Mere Geographical Presence Of Website And Customers' Ability To Access It Sufficient For Granting Injunction In Trademark Infringement Cases: Delhi HC

The Delhi High Court has held that mere looming presence of a website in a geography and ability of the customers to access the same is sufficient while granting relief of injunction in matters pertaining to trademark infringement.

A division bench comprising of Justice Mukta Gupta and Justice Manoj Kumar Ohri added that in trademark infringement cases, 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.

"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," the Court said.

The Court made the observations while granting ex parte ad interim injunction in favour of Tata Sons Private Limited. It restrained two companies based in United Kingdom and United States engaged from unauthorisedly using the registered trademark 'TATA' during selling and marketing of their digital token or cryptocurrency.

The companies were using TATA's trademark for doing online trading in cryptocurrency through their websites - 'www.tatabonus.com' and 'www.hakunamatata.finance'. 

While it was Tata's case that the websites were accessible in India and more particularly from Delhi on a daily basis, a single judge had declined the grant of ad interim injunction in its favour. The court had rejected the argument that Courts in Delhi can have jurisdiction over the companies registered and located overseas.

Though the Single Judge did not doubt Tata's entitlement to file the suit in Delhi, yet it doubted its extraterritorial jurisdiction to injunct the overseas parties by way of ad-interim order. Therefore, single judge observed that the Indian traffic on the two websites was too scant to call it an interactive website, which was an essential factor for attracting territorial jurisdiction in the cases of online trade.

In appeal, the Court noted that existence of Tata's registered trademark on the websites in question was very conspicuous, adding that the products had similar sounding and spelled names.

"In fact, the word "TATA" is used as it is by respondent No.1 without any attempt to disguise the same by adding a prefix or suffix, to claim distinctiveness. It was noticed by the learned Single Judge that there is a fifty- hit-a-day traffic on the respondents' website, which he found to be inadequate for assuming jurisdiction," the Court said.

The Division Bench was of the view that it was open to the Single Judge to dismiss the suit wholesale for want of jurisdiction if it was so observed.

"Learned Single Judge, self-doubting his own extraterritorial jurisdiction, has dismissed the interim injunction application on the said sole ground. In effect, the appellant's application remained unanswered on the aspect of need for interim protection sought by it, against infringement of its right, pending a final decision in the suit. We are of the view that, considerations, while deciding an application for grant of ad-interim injunction could be less stringent than the one for final relief in a suit. Interim decision is required to be made based on probable rather than a definitive view," the Court observed.

The Bench thus concluded that there were "sufficient indicators" to assume jurisdiction for the purposes of deciding the application for ad- interim injunction.

"The way 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 public by selling inferior and dubious products in the name of TATAs," it said.

While setting aside the order passed by single judge and granting an interim injunction in favour of Tata, the Court listed the suit before the single judge for issuance of notice on the application seeking interim relief on 26th September.

The Court also directed that the domain 'www.tatabonus.com' be put on hold till pendency of the interim application, clarifying that the use of domain name 'www.hakunamatata.finance' was not prohibited. The court also ordered delisting of TATA Coin/$TATA or any other crypto-assets bearing Tata's mark from various platforms.

Title: TATA SONS PRIVATE LIMITED v. HAKUNAMATATA TATA FOUNDERS & ORS

Citation: 2022 LiveLaw (Del) 888

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