The Single Bench of the Delhi High Court in the case of Winzo Games Private Limited vs Google LLC & Ors. consisting of Justice Amit Bansal held that Google Chrome browser and several other browsers displaying warnings when viewers/potential users download third-party APK files/applications from their websites is the industry practice and does not amount to infringement.
Brief Facts:
Plaintiff owns and operates the website ‘www.winzogames.com’ through which consumers download the gaming application of Plaintiff. The website can be accessed by searching for the keywords ‘WinZO Games’ on any search engine. In November 2021, Plaintiff was informed of the Defendants displaying a disclaimer/warning to users upon an attempted download of Plaintiff’s application. Accordingly, the present suit was filed seeking a decree of permanent injunction along with other ancillary reliefs.
Contentions of the Plaintiff:
The warning placed by the Defendants concerning the Plaintiff’s services under the ‘WinZO’/ ‘WinZO Games’ marks was devoid of any legal justification, which goes beyond the mandate of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 (IT Rules 2021). The warning amounts to infringement/tarnishment of Plaintiff’s trademarks. The Defendants were inducing a breach of contract between Plaintiff and its users by displaying the aforesaid warning.
Contentions of the Defendants:
The warning is applied to all third-party APK files/applications downloaded from the internet, to protect consumers from any possible malware. The Defendants did not use Plaintiff's trademarks “in the course of trade” a prerequisite for trademark infringement/tarnishment. There was no disparagement since the Plaintiff's application was not compared to the Defendants' products or services. There was no contract between Plaintiff and its users until a potential user installed Plaintiff's program.
Observations of the Court:
The Bench opined that Defendant’s warning was like a disclaimer and did not prohibit or block the download. The users could continue to download and install the APK files by clicking on the ‘Download anyway’ option. It noted that APK files/applications like that of the plaintiff were not part of the ‘Google Play’ ecosystem and therefore, the same do not undergo the various security checks and measures. Therefore, the Defendants were only cautioning the user before they proceeded to download the application, which appeared to be the industry practice. Reference was made to Rules 3(1)(i) and 3(1)(k) of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 (‘2021 IT Rules’) as well as Rule 8 of The Information Technology (Reasonable Security Practices And Procedures And Sensitive Personal Data or Information) Rules, 2011 (‘2011 Security Rules’) to opine that the Defendants were required to put in place such warnings to guard the user against potential threats.
Regarding the ground of infringement, it relied on Section 29 of the Trade Marks Act, 1999, and noted that as Defendant no.1, Google LLC, was not selling goods or services using the impugned trademarks, it did not constitute "use of the trademark in the course of trade" u/s 29(4). Further, since it was not advertising goods/services by using Plaintiff’s marks in any manner, no case was made for infringement u/s 29(8).
It further observed that the Defendants' products/services were not comparable to the Plaintiff's. No products or services were advertised. Hence, there was no competitive interest in the Defendants' products/services, and no disparagement was made out.
It also observed that the act of a user opting to download an application from the website of the Plaintiff would not result in a contract. At best, a contract comes into place once the application was installed. Since there was no contract in place at the time the warning was displayed, there could not be any question of inducement to breach the same.
The decision of the Court:
The Court dismissed this application and the replication filed on behalf of the Plaintiff was directed to be taken off the record.
Case Title: Winzo Games Private Limited vs Google LLC & Ors.
Coram: Hon’ble Mr. Justice Amit Bansal
Case No: CS(COMM) 176/2022
Advocates for Plaintiff: Advs. Mr. Abhishek Malhotra and Ms. Atmja Tripathy.
Advocates for Defendants: Advs. Mr. Arun Kathpalia, Sr. Advocate with Ms. Mamta Rani Jha, Mr. Rohan Ahuja, Ms. Shrutima Ehersa, Mr. Vatsalya Vishal, and Ms. Amishi Sodani.
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