Delhi High Court: In a case filed by TATA Sons Private Limited (‘Appellants’) seeking an ad-interim injunction against the respondents from using its registered trademark “TATA” for business purposes, a Division Bench of Mukta Gupta and Manoj Kumar Ohri, JJ. granted ex-parte ad-interim injunction restraining the respondents, their partners or proprietors from manufacturing, selling, offering for sale, supplying, advertising, or unauthorizedly 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.
The appellant was incorporated in the year 1917 having the trade name/trademark “TATA”, derived from the surname of its founder-Shri Jamsetji Nusserwanji Tata. Allegedly, the respondents are businesses registered in the United Kingdom and the United States, which are using their trademark for doing online trading in cryptocurrency through their website(s) ‘www.tatabonus.com’ and ‘www.hakunamatata.finance’. It is further alleged that the websites are accessible in India and are in fact accessed by visitors from Delhi on daily basis.
A suit was filed seeking injunction but the Single Judge did not doubt the appellant’s entitlement to file the plaint in Delhi, yet he doubted his extraterritorial jurisdiction to injunct the overseas parties by way of ad-interim order, as there was no evidence of the respondents’ targeting the customers in India to sell their digital and physical merchandise and the Indian traffic on the respondents’ website was found to be too scant to call it an interactive website, which is an essential factor recognized Indian Courts for attracting territorial jurisdiction in the cases of online trade.
Principles surrounding Territorial Jurisdiction in Online Trade via Internet websites
A question came up for consideration in the case of Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3780, that,
For the purposes of a passing off action, or an infringement action where the plaintiff is not carrying on business within the jurisdiction of a court, and in the absence of a long-arm statute, in order to satisfy the forum court that it has jurisdiction to entertain the suit, the Plaintiff would have to show that the Defendant “purposefully availed” itself of the jurisdiction of the forum court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the plaintiff within the forum state.
In a passing off or infringement action, where the defendant is sought to be sued on the basis that its website is accessible in the forum state, what is the extent of the burden on the Plaintiff to prima facie establish that the forum court has jurisdiction to entertain the suit? Plaintiff would have to plead this and produce material to prima facie show that some commercial transaction using the website was entered into by Defendant with a user of its website within the forum state resulting in an injury or harm Plaintiff within the forum state.
In Millennium & Copthorne International Limited v. Aryans Plaza Services Private Limited & Ors., 2018 SCC OnLine Del 8260, a Single Judge bench of this Court further held 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.
Observations and Analysis
Placing reliance on Lifestyle Equities CV and another company v. Amazon UK Services Ltd,  EWCA Civ 552, the Court noted 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 characterize it as targeting. Targeting need not be a very aggressive act of marketing aiming at a particular set of customers. The mere looming presence of a website in geography and the ability of the customers therein to access the website is sufficient, in a given case.
Thus, a White Paper, issued by respondent 1 where, in the list of programs pursued by respondent 1, there is a fund called ‘India Development and Relief Fund’ along with other social media printouts, shows respondents’ looming presence in the virtual world over India, including in the territorial jurisdiction of this Court.
Therefore, the fact that the people behind the offending website are stated to be UK nationals of Pakistani origin does make the motives suspicious, given the popularity of the TATA brand among the people from the Indian subcontinent. It is not unreasonable to infer that the objective of respondent 1 could be to target the unsuspecting Indian origin public by doing trade in the name of “TATA”.
The Court opined that in India, the trademark TATA is embedded in the subconsciousness of the public and is only relatable to TATA group of companies. The way trademark “TATA” has been lifted and adopted as it is by the respondent, without even an attempt to disguise it with a prefix or a suffix to claim distinctiveness, appears to be unscrupulous and with an intention to deceive the public by selling inferior and dubious products in the name of TATAs.
The Court held that as far as the domain name www.hakunamatata.finance is concerned, Hakunamatata is a generic word, and the word “TATA” has fully coalesced in the word Hakuna Matata. It does not cause any deception or confusion. There is only partial phonetic overlap with the word “TATA” in Hakunamatata. Thus, the appellant cannot prevent the adoption by others of names that naturally have alphabets TATA embedded in them.
The Court held that the appellant has a good prima facie case to seek an injunction, as far as the website www.tatabonus.com, crypto products by the name of $TATA, or any other product of respondent 1 being sold on the website www.hakunamatata.finance under the name TATA is concerned.
The Court directed respondents 1 and 3 to immediately take down the website parked on the domain ‘www.tatabonus.com’ and to put the said domain on hold till the pendency of the application, with an exception, that use of domain name ‘www.hakunamatata.finance’ by respondent 1 is not prohibited, at this stage.
Further, it directed respondent 4 is to delist the TATA Coin/$TATA and/or any other crypto-assets bearing the mark “TATA” or another deceptively similar mark thereto, from the networks/platforms operated by respondent 4 including Binance Smart Chain and Binance community.
[TATA Sons Private Limited v. Hakunamatata TATA Fopunders, 2022 SCC OnLine Del 2968, decided on 19-09-2022]
Advocates who appeared in this case:
Mr. Pravin Anand, Mr. Achuthan Shreekumar and Mr. Rohil Bansal, Advocates, for the Appellants;
None, for the Respondents.
*Arunima Bose, Editorial Assistant has put this report together.