08 Nov 2021

TATA SONS PRIVATE LIMITED v HAKUNAMATATA TATA FOUNDERS

FACTS:

An interim application was filed in the High Court of Delhi by the plaintiff (TATA SONS PRIVATE LIMITED) incorporated in India seeking permanent injunction to restrain the defendants (HAKUNAMATATA TATA FOUNDERS & ORS.) situated in U.K. and U.S. from using the trademark “TATA”, as part of the name under which their crypto currency is made available to the public, or as part of their corporate name or domain name.

The court after noting the averments in the plaint and the documents, concluded that the plaintiffs have not made out a prima facie case and that the balance convenience lies in favour of the defendants, dismissing the prayer IA 8000/2021 for interim relief.

QUESTION OF LAW:

Whether the plaintiff can seek an injunction against the defendants’ mark, the defendants being located outside the sovereign borders of India and, therefore, statutorily outside the reach of the Trademarks Act, 1999, as well as the Code of Civil Procedure, 1908 (CPC)?

CONTENTIONS OF THE PLAINTIFF:

The present suit is filed seeking a decree of permanent injunction against the defendant under its well-known brand name/trademark “TATA”, providing a platform for trading in crypto currency incorporated in India.

  1. The defendants’ crypto currency can be purchased by any person in India from the defendants’ website, and India was second in the list of countries with highest internet traffic to the www.hakunamatata.finance website indicating that, there was “purposeful availment” by the defendants.
  2. They had made their crypto currency under the infringing mark available for purchase to customers in India and specifically in Delhi. Hence, asserting the requisite connection between the activities of the defendants and prejudice caused to the plaintiff and customers in India undoubtedly.

CONTENTIONS OF THE DEFENDANT:

Defendants 1 and 2 are situated in the U.K. and the U.S. respectively. They deal in crypto currency, under the name “TATA coin/$TATA”.  It is in the case of defendants that none of them have any outlets in India therefore, conscious attempt or collateral evidence of purposeful targeting of the Indian market by them is not available. Secondly, in the Twitter Page of Defendant 1, various persons from India posted queries regarding the process to be followed, to purchase the defendants’ crypto currency but it is not the case of the plaintiff that the defendants responded to these queries and invited customers from India to purchase its product. The website of the defendants is accessible across the world and, therefore, interested persons across the world could post queries on the website.

FINDINGS OF THE CASE:

The court is of the prima facie opinion that it cannot issue directions, as sought to the defendants because they are outside the territorial reach of the Court and the accessibility of the website of the defendant to persons within the jurisdiction of the same would not empower it to exercise jurisdiction over the defendant. Something more substantial, indicating purposefully directed activity by the defendants to persons located within the territorial jurisdiction of the Court is necessary. The operation of the Trademarks Act and the CPC statutorily extend only to the boundaries of India intent of the defendants to target India was not established.