appear on top of search results on Google Search Engine and in turn gaining illicit benefit.

On Monday 29 November 2021, the Delhi High Court granted an ad-interim injunction in favour of upGrad. The court, until further notice, has also directed Scaler to not to bid on upGrad’s registered marks and or its variants using Google Ads Programs or any other keyword program.

“The lawsuit will ensure that our trademarks and intellectual property are protected and will also discourage unlawful usage in future,” said Arjun Mohan, CEO - India, upGrad. “We have made substantial investments in building our brands, and it is essential that we protect our rights. We are also evaluating filing trademark infringements suits against other edtech companies indulging in similar Adword bidding activity.”

Recently in a similar Google AdWords case, The Delhi High Court granted an interim injunction in the favour of travel company MakeMyTrip and against its rival, HappyEasyGo.

In the same matter and under one of its recent orders, the court also directed Google to block/suspend the Google Ads account of HappyEasyGo. Also, in one of the other similar matters filed by DRS Logistics, the Delhi High Court stated that “Google cannot absolve themselves from the liability of ensuring that the keyword is not an infringement of the trademark.”

In October this year, Walmart-owned digital payments firm PhonePe approached the Bombay High Court seeking an injunction to restrain its rival Resilient Innovations (BharatPe) from misusing PhonePe's registered trademarks by using and promoting the marks 'PostPe' / 'postpe'.

However, to address certain observations made by the Court in the pleadings filed by PhonePe, the Suit was withdrawn with liberty to file a fresh Suit challenging the adoption of mark PostPe/postpe by Resilient Innovations.

Later, Resilient Innovations Pvt Ltd (owner and user of the 'BharatPe' and 'PostPe' marks) filed six different petitions before the Delhi High Court seeking cancellation and removal of the entry pertaining to some of PhonePe’s registered trademarks from the Register of Trade Marks, wherein it also sought interim relief against use of such registered trademarks of PhonePe.

“Google Adwords bidding wars are standard industry practice these days. That said, we vehemently and categorically deny the charges levelled by upGrad. We have not used their brand name in our advertising or indulged in any activity that would result in copyright or trademark infringement," said Abhimanyu Saxena, Co-Founder, InterviewBit and Scaler. "Top tech companies recruit from Scaler because of the highly skilled and ethical candidates we produce. We hold high ethical standards and are proud of the work our employees, learners, and alumni are doing to uplift our nation." 

“Google Adwords bidding wars are the standard industry practice these days. Having said that, we vehemently and categorically deny the charges levelled by upGrad. We have not used their brand name in our advertising or indulged in any activity that would result in copyright or trademark infringement," said Abhimanyu Saxena, Co-Founder, InterviewBit and Scaler. "Top tech companies recruit from Scaler because of the highly skilled and ethical candidates we produce. We hold high ethical standards and are proud of the work our employees, learners, and alumni are doing to uplift our nation," said Saxena.