Trademark Infringement through Display of Warning Notice
Whether trademark can be infringed through display of warning notice? Certainly depends on facts of each case. One such case recently decided by Delhi High Court in Winzo Games Private Limited v. Google LLC & Ors. [CS (COMM) 176/2022].
Winzo (plaintiff) a digital gaming and technology company operates an online digital platform/ application under the trademarks WinZO/ WinZO Games and is the owner-operator of the website www.winzogames.com from where the consumers can download the gaming application. Plaintiff is the registered owners of WinZO / WinZO Games.
Gaming applications of plaintiff are made available through APK files. Technically this APK files install applications in a system which makes it easy for cyber offenders to modify APK files and use it to install and run malware. Hence runs risk.
Because of the very nature of APK files, whenever any user attempts to download APK files of WinZO games, Google displays a warning “This type of file may harm your device. Do you want to keepWinZO.apk anyway? ”. However Google does not block the download and such APK files can be downloaded by clicking ‘download anyways’.
In their application for injunction, WinZO alleged that this display of warning amounts to:
- infringement/tarnishment of the plaintiff’s trademarks;
- disparages the plaintiff’s digital gaming services under the ‘WinZO’/ ‘WinZO Games’ marks;
- Google induces breach of contract between the plaintiff and its users by displaying the warning.
Dismissing the injunction application, Hon’ble court observed that:
- Such display of warning by Google is not only for WinZO but for any APK files of any third party – hence not discriminatory
- APK files/ applications do not form part of Google Play ecosystem and is not subjected to various security checks and measure which otherwise a file forming part of Google play would usually undergoes, hence Google validly shows warning to users so as to safeguard user against potential threats as mandated under Rules 3(1)(i) and 3(1)(k) of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 and Rule 8 of The Information Technology (Reasonable Security Practices And Procedures And Sensitive Personal Data or Information) Rules, 2011;
- Not only Google but several other browsers too display such warnings while their user attempts to download any APK files. Such display of warning is thus an industry practice;
- There is no contract in operation when user downloads APK files (stage of willing to execute), unless such user actually install the application (contract comes into place). So no breach of contract is induced between WinZO and its user at the time of downloading the APK files;
- Showing ‘WinZO.apk’ in the warning cannot be considered as ‘uses in the course of trade’ u/s 29(1) nor does it satisfy criteria of section 29(6) of Trademarks Act, 1999. Google is not providing any services for which the WINZO trademark is registered.