Interim Decision is to be made on probable rather than a definitive view: Delhi High Court
"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."
In a trademark infringement and passing off suit filed by TATA Sons Pvt Ltd, the Delhi High Court granted an ex-parte ad-interim injunction against the respondents, Hakunamatata Tata Founders & Ors from manufacturing, selling, offering for sale, supplying, advertising or unauthorisedly using the appellant's well-known trademark TATA, or any other deceptively similar mark.
"….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/$TATA or as part of their corporate name/domain name and websites 'www.tatabonus.com'/social media pages amounting to infringement/passing off. Further, respondent Nos.1 and 3 are directed to immediately take down the website parked on the domain 'www.tatabonus.com' and to put the said domain on hold till the pendency of the application… at this stage. Further, respondent No.4 is directed to delist the TATA Coin/$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," as held by the two judge bench of the Court.
In June 2021, the appellant discovered the respondents website 'www.tatabonus.com' via which the respondents were offering for sale and exchange cryptocurrency by the name of TATA coin. Additionally, the respondents were also selling merchandise, such t-shirts, shorts, caps, facemarks under the mark TATA. The appellant, trademark owner of the mark TATA, further alleged that the the respondents were selling their digital and physical merchandise through website 'www.hakunamatata.finance.'
According to the appellant, India statistically ranks 2nd in the list of countries with the highest internet traffic to the website 'www.hakunamatata.finance'. It was further submitted by the appellant that the respondents, owner of the websites 'www.tatabonus.com' and 'www.hakunamatata.finance', have their office based in the UK, behind the website, there is a team of individuals who are UK nationals of Pakistani origin.
The case was first adjudicated by a single judge bench, who ran into the question of territorial jurisdiction. The single judge bench was of the opinion that the the Courts in Delhi did not have the jurisdiction over the respondents who are registered and located overseas. The Court nonetheless agreed to proceed with the suit in Delhi, yet declined to grant ad-interim injunction. According to the learned Single Judge, extra-territorial reach of the jurisdiction of the Court over foreign-seated respondents was an issue, and he thus declined the prayer for grant of ad-interim injunction.
Aggrieved by this decision, the appellants filed an appeal in the present court.
Decision of the Court
The Court was of the prima facie opinion that "learned Single Judge otherwise did not doubt the appellant's claim to the ownership of its IP. He 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."
In pursuant to the question of territorial jurisdiction, the Court disagreed with the decision of single bench and opined that, "according to us there are sufficient indicators….to assume jurisdiction for the purposes of deciding the application for ad- interim injunction."
Lastly, deciding on the question of trademark infringement, the Court held that, "In India, the trademark TATA is embedded in the sub-consciousness of public. In public consciousness, the word "TATA" is only relatable to TATA group of companies….pre-eminence of the business reputation of the TATA group and the popularity of the trademarks is beyond contest."
"The respondents' website is accessible in India and is attracting a traffic of fifty hits-a-day. Evidence of possibility of commercial transaction on the respondents' website by Indian visitors is also pleaded in the plaint. There are other pleadings and documents to show that the offending products in question are accessible on the respondents' websites for a price."
"Their awareness of "TATA" brand cannot be ruled out, which makes their motive suspect. The way trademark "TATA" has been lifted and adopted as it is, without even an attempt to disguise it with a prefix or a suffix to claim distinctiveness, appears to be unscrupulous. It cannot further be ruled out that it could be an attempt by respondent No.1 to deceive public by selling inferior and dubious products in the name of TATAs."
However, for the domain name www.hakunamatata.finance, the Court held that the word "Hakunamatata is a generic word and the word "TATA" is fully coalesced in the word hakunamatata. It does not cause any deception or confusion. There is only partial phonetic overlap with the word "TATA" in Hakunamatata."
The Court therefore concluded that "not granting ad-interim injunction can cause irreparable harm to the goodwill enjoyed by the appellant's trademark. The appellant is known for the quality of its goods and services. Any dubious and inferior products sold through the respondents' website, using the appellant's trademark, can seriously damage its credibility."
The present appeal was thus allowed the Court and an ad interim injunction was granted in favour of the appellants.