The Division Bench of the Delhi High Court in the case of Tata Sons Private Limited vs Hakunamatata Tata Founders & Ors. consisting of Justices Mukta Gupta and Manoj Kumar Ohri opined that mere looming presence of a website in a geography and ability of the customers therein to access the website is sufficient to grant injunction in Trademark Infringement cases.
Facts
This appeal was filed u/s 13(1A) of the Commercial Courts Act, 2015 read with Section 10(1) of the Delhi High Court Act, 1966 read with Order 43(1)(r) and Section 151 CPC on behalf of the appellant assailing judgment whereby the appellant/plaintiff’s application under O39 Rules 1 and 2 CPC, registered as IA No.8000/2021, was dismissed.
Procedural History
The appellant, in a suit for permanent injunction restraining infringement of registered trademarks, passing off, dilution and tarnishing of trademarks and copyrights etc., has sought ad-interim injunction against the respondents/defendants from using its registered trademark “TATA” for business purposes. It was alleged by the appellant that the respondents are businesses registered in the United Kingdom (UK) and the United States (US) which are using its trademark for doing online trading in cryptocurrency through their website(s) ‘www.tatabonus.com’ and ‘www.hakunamatata.finance’. Besides cryptocurrency, respondent No.1 was found to be selling merchandise, such as t-shirts, shorts, caps, facemasks etc, under the name ‘TATA’. It was further alleged that the websites are accessible in India and are in fact accessed by visitors from Delhi on daily basis.
The learned Single Judge ruled that Courts in Delhi could not have jurisdiction over the respondents who are registered and located overseas.
Contentions Made
Appellant: It was contended that it is in the consumer interest of appellant to restrain respondent No.1 from deceiving the unsuspecting public who could be deceived into buying products from the websites in question, believing the same to be TATA products. It was also contended that the team behind the website being of Pakistani origin, was likely to be aware of TATA’s brand equity among the Indian public, which indicated the deliberate intent and unscrupulous motives of respondent No.1 to deceive unsuspecting public using TATA’s name.
Observations of the Court
The Bench, relying on Millennium & Copthorne International Limited v. Aryans Plaza Services Private Limited & Ors., reiterated that what is relevant for determination in an action for infringement and/or passing off is where the injury has been caused to the plaintiff, as the place where deception has been caused to customers, or is likely to be caused, by the offending product of the defendant shall certainly have jurisdiction.
Relying on Lifestyle Equities CV and another company v. Amazon UK Services Ltd and other companies, it reiterated that even if a website is not directed at customers in a particular country, the fact that they are not restricted by the website to have access to it, is enough to characterise it as targeting. Targeting need not be a very aggressive act of marketing aiming at a particular set of customers. Mere looming presence of a website in a geography and ability of the customers therein to access the website is sufficient, in a given case.
It was noted that in India, the trademark TATA is embedded in the sub-consciousness of public. In this case, the word “TATA” is used as it is by respondent No.1 without any attempt to disguise the same by adding a prefix or suffix, to claim distinctiveness. Moreover, the fact that the people behind the offending website were UK nationals of Pakistani origin makes the motives suspicious, given the popularity of TATA brand among the people from Indian sub-continent. It also noted that the learned Single Judge had sufficient material before him to assume territorial jurisdiction to form a prima facie view, both for the purpose of maintainability of suit, which he did, and also for deciding the application for ad-interim injunction, which he did not. It further noted that courts can grant interim injunction, pending final determination of issue of territorial jurisdiction, which often is a mixed question of law and facts, after trial.
However, as far as domain name www.hakunamatata.finance was concerned, it had no ground to agree with the appellant that it infringed the appellant’s trademark “TATA”.
Judgment
The Bench set aside the impugned order and granted ex-parte ad-interim injunctions restraining the respondents, their partners or proprietors from manufacturing, selling, offering for sale, supplying, advertising or unauthorisedly using the appellant’s well-known trademark TATA, or any other deceptively similar mark thereto as part of the name of their digital token/cryptocurrency TATA Coin/$TATA or as part of their corporate name/domain name and websites ‘www.tatabonus.com’/social media pages amounting to infringement/passing off. Further, respondent Nos.1 and 3 were directed to immediately take down the website parked on the domain ‘www.tatabonus.com’ and to put the said domain on hold till the pendency of the application, with an exception, that use of domain name ‘www.hakunamatata.finance’ by respondent No.1 was not prohibited, at that stage. Further, respondent No.4 was directed to delist the TATA Coin/$TATA and/or any other crypto-assets bearing the mark “TATA” or other deceptively similar mark thereto, from the networks/platforms operated by respondent No.4 including Binance Smart Chain and Binance community.
This suit was to be listed before learned Single Judge, for issuing notice on I.A No 8000/2021 to the respondents on 26th September 2022.
Case: Tata Sons Private Limited vs Hakunamatata Tata Founders & Ors.
Citation: FAO(OS) (COMM) 62/2022 & CM APPL. Nos.13107-08/2022
Bench: Justice Mukta Gupta, Justice Manoj Kumar Ohri
Decided on: 19th September 2022
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