No Infringement Of Trade Marks Act: Delhi HC Rejects WinZO Games’ Plea Against Google’s Play Store Policy Update
The Delhi High Court while dismissing a plea filed by a gaming platform WinZO Games against Google’s Play Store’s latest policy update held that there was no infringement on the part of Google under the Trade Marks Act, 1999.
The gaming platform filed an application under Order XXXIX Rules 1 and 2 of the CPC seeking to restrain Google from displaying any warning against WinZO Games on the Android Operating System.
A Single Bench of Justice Amit Bansal asserted, “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.”
The Bench said that the act of a user opting to download an application from the website of WinZO 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”, the Court further noted.
Advocate Abhishek Malhotra and Advocate Atmja Tripathy represented WinZO while Senior Advocate Arun Kathpalia and Advocate Mamta Rani Jha represented Google.
Brief Facts –
WinZO Games i.e., the plaintiff is a digital gaming and technology company that operates as an online digital gaming platform/application and enjoys considerable goodwill associated with its concerned trademarks. The WinZO application is therefore available on the Google play store but when it got converted into a paid gaming platform, the same was removed from the play store.
Consumers through the website ‘www.winzogames.com/’ can download such a gaming application and the said website can be accessed by searching for the keywords ‘WinZO Games’ on any search engine. In November 2021, the plaintiff was informed of the defendants displaying a disclaimer/warning to users upon an attempted download of its application. The text of the warning read as: “This type of file may harm your device. Do you want to keep WinZO.apk anyway?”. Hence, the plaintiff sought a decree of permanent injunction along with other ancillary reliefs before the Court.
The High Court after hearing the contentions of the counsel for both parties observed, “There is merit in the submission of the defendants that the use of the plaintiff’s trademark in the aforesaid 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.”
The Court further noted that a perusal of the warning would show that the reference to the name of the APK file/application ‘WinZO’ was only for identifying the file being downloaded for the purpose of the warning.
“… in my prima facie view, the reliance placed by the plaintiff on Section 29 of the Trade Marks Act, 1999 to make out a case for infringement/tarnishment of its ‘WinZO’/ ‘WinZO Games’ marks, is misplaced”, said the Court.
The Court also said that there was no comparison between the products/services of the defendants with that of the goods/services of the plaintiff and that there was any advertising for the goods or services.
“… 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. … there is no contract at the stage when the warning appears”, the Court further asserted.
The Court, therefore, held that the submission regarding the warning of the defendants resulting in a decline of downloads from the plaintiff’s website is speculative and that the plaintiff is yet to establish a case on such a ground.
Accordingly, the Court dismissed the plea.
Cause Title- WinZO Games Private Limited v. Google LLC & Ors. (Neutral Citation: 2023/DHC/001117)