Disposing of the appeal, the court directed that the suit be listed before the single judge for issuing notice on the appellant's application for interim relief to the respondents on September 26 (Representational file photo)
The Delhi High Court Monday allowed an appeal by Tata Sons Private Limited against a UK- and US-based business found to be selling and exchanging cryptocurrency by the name of ‘TATA’ coin, granting an ad-interim injunction against the respondents from using its registered trademark ‘TATA’ for business purposes.
A division bench of Justice Mukta Gupta and Justice Manoj Kumar Ohri set aside the impugned order passed by a single judge bench dated October 26, 2021 and observed that the appellant and its group companies have an all-pervasive presence across various businesses – automobiles, telecom, agriculture, hospitality, power, defence manufacturing, heavy industries, retail – and that “TATAs are believed to be ubiquitous across all business”.
“At this stage, we do not have any reason to doubt the appellant’s right to protect its IP against a very obvious case of infringement by the respondents, intended or otherwise. As stated above, people behind the website… are stated to be people of Pakistani origin in the UK. Their awareness of ‘TATA’ brand cannot be ruled out, which makes their motive suspect. The way the 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 the public by selling inferior and dubious products in the name of TATAs.”
But with respect to the domain name, http://www.hakunamatata.finance, the court held that it did not have a prima facie ground to agree with the appellant that it infringes its ‘TATA’ trademark. The court observed that Hakunamatata is a generic word and the word ‘TATA’ is fully coalesced in it; it did not cause any deception or confusion; and there was only partial phonetic overlap with the word ‘TATA’ in Hakunamatata.
The single judge had examined the question of territorial jurisdiction at the threshold itself and did not agree with the appellant that courts in Delhi could have jurisdiction over the respondents who are registered and located overseas.
The Court observed that the “Single Judge had caveated his decision by characterising it as “a prima facie opinion”, agreed to register and proceed with the suit in Delhi, yet declined to grant ad-interim injunction, when he otherwise did not doubt the appellant’s intellectual property rights in the trademark “TATA” vis-a-vis the respondents. 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.”
The court held that the appellants have a good prima facie case to seek injunction as far as the website http://www.tatabonus.com, crypto products by the name of $TATA, or any other product of respondent being sold on the website, http://www.hakunamatata.finance, under the name TATA is concerned, in order to avoid any confusion likely to be caused in the mind of the Indian public who might be deceived to believe that the respondents’ website in question and products sold therein are the TATA group’s own website or have an association with TATA group.
Allowing the appeal, the court held that not-granting ad-interim injunction can cause “irreparable harm to the goodwill enjoyed by the appellant’s trademark” and that any dubious or inferior products sold through the respondent’s website can seriously damage its credibility.
Disposing of the appeal, the court directed that the suit be listed before the single judge for issuing notice on the appellant’s application for interim relief to the respondents on September 26, 2022.
Source: indianexpress.com-Malavika Prasad
Editor: IPR Daily-Ann