IA No. 4439 of 2022
CS (Comm) No. 176 of 2022
Date of decision: 14th February, 2022
- Plaintiff had an App by the mark ‘WinZo’/‘WinZo Games’. In November, 2021, Plaintiff was informed that Defendants were displaying a disclaimer to users upon the attempted download of Plaintiff’s application.
- The disclaimer/warning read as: “This type of file may harm your device. Do you want to keep WinZO.apk anyway?
- Plaintiff filed the present suit seeking a permanent injunction against the Defendants along with other ancillary reliefs. The present summary is of a decision on the interim application filed by the Plaintiff seeking a temporary injunction.
- The disclaimer has no legal justification.
- Disclaimer goes beyond the mandate of IT (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021.
- The disclaimer amounts to infringement/tarnishment of Plaintiff’s trade marks.
- Warning disparages gaming services.
- Defendants are inducing breach of contact between Plaintiff and its users.
- Warning is based on a non-discriminatory basis in respect of all third-party APK format files/applications, which can be downloaded from the internet.
- Several other browsers also display such warning while downloading other third-party APK format files/applications and therefore, the same constitutes an industry practice.
- Warning is a security feature so as to protect consumers from any possible malware.
- Defendants are not using the Plaintiff’s trademarks ‘in the course of trade’.
- There is no disparagement as there is no comparison of the Plaintiff’s application with any of Defendants’ products or services.
- There cannot be any tort of inducement of breach of contract as there is no contract in place between the plaintiff and its users till the time the application of the plaintiff is installed by a potential user.
- APK files/applications are not part of the ‘Google Play’ ecosystem and therefore, do not undergo various security checks and measures. Therefore, the Defendants are only cautioning the user before the users downloads the application.
- 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.
- In terms of the prevailing legal regime, the defendants are required to put in place such warnings so as to guard the user against potential threats. Reference: Rules 3(1)(i) & 3(1)(k) of the ‘2021 IT Rules’ and Rule 8 of The Information Technology (Reasonable Security Practices And Procedures And Sensitive Personal Data or Information) Rules, 2011 [hereinafter ‘2011 Security Rules’]
- Use by the Defendants of the Plaintiff’s mark does not constitute use of mark likely to be taken as being used as a ‘trade mark’ in terms of Section 29(1) of Trade Marks Act, 1999.
- Such use is also not covered under the ‘uses’ provided under Section 29 (6) of the Trade Marks Act, 1999.
- Section 29 (4) does not apply since Google LLC is not providing any goods or services under the impugned trade marks.
- There is no disparagement, since there is no comparison; nor is there any advertising. Thus, there is no competing interest of the Defendants.
- There is no inducement of breach of contract since act of download would not result in a contract. Since, there is no contract when warning is displayed, there cannot be any inducement to breach the same.
The application for temporary relief was dismissed.