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2023 Supreme(Del) 2880
IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
Winzo Games Private Limited – Appellant
Versus
Google Llc & Ors. – Respondents
CS(COMM) 176 of 2022
Decided On : 14-02-2023
Mr. Abhishek Malhotra and Ms. Atmja Tripathy, Advocates, for the Plaintiff.
Mr. Arun Kathpalia, Senior Advocate with Ms. Mamta Rani Jha, Mr.Rohan Ahuja, Ms.Shrutima Ehersa, Mr.Vatsalya Vishal and Ms. Amishi Sodani, Advocates, for the Defendant.
The use of trademarks in warnings for identification purposes may not constitute trademark infringement, disparagement, or inducement of breach of contract.
Headnote:
CPC - Restraint on displaying warning against use of gaming platform 'WinZO Games' - Code of Civil Procedure, 1908 (CPC) Order XXXIX Rules 1 and 2
Fact of the Case:
The plaintiff, a digital gaming company, sought to restrain the defendants from displaying a warning against the use of its gaming platform 'WinZO Games' on the Android Operating System/s. The defendants argued that the warning was a security feature to protect consumers from potential malware.
Finding of the Court:
The court found that the warning was non-discriminatory and in line with industry practice, serving as a caution to users before downloading APK files. The court also referenced the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 and The Information Technology (Reasonable Security Practices And Procedures And Sensitive Personal Data or Information) Rules, 2011 to support the defendants' position.
Issues: Trademark infringement, disparagement, inducement of breach of contract
Ratio Decidendi: The court held that the warning did not constitute trademark infringement, disparagement, or inducement of breach of contract as claimed by the plaintiff. It emphasized that the use of the plaintiff's trademark in the warning was for identification purposes and did not meet the conditions for infringement under the Trade Marks Act, 1999.
Final Decision: The court dismissed the application for restraint, stating that the plaintiff failed to establish merit in its claims.
JUDGMENT
Amit Bansal, J. (Oral)
I.A. 4439/2022 (O-XXXIX R-1 & 2 of the CPC)
1. The present application has been filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) seeking to restrain the defendants from displaying any warning against the use of the gaming platform/application `WinZO Games' of the plaintiff on the Android Operating System/s.
2. Notice was issued in the application on 22nd March, 2022 and reply thereto has subsequently been filed on behalf of the defendant no.1. Plaintiff has also filed a rejoinder to the reply filed by the defendant no.1.
3. Arguments in the application were heard on 8th February, 2022 and both sides have filed a brief note of their submissions.
FACTUAL MATRIX
4. The case set up by the plaintiff is as under:
4.1. The plaintiff is a digital gaming and technology company that operates an online digital gaming platform/application under the marks `WinZO'/`WinZO Games'.
4.2. The plaintiff has registrations/has applied for registrations in respect of the marks WinZO' and `WinZO Games' in Classes 38, 41 and 42, details of which are given in paragraph 5 of the plaint.
4.3. The plaintiff enjoys considerable goodwill and reputation associated with its trademarks `WinZO'/`WinZO Games'.
4.4. The aforesaid application under the marks `WinZO'/`WinZO Games' of the plaintiff was introduced in February, 2017 and offers over seventy games in five formats to its users, in over twelve regional languages.
4.5. The application of the plaintiff was available on the Google Playstore until it was converted by the plaintiff to a paid gaming platform. Thereafter, the plaintiff had to remove its application from the Google Playstore.
4.6. The plaintiff owns and operates the website `www.winzogames.com/' through which consumers can download the gaming application of the plaintiff. The said website can be accessed by searching for the keywords `WinZO Games' on any search engine.
4.7. In November, 2021, the plaintiff was informed of the defendants displaying a disclaimer/warning to users upon an attempted download of the plaintiff's application. The text of the warning is as under:
"This type of file may harm your device. Do you want to keep WinZO.apk anyway?"
5. Accordingly, the present suit was filed seeking a decree of permanent injunction along with other ancillary reliefs.
SUBMISSIONS ON BEHALF OF THE COUNSELS
6. Counsel appearing on behalf of the plaintiff makes the following submissions:
i. The warning placed by the defendants in relation to the plaintiff's services under the `WinZO'/`WinZO Games' marks is devoid of any legal justification.
ii. The aforesaid warning goes beyond the mandate of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 (IT Rules 2021).
iii. The warning placed by the defendants amounts to infringement/tarnishment of the plaintiff's trademarks.
iv. The warning of the defendants disparages the plaintiff's digital gaming services under the `WinZO'/`WinZO Games' marks
v. The defendants are inducing breach of contract between the plaintiff and its users by displaying the aforesaid warning.
7. Senior counsel appearing on behalf of the defendants makes the following submissions:
i. The warning is being used on a non-discriminatory basis in respect of all third-party APK format files/applications, which can be downloaded from the internet.
ii. Several other browsers also display such warning while downloading other third-party APK format files/applications and therefore, the same constitutes an industry practice.
iii. The warning is a security feature so as to protect consumers from any possible malware.
iv. The defendants are not using the plaintiff's trademarks `in the course of trade', which is a sine qua non for trademark infringement/tarnishment action.
v. There is no disparagement as there is no comparison of the plaintiff's application with any of the defendants' products or services.
vi. There cannot be
