Google's Warning For Third-Party APK Files An Industry Practice, Doesn't Infringe Trademark: Delhi High Court Rejects WinZo Games' Plea
The Delhi High Court has observed that the 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.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...
The Delhi High Court has observed that the 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.
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.
“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),” the court said.
The court dismissed an application moved by Winzo Games Private Limited seeking to restrain Google from displaying the warning "against" use of its gaming application “WinZO Games” on the Android Operating System.
WinZo filed the suit against Google after it was informed about the disclaimer or warning in question in November, 2021. WinZo's argument was that Google’s warning amounts to infringement of its trademarks and that it disparages the digital gaming services under the “WinZO” or “WinZO Games” marks.
“This type of file may harm your device. Do you want to keep WinZO.apk anyway?” the warning reads.
On the other hand, Google’s counsel submitted that all several other browsers also display such warning while downloading third-party APK format files or applications and therefore, it constitutes an industry practice. It was also contended that the warning is a security feature to protect consumers from any possible malware.
Dismissing the application, the court said that since Google was not advertising goods or services by using WinZo’s marks, no case for infringement of trademark was made out.
“The defendants have also provided details that such warnings are not unique to the Google Chrome browser of the defendant no.1. 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,” it said.
Justice Bansal also noted that Google is required to put in place such warnings in order to guard users against potential threats as per Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 and Information Technology (Reasonable Security Practices And Procedures And Sensitive Personal Data or Information) Rules, 2011.
The court also found merit in Google’s submission that use of WinZo’s trademark in the warning does 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 said.
The court observed 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.
“Accordingly, I do not find any merit in the application and the same is dismissed,” it said.
The court also said that warning does not prohibit or block the download and the users can continue to install the APK files.
"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 undergo the various security checks and measures. Therefore, the defendants are only cautioning the user before the user proceeds to download the application," it added.
Title: WINZO GAMES PRIVATE LIMITED v. GOOGLE LLC & ORS
Citation: 2023 LiveLaw (Del) 161