Hakunamatata: High Court Grants Injunction Against Use Of "TATA" mark for Cryptocurrencies
INTRODUCTION
Recently, in the case of TATA Sons Private Limited v. Hakunamatata TATA Founders & Others[1], the Division Bench of the Delhi High Court granted an ex-parte ad-interim injunction in favour of the Appellant restraining the Respondents from using the Appellant's well-known trademark ‘TATA’, or any other deceptively similar mark thereto as part of the name of their digital token or cryptocurrency ‘TATA Coin’ or ‘$TATA’.
BACKGROUND
The Appellant, the holding company of the TATA Group of Companies, claimed to be the owner and registered proprietor of the trademark ‘TATA’, and also its various permutations and combinations. The Appellant further asserted to have a presence across a number of sectors including the business of financial services, which includes digital currency, blockchain technologies, etc. It was stated by the Appellant that on account of the distinctive nature of the name and the trademark ‘TATA’, they have acquired an excellent reputation over the years.
In the present case, an appeal was filed against the judgment of the learned Single judge of the Delhi High Court. It was alleged by the Appellant that the Respondents were businesses registered in the United Kingdom and the United States, which were using its trademark for doing online trading and selling cryptocurrency by the name of ‘TATA’ coin through their websites ‘www.tatabonus.com’ and ‘www.hakunamatata.finance’. It was further alleged that the said websites were run by a team of individuals who were UK nationals and were accessible in India and in fact were accessed by visitors from Delhi on a daily basis. Besides cryptocurrency, they were also found to be selling merchandise, such as t-shirts, shorts, caps, etc, under the name ‘TATA’. The Appellant also claimed that aside from their website, the Respondents were selling their goods through social media platforms such as Instagram, Facebook, and Twitter, which are accessible in India as well.
The learned Single Judge, at the threshold itself, ran into the question of territorial jurisdiction and refused to accept jurisdiction over the Respondents, who were registered and located overseas. Therefore, an ad-interim injunction was initially denied. According to the learned Single Judge, there was no evidence that the Respondents were targeting the customers in India to sell their digital and physical merchandise and that there was no “purposeful availment”. The Court observed that in the case of internet-related trademark infringements, the intent of foreign seated defendants to target Indian consumers must be established.
The Appellant relied on the landmark decisions including India TV, Independent News Service Pvt. Ltd. v. India Broadcast Live LLC & Ors.[2]and Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy & Anr[3]. and pleaded that the Delhi Court has territorial jurisdiction over the present case as in an action for infringement and/or passing off, the court where injury or harm is caused would have jurisdiction.
FINDINGS OF THE COURT
The Court, relying on judgments of Indian and English Courts held 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.” The Court further clarified that with regards to trademark infringement matters, “it is the possibility of confusion and deception in the mind of public due to infringing trademark that is good enough for the Court to grant injunction.”
The Court considered that the trademark 'TATA' is embedded in the subconsciousness of the public in India. Further, the existence of the Appellant’s registered trademark on the Respondents’ website is very conspicuous, so much so that the products had similar sounding and spelled names as the Appellant’s trademark. Therefore, the objective of the Respondent was to target an unsuspecting Indian origin public by trading in the name of ‘TATA’.
The Court also held 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.” In light thereof, the Court allowed the appeal and granted an ex-parte ad-interim injunction restraining the Respondents from using the Appellant's well-known trademark. Further, the Court directed the Respondent no. 4 to delist the TATA Coin or any other crypto-assets bearing the mark ‘TATA’ or other deceptively similar mark thereto, from the networks or platforms operated by them. However, the Court did not grant any injunction for the domain name www.hakunamatata.finance considering that it is a generic word and does not cause any deception or confusion.
COMMENT
Certainly, trademark law is imperative, even in the world of virtual currencies, including cryptocurrencies. Even then, the FinTech companies ignore prevailing trademark laws at their own peril. Furthermore, the present judgment of the Delhi High Court has brought clarity regarding territorial jurisdiction especially with respect to online infringement in intellectual property matters and the grant of interim injunctions.
For any queries, please write to the author, Ms. Divanshi Gupta at divanshi.gupta@iprattorneys.com.
