Google’s warning prior to downloading WinZO app in nature of disclaimer: Delhi HC

The HC also agreed with Google’s submission that such warnings are given by several browsers when potential users download third-party APK files/applications from their websites. “On a prima facie view, this appears to be the industry practice,” the HC said adding that as per the Information Technology Rules, 2021 Google and other browsers are “required to put in place such warnings to guard the user against potential threats”.

The HC perused the provisions of the Trademark Act to say that the alleged use of WinZO’s trademark by Google is not covered in any of them. “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,” the HC observed.

The HC held that the “Google LLC was not providing goods or services” using WinZO’s trademark hence the conditions for infringement laid out under the provisions of the Trademark Act have not been made out. It further held that Google LLC was not advertising any goods or services using the trademark in any manner and no case for infringement was made out.

“Therefore, 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,” Justice Bansal said. While dismissing the interim application for injunction the HC said that its observations will not have a bearing on the final outcome of WinZO’s lawsuit.

On WinZO’s claim of disparagement of trademark the HC held that there is no comparison between the products/services of Google with that of WinZO’s nor is there any advertisement. “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,” the HC said. On WinZO’s submission that the warning has resulted in decline of downloads from their website, the HC said that the same is speculative and they are yet to establish a case on this ground.

WinZO — a digital gaming and technology company operating an online digital gaming platform/application claimed that it enjoys goodwill in the market wherein its application was introduced in February 2017 offering more than 70 games in five formats to its users, in over 12 regional languages. It claimed that its application was available on Google Play Store until it was converted by it to a paid gaming platform, pursuant to which the application was removed from play store.

WinZO owns and operates the website http://www.winzogames.com/ through which consumers can download the gaming application, which can be searched on any search engine. In November 2021, WinZO was informed that Google and other search engines were “displaying a disclaimer/warning to users upon an attempted download of the gaming application. Warning read as, “This type of file may harm your device. Do you want to keep WinZO.apk anyway?”. As a result, WinZO moved the HC seeking a permanent injunction against Google in 2022.

Google argued that the warning was used on a non-discriminatory basis in respect of all third-party APK format files/applications, which can be downloaded from the internet. They said that several other browsers also display such warnings while downloading other third-party APK format files/applications and therefore, the same constitutes an industry practice, Google said. It was also argued that this is a security feature to protect consumers from any possible malware, and in doing so Google and other browsers are not using WinZo’s trademark “in the course of the trade”.