High Court: Disclaimers/warning signs displayed online do not amount to trade mark infringement

Introduction

In a recent case titled as Winzo Games Private Limited v. Google LLC and Ors[1]., the Hon’ble Delhi High Court while dismissing an application seeking temporary injunction by the Plaintiff, held that a warning sign/disclaimer displayed online, using the Plaintiff’s mark, does not amount to a case of trade mark infringement under Section 29 of the Trade Marks Act, 1999. (hereinafter referred to as the “Act”).

Background

The Plaintiff i.e., ‘WINZO GAMES’ is a digital gaming and technology company established in the year 2016. The Plaintiff through its online gaming Application offers over 70 games in 5 formats in over 12 regional languages. The Plaintiff has used its mark “WinZo” since the year 2017, which also forms the trade name of the Plaintiff herein. Initially, the Plaintiff’s Application was available for download on the Defendant No.1’s i.e., Google LLC’s, platform namely ‘Google Playstore’. However, when the Plaintiff converted its Application to a paid gaming platform, the Application was removed by the Plaintiff from the Defendant No.1’s ‘Google Playstore’.

Facts of the case:

It was the case of the Plaintiff that in November 2021, it was informed that the Defendant No.1 was displaying a warning sign/ disclaimer to the users while downloading the Plaintiff’s Application.

The warning sign/ disclaimer displayed read as “This type of file may harm your device. Do you want to keep WinZo.apk anyway?”

Thereafter, a decree of permanent injunction was sought by the Plaintiff along with other ancillary reliefs before the Hon’ble Court.

Submissions on behalf of the Plaintiff:

The Plaintiff contended that the warning sign/disclaimer used by the Defendants is:

Devoid of legal justification;
Goes beyond the mandate of the Information Technology Rules, 2021 (IT Rules 2021);
Amounts to Trade Mark Infringement/tarnishment of Plaintiff’s trade marks;
Disparages the gaming services of the Plaintiff under its “WinZo” marks; and
Results in a Breach of Contract as induced by the Defendants between the Plaintiff and its users;

Submissions on behalf of the Defendants:

To the above-mentioned contentions, the Defendants countered that the warning sign/disclaimer:

Is displayed on all third-party applications/APK format files which are downloaded from the internet and hence, the warning sign/disclaimer is non-discriminatory;
Is used and adopted by several other browsers whenever third-party applications/APK format files are downloaded, as a standard industry practice;
Prevents the user from being exposed to any possible malware that may be downloaded from the third-party applications/APK format and hence, is a safety measure used in the industry;
Does not show/prove that the Plaintiff’s marks are used by the Defendants in the course of trade and thus does not amount to a case of trade mark infringement under the Act;
There cannot be any comparison between the Plaintiff’s Application and the Defendants services, since, the Defendants do not provide similar products or services as the Plaintiff, and hence there is no disparagement;
The contract between the Plaintiff and the user comes into play only when the users download the Plaintiff’s Application. Since the warning sign/disclaimer is displayed before the download begins, there cannot be any breach of contract.

Findings of the Court

The Court held that the Defendant No.1 uses the warning sign/disclaimer for all third-party applications that are being downloaded from the internet, hence is not discriminatory. Further, the warning sign/disclaimer given by the Defendants does not prohibit or block the users from downloading the third-party applications and is commonly used by several other browsers and thus, is a standard industry practice.

It was held by the Court that as per the IT Rules, 2021, and Rule 8 of The Information Technology (Reasonable Security Practices and Procedures and Sensitive Personal Data or Information) Rules, 2011, the Defendants are in fact, mandated to display such warning signs/disclaimers to safeguard the users against a possible threat.

The Hon’ble Court also held that the trade mark used on the warning sign/disclaimer while downloading the applications/APK format files is merely for identifying the file that is being downloaded and thus, the Hon’ble Court held that “the use of the Plaintiff’s trade mark in the aforesaid warning sign/disclaimer 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, the ingredients for a breach under Section 29 (4)(b) and Section 29 (8) of the Act, are not fulfilled as the Defendant No.1 does not provide goods or services using the Plaintiff’s marks, or advertises the goods/services under the Plaintiff’s marks in any manner. Therefore, the basic conditions to constitute a case of trade mark infringement are not satisfied.

The Hon’ble Court also held that there is no case of disparagement, as there is no comparison, or competing interest between the products/services of the Defendants and the Plaintiff.

Lastly, with respect to the inducement of the breach of contract between the Plaintiff and the user, the Court stated that the contract only comes into play once the Application is installed. The contract is not effective when the warning sign/disclaimer is displayed before the download is initiated, and hence there is no breach of contract.

Conclusion

The Judgment passed by the Hon’ble Delhi High Court in examining the use of third-party marks by internet browsers is significant in augmenting the understanding of the ingredients for infringement enshrined under Section 29 of the Act, which cannot be satisfied without examining the nature of use, the intent and purpose of a mark, specifically with use on the internet.