Delhi High Court: Warning displayed by Google to users before downloading WinZo's APK File does not infringe Trademark

Delhi High Court: Warning displayed by Google to users before downloading WinZo's APK File does not infringe Trademark

The Delhi High Court while rejecting an application filed by the WinZO Games Private Ltd. held that warning displayed by Google to users before they download WinZO's APK file is in the nature of disclaimer to caution them and does not result in trademark infringement of gaming platform.

WinZO Games- plaintiff had filed an application against Google LLC and others- defendants under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) seeking to restrain the defendants from displaying any warning against the use of the gaming platform/application 'WinZO Games' of the plaintiff on the Android Operating System/s.

WinZO is a digital gaming and technology company that operates an online digital gaming platform/application under the marks 'WinZO'/ 'WinZO Games.' The plaintiff has registrations/has applied for registrations in respect of the marks WinZO' and 'WinZO Games' in Classes 38, 41 and 42. In November, 2021, the plaintiff was informed of the defendants displaying a disclaimer/warning to users upon an attempted download of the plaintiff's application.

Accordingly, the suit was filed seeking a decree of permanent injunction along with other ancillary reliefs.

The counsel appearing for plaintiff submitted that the warning placed by the defendants in relation to the plaintiff's services under the 'WinZO'/ 'WinZO Games' marks is devoid of any legal justification. The aforesaid warning goes beyond the mandate of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 (IT Rules 2021). The warning placed by the defendants amounts to infringement/tarnishment of the plaintiff's trademarks.

The counsel appearing for defendants submitted, the warning was being used on a non-discriminatory basis in respect of all third-party APK format files/applications, which can be downloaded from the internet. The warning is a security feature to protect consumers from any possible malware. Lastly, the defendants contended that they are not using the plaintiff's trademarks 'in the course of trade,' which is a sine qua non for trademark infringement/tarnishment action and that there cannot be any tort of inducement of breach of contract as there is no contract in place between the plaintiff and its users till the time the application of the plaintiff is installed by a potential user.

The single judge Justice Amit Bansal observed that the reference to the name of the APK file or application "WinZO" in Google's disclaimer is only for identifying the file being downloaded for purpose of warning.

The Court held, that the warning given by the defendants is in the nature of a disclaimer and does not prohibit or block the download. The users can continue to download and install the APK files by clicking on the option of 'Download anyway.'

The judge further noted that that APK files/applications like that of the plaintiff are not part of the 'Google Play' ecosystem and therefore, the same do not undergo the various security checks and measures. Therefore, the defendants are only cautioning the user before the user proceeds to download the application. Several other browsers also display such warning when viewers/potential users download third-party APK files/applications from their websites. On a prima facie view, this appears to be the industry practice.

The Court found merit in the submission of the defendants that the use of the plaintiff's trademark in the aforesaid warning shall not constitute as a 'mark likely to be taken as being used as a trade mark' in terms of Section 29(1) of the Trade Marks Act, 1999.

"A perusal of Section 29(6) of the Trade Marks Act, 1999 would show that the use of the impugned marks by the defendants in their warning is not covered in any of the sub-clauses (a), (b), (c) or (d) of Section 29(6). A perusal of the warning would show that the reference to the name of the APK file/application 'WinZO' is only for identifying the file being downloaded for the purpose of the warning," stated the Court.

It further added, "It is a settled position of law that to make out a case for infringement under Section 29(4) of the Trade Marks Act, 1999, all three conditions under the said provision have to be met. Since the defendant no.1, Google LLC is not providing any goods or services using the impugned trademarks, the condition in sub-clause (b) of Section 29(4) is not satisfied. Hence, it does not constitute 'use of the trademark in the course of trade' within the meaning of Section 29(4). Further, since the defendant no.1 is not advertising goods/services by using the plaintiff's marks in any manner, there is no case made out for infringement under Section 29(8) of the Trade Marks Act, 1999."

Additionally, the Court reckoned that there was no comparison between the products or services of Google with that of WinZO and thus, no case of disparagement was made out.

Insofar as the ground of inducement of breach of contract between a user and the plaintiff was concerned, the Court opined that the act of a user opting to download an application from the website of the plaintiff would not result in a contract. A contract can come into place once the application is installed. Since there is no contract in place at the time the warning is displayed, there cannot be any question of inducement to breach the same, stated the Court.

In view of the above reasons, the Court did not find any merit in the application and the same was dismissed.