The plaintiff seeks a permanent injunction, restraining the defendants from using the trademark “TATA”, as part of the name under which their crypto currency is made available to the public and the same issue was held in the judgement passed by a single bench judge comprising HON’BLE MR. JUSTICE C. HARI SHANKAR, in the matter TATA SONS PRIVATE LIMITED V. HAKUNAMATATA TATA FOUNDERS & ORS. dealt with an issue mentioned above.
The plaintiff is a company incorporated in India. Though the plaint avers that documents showing involvement of the plaintiff, its subsidiaries and group companies in financial services including crypto currency, have been filed with the plaint, the documents with the plaint do not indicate that the plaintiff is itself dealing in crypto currency under any brand name or trade mark, They also mentioned that 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/$TATA”
The first question that arises for consideration is, therefore, whether the plaintiff can seek an injunction against the defendants’ mark, the defendants being located outside the sovereign borders of India and, therefore, statutorily outside the reach of the Trademarks Act, 1999, as well as the Code of Civil Procedure, 1908 (CPC).
Mr. Pravin Anand, learned counsel for the plaintiff, asserts the existence of territorial jurisdiction of this Court, over the defendants, on the following grounds few are mentioned down below:
- The defendants’ crypto currency can be purchased by any person in India, from the defendants’ website. CS(COMM) 316/2021
- There is an admission, in the “White Paper” of Defendant 1, that it was involved in financial activities relating to India.
- Various persons from India had posted queries on the Twitter page of Defendant 1, regarding the modality for purchase of its “TATA coin/$ TATA” currency.
- Defendant 1’s website www.hakunamatata.finance had 50 visitors from India each day.
- India was second in the list of countries with highest internet traffic to the www.hakunamatata.finance website.
In support of his submissions, He relied, further, on (India TV) Independent News Services Pvt. Ltd. v. India Broadcast Live LLC3 , World Wrestling Entertainment v. Reshma Collections4 , Juggernaut Books Pvt. Ltd. v. Ink Mango Inc5 , Banyan Tree Holdings (P) Ltd. v. A Murali Krishna Reddy6 , Millennium & Copthorne International Ltd. v. Aryans Plaza Services Pvt. Ltd.7 and Exxon Mobil Corporation v. Exon Corp Pvt. Ltd.8 ( Case law)
Whereas The defendants filed an application, under Order XXXIX Rule 4 CPC, for vacation of the injunction. One of the contentions advanced by the defendants was that they were companies in the US and the UK with no Indian presence. As such, the authority of this Court to issue any interlocutory injunction against the defendants was contested.
Mr. Anand has also pointed out that, on the Twitter Page of Defendant 1, various persons from India posted queries regarding the process to be followed, to purchase the defendants’ crypto currency. 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.
And also for the same reason, the fact that the defendants’ website has 50 visitors from India every day (which, incidentally, is a remarkably small number) and that there was considerable internet traffic from India to the website of Defendant 1 can also not constitute a basis to indicate that Defendant 1 was selling its crypto currency in India or was intentionally targeting India.They also told that the submissions of Mr. Pravin Anand do not, in my considered view, make out the existence of the requisite “connection” between the defendants’ activities and India.
The court perused the facts and argument’s presented, it was of the opinion that- “As a result, I am of the prima facie opinion that this Court cannot issue directions, as sought, to the defendants as they are outside the territorial reach of this Court. As this is a prima facie view, let the plaint be registered as a suit and summons to be issued thereon, returnable before the Joint Registrar on 21st December, 2021. Pleadings be completed before the Joint Registrar, and admission and denial of documents carried out, in accordance with the provisions of the CPC read with the Delhi High Court (Original Side) Rules, 2018 and the Commercial Courts Act, 2015. CS(COMM) 316/2021 Page 22 of 22. The prayer for interim relief is declined. IA 8000/2021 is dismissed”.
Judgment Reviewed by: Mandira BS