The Delhi High Court has held that Google issuing warning to Android users before they download third-party applications (APK files) doesn't amount to trademark infringement or disparagement but rather is industry practice.
The single-judge bench of Justice Amit Bansal in this view quashed the application filed by Winzo Games seeking to restrain the Google from displaying any warning against the use of the gaming platform/ application on their Android Operating System/s.
It was argued that warning placed by Google in relation to the plaintiff’s services under the ‘WinZO’/ ‘WinZO Games’ marks is devoid of any legal justification. It was further argued that the warning goes beyond the mandate of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021.
The Counsel for WinZO contended that warning placed by the defendants amounts to infringement/tarnishment of the plaintiff’s trademarks and that it disparages the plaintiff’s digital gaming services under the ‘WinZO’/ ‘WinZO Games’ marks. He also induced breach of contract between the plaintiff and its users by display of the warning.
Counsel for Google, on the other hand contended that the warning is being used on a non-discriminatory basis in respect of all third-party APK format files/applications, which can be downloaded from the internet.
Several other browsers also display such warning while downloading other third-party APK format files/applications and therefore, the same constitutes an industry practice, it was argued.
Google submitted that the warning is a security feature so as to protect consumers from any possible malware.
The defendants are not using the plaintiff’s trademarks ‘in the course of trade’, which is a sine qua non for trademark infringement/tarnishment action, the Counsel averred.
He also denied disparagement accusation by submitting that as there is no comparison of the plaintiff’s application with any of the defendants’ products or services, here is no disparagement.
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, he added.
The Court at the outset noted that warning is in respect of all such file/application downloads and not confined to the plaintiff’s application, and is not discriminatory. It went on to note that Google is only cautioning the user before the user proceeds to download the application
"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’. It may be noted that APK files/applications like that of the plaintiff are not part of the ‘Google Play’ ecosystem and therefore, the same do not," the Court remarked.
Noting that several other browsers also display such warning when viewers/potential users download third-party APK files/applications from their websites, the Court opined that prima facie it appears to be the industry practice.
The Court also clarified that in terms of the prevailing legal regime, the defendants are required to put in place such warnings so as to guard the user against potential threats
In this regard, reference may be made to Rules 3(1)(i) and 3(1)(k) of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 [hereinafter ‘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 [hereinafter ‘2011 Security Rules’]."
It found no merit in the submission that the use of the plaintiff’s trademark in the 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.
"Further, 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."
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, the Court noted:
"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."
As regards the ground of disparagement, the Court opined that indisputably, there is no comparison between the products/services of the defendants with that of the goods/services of the plaintiff. Nor is there any advertising for any goods or services and therefore, there is no competing interest of the products/services of the defendants involved and in my prima facie view, no case of disparagement is made out.
Insofar as the ground of inducement of breach of contract between a user and the plaintiff was concerned, 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 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. In fact, in paragraph 21 of the plaint, the plaintiff has admitted that when a user clicks on the download link on the plaintiff’s website, the user is only ‘willing to execute’ a contract with the plaintiff. It is further stated that the warning deters ‘willing’ users from entering into a contract with the plaintiff. Therefore, there is no contract at the stage when the warning appears," the order noted.
Accordingly, the application filed under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) was dismissed.
CASE TITLE: WINZO GAMES PRIVATE LIMITED vs GOOGLE LLC & ORS.
CASE DETAILS: CS(COMM) 176/2022
CORAM: Justice Amit Bansal
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