No Confusion with Hakuna Matata but Court Restrains Use of ‘Tata Coin’ and ‘$TATA’
The issue in the instant appeal before the Delhi High Court pertains to the Court’s territorial jurisdiction over a website not based in India but accessible to consumers in India.
Tata Sons Private Limited (TSPL) brought the action against Hakunamatata Tata Founders & Ors alleging trademark infringement, passing off, dilution, etc., for using the mark ‘TATA’ in relation to cryptocurrency and selling merchandise, such as t-shirts, shorts, caps, facemasks etc., under the name ‘TATA’. TSPL alleged that the Defendants through its websites www.tatabonus.com and www.hakunamatata.finance were unauthorisedly using the mark “TATA coin/$ TATA”. The Defendants business are registered in the United Kingdom and United States of America.
At the admission stage, the Single Judge refused to grant an injunction against Defendants who are based in the UK. The Single Judge dismissed the injunction application primarily (1) doubting the extraterritorial jurisdiction of the Court in passing order/s against parties residing abroad, (2) the judge concluded there was not enough evidence to show that Defendants were targeting customers in India, (3) the India traffic on the Defendants’ website was not significant enough to call it an interactive website.
Aggrieved by the Single Judge’s order dismissing the injunction application, TSPL has assailed the order before the two judges’ bench (Division Bench) by appeal.
The Appellant (TSPL) contended:
- They were incorporated in 1917, and the trade name/trademark ‘TATA’ has been in continuous and extensive use since then.
- They are the holding company of TATA Group of Companies and the owner and registered proprietor of the trademark ‘TATA’ and its various permutations and combinations.
- They have a presence across several sectors not limited to textiles, iron, steel, power, chemicals, hotels and automobiles, financial services, including digital currency, blockchain technologies, etc,.
- ‘TATA’ and its formative marks have been acknowledged as well-known marks by the courts. The word ‘TATA’ exudes the quality and trust the group is known for in India and abroad.
On jurisdiction of the Court, TSPL contended.
- Any person can purchase the defendants’ cryptocurrency in India from the defendants’ website.
- There is an admission in the “White Paper” of www.hakunamatata.finance that it was involved in financial activities relating to India.
- Various persons from India had posted queries on the Twitter page of www.hakunamatata.finance regarding the modality for purchase of its “TATA coin/$ TATA” currency.
- Defendants website, www.hakunamatata.finance had 50 visitors from India daily.
- India was second on the list of countries with the highest internet traffic to the www.hakunamatata.finance website.
- These facts indicated that there was “purposeful availment” by the Defendants of the jurisdiction of this Court. The Defendants had made their cryptocurrency, under the infringing mark, available for purchase to customers in India and Delhi.
The Division Bench (DB), after considering the pleadings, arguments, and case laws, held:
- It is judicially settled both by Indian and English courts that even if a website is not directed at customers in a particular country, the fact that the website does not restrict them to access it is enough to characterise it as targeting. It need not be aggressive marketing aimed at any particular class of customers. Thus, the Single Judge seems to have committed an error in observing that there is no purposeful targeting of customers to attract the Court’s jurisdiction. The DB opined that the Learned Judge also ought to have considered that in trademark infringement cases likelihood of confusion and deception among the trade and public will suffice to grant an injunction.
- The Single Judge, based on the plaint and documents on record, was convinced with the maintainability of the suit in Delhi. However, doubted the Court’s territorial jurisdiction for considering the injunction application, which is erroneous. In the instant case, the Defendant uses the word ‘TATA’ without any prefix or suffix. Moreover, there are materials on record that evidences imminent presence in the virtual world over India, including in the Court’s territorial jurisdiction.
- In India, the word ‘TATA’ is exclusively associated with the appellant group of companies. They have an all-pervasive presence across various businesses, and the universal popularity of the TATA trademark is not confined to a few products or services.
- The people behind the Defendants’ website are stated to be people of Pakistani origin. Thus, awareness of the ‘TATA’ brand cannot be ruled out, which makes the motive suspect. Moreover, the manner of adoption of the trademark ‘TATA’ without even an attempt to disguise it with a prefix or a suffix to claim distinctiveness does not appear to be in good faith.
- About ‘HAKUNAMATATA,’ it is a generic word and Appellant cannot prevent others from using marks which has the letters’ T’ ‘A’ ‘T’ ‘A’ merged in it. There will be no deception or confusion as there is only a partial phonetic overlap with the word ‘TATA’
TSPL has a prima facie case for injunction with regard to the website www.tatabonus.com , crypto products by the name of $TATA, or any other product of Defendants’ being sold on the website www.hakunamatata.finance under the name TATA. If inferior products are sold through the Defendants’ website, using the TATA trademark, it will damage its credibility and irreparable injury can be caused to its goodwill and reputation. The Court therefore proceeded to restrain the Defendants from using the mark ‘TATA’ or any other deceptively similar mark a) as part of the name of their digital token/cryptocurrency TATA Coin/$TATA, b) as part of their corporate name/domain name and c) website www.tatabonus.com and social media pages.