Winzo vs. Google

4th May, 2023 - 11:06 am Categories: Trademark 0 Comments

Introduction

Industries are implementing measures to sell their own products and improve client appeal as a result of rising worldwide competition. They occasionally have a tendency to promote their goods during this process at the risk of dishonouring or delegitimizing the product of their competitor. As a result, trademark law claims of “disparagement” are frequently made. The fact that Winzo, a firm that manages a gaming app, sued Google for publishing a notification on their website whenever any user downloaded their programme was an interesting development. Winzo claims that this statement denigrates its brand and hurts the reputation of the business. The court, on the other hand, adopted a different view and ruled that the absence of comparative advertising and the legitimacy of such disclaimers under the Information Technology Regulations, 2021, do not amount to disparagement.
In the past, trademark disputes have been heard in cases when products came with warnings or disclaimers. For instance, the WTO is now hearing arguments in the tobacco plain packaging issue about the rights of trademark owners with regard to health disclaimers and warnings that are included in cigarette and tobacco packaging.

Customers can access more than 70 games in a variety of formats from the plaintiff, a digital gaming and technology business called “WinZO”/”WinZO Games,” through mobile applications and the plaintiff’s website. The disclaimer/warning to consumers was brought to the plaintiff’s attention when Google, the defendant, sought to download the plaintiff’s application in November 2021. Please read the warning’s language as this type of file may cause damage to your device. Would you still like to keep WinZO? In response, the plaintiff filed a lawsuit and requested several supplementary reliefs as well as a decision of perpetual injunction. Among other things, the plaintiff asserted that the defendant’s notice disparages the plaintiff’s digital gaming services, which are identified by the “WinZO” and “WinZO Games” marks.

First in the order of discussion was the validity of the disclaimer. The court found that Rules 3(1)(i) and Rule (1)(k) of the IT Rules, 2021 as well as Rule 8 of the IT Rules necessitated the warnings in order to protect the user from potential hazards. Furthermore, it was found that Section 29 of the Trademarks Act was not violated by any trademark infringement. Last but not least, the reason for the disparagement was disregarded because it was impossible to compare the products.

In response to the plaintiff’s claim of disparagement, the defendants contended that “there is no comparison of the plaintiff’s application with any of the defendants’ products or services.” The court has also relied on the reasoning of the defendant to reject the claim for disparagement by stating: “As concerns the ground of disparagement, unquestionably, there is no comparison between the products/services of the defendants and that of the goods/services of the plaintiff. Moreover, there is no advertising for products or services. As the defendants’ goods and services have no competing interests, there is, in my opinion, no basis for a case of disparagement.

It is assumed that a claim for disparagement must prove a more broad purpose of competing interests of both products based on a collective reading of the defendant’s and court’s arguments. One approach to spot this conflicting interest is to look for product comparisons or “comparative ads.” The presumption can be broken down into two components that need to be analysed to see if they are a prerequisite for disparagement to happen: first, whether an advertisement is essential; second, whether the advertisement needs to include a comparison between the objects. Using the reasoning supplied by the existing law, the court in this case considered the requirement of comparison advertisement as a required component for disparagement. However, it can also be assessed as a hastened decision by the court where it had the possibility of analysing a claim for disparagement outside the lens of comparative advertisement.

It is the process by which a company compares its product to one that is similar. It is permissible as long as the comparison highlights their own product favourably. Comparative advertising, on the other hand, enters the territory of disparagement when the rival product is denigrated or portrayed negatively as a result of the comparison between the two things. The current legal precedents also demonstrate the connection between these two subjects. “Comparative advertising is acceptable, but a promoter of a product is not entitled to degrade the goods of its competitor,” the court said in Reckitt & Colman of India v. MP Ramachandran. In Pepsico v. Hindustan Coca-Cola, the Delhi High Court also referenced the disputed advertisement when attempting to establish a criterion for disparagement. It was suggested that factors like the intention, style, and plot of the commercial had to be taken into account when determining whether an advertisement disparaged a product or not. Due to this, current legal law shows that it constitutes disparagement to compare two products in an advertisement.

But, there was no comparison of the services provided by the parties in the present case; as a result, the allegation of disparagement was denied. Even when similar products are being compared in comparative promotional claims, there are still big variations between the services offered by Google and Winzo. Google did not compare the services in order to present a warning, despite the fact that it is presumed that the services are comparable. These warnings also prevent public confusion while benefiting the greater good. As the public interest factor outweighs any prospective private interest that these enterprises may have in their mark, their claim of disparagement is invalidated even if they may have the capacity to insult the brand’s trademark.

By adhering to this understanding of what constitutes “use” of a trade mark, it is nearly impossible for a trademark to damage its reputation even if it is not “used” in the manner described above. Section 29(8) of the Act might have offered a solution to this problem, but as will be detailed below, the provision’s shortcomings preclude it from doing so. According to the Act’s Section 29(8), there are a number of scenarios in which the “use” of a trademark is illegal. The conditions under which such “use” of the trademark would not constitute infringement and would be a defence to a claim under section 29 of the Act are also outlined in section 30(1) of the Act. This permits the use of trademarks as long as they “do not take unfair advantage of or be detrimental to the distinctive character or renown of the trade mark.” It is only legal to claim infringement for any such trademark when it is used in conjunction with an advertisement because section 29(8) of the Act stipulates that “A registered trade mark is infringed by any advertising of that trade mark if such advertising…” Due to the necessity of advertising, the plaintiff is unable to demonstrate that its trade mark was used in ill faith. The legal rights and reputation of a trademark owner may be harmed by this exclusion. So, in this situation, pursuing a libel suit was a viable option for the plaintiffs to pursue their claim.

Conclusion

Recognizing the unique circumstances of trademark infringement on the part of the trademark owner is necessary when a mark is “used” outside the bounds of comparative advertisement but yet brings the mark into disgrace or defamation. The court’s ruling in the current case was in line with previous legal rulings on comparative advertising and disparaging speech as well as the statute’s interpretation. Also, the opportunity to investigate potential derogatory language used outside of the context of comparison advertisements and the legal standard for identifying “use” of a mark was lost.

Author: Tanya Saraswat, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References

• Lokesh Vyas & Praharsh Gour, Winzo v google- missed opportunity to detail out disparagement Spicyip (2023), https://spicyip.com/2023/03/winzo-v-google-missed-opportunity-to-detail-out-disparagement.html (last visited Mar 31, 2023).
• Times of India, Explained: Why Indian gaming platform winzo is taking Google to court – times of India TOI (2023), https://timesofindia.indiatimes.com/gadgets-news/explained-why-indian-gaming-platform-winzo-is-taking-google-to-court/articleshow/94327366.cms (last visited Mar 31, 2023).