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Synopsis

A division bench of Justice Mukta Gupta and Justice Manoj Kumar Ohri of Delhi High Court on Monday granted an ex-parte ad-interim injunction in favor of Tata Sons Pvt. Ltd. against US and UK-based companies that used the ‘TATA’ mark for online cryptocurrency trading through their website(s) 'www.tatabonus.com' and 'www.hakunamatata.finance.'

The court was hearing an appeal filed by Tata Sons Pvt. Ltd. against a single-judge order which refused its application under Order 39 Rule 1 and 2 CPC and dismissed it. The single-judge bench ruled that the extra-territoriality of the High court's jurisdiction over foreign-seated respondents was an issue, and thus denied the prayer for an ad-interim injunction.

While setting aside the order passed by a single-judge bench on October 26, 2021, the division bench stated 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 "TATAs are believed to be ubiquitous across all business.

The bench opined, “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, the people behind the website… are stated to be people of Pakistani origin in the UK. Their awareness of the ‘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.”

On the domain name ‘www.hakunamatata.finance’, the court stated that it found no reason to agree with the appellant that it infringes the appellant's trademark "TATA", as Hakunamatata is a generic word, and the word "TATA" is fully coalesced into the word hakunamatata and creates no deception or confusion.

Court added that in Hakunamatata there is only a slight phonetic overlap with the word "TATA", and thus, opined that the appellant cannot prevent others from using names that naturally contain the letters TATA.

Conclusively, the court held that the appellants have a good prima facie case to seek an injunction in relation to the website http://www.tatabonus.com, crypto products under the name $TATA, or any other product of the respondent being sold on the website http://www.hakunamatata.finance, under the name TATA, to avoid any confusion likely to be caused in the minds of the Indian public who may be misled into believing that the respondents' website in question and products.

Accordingly, while allowing the appeal filed by Tata Sons Pvt. Ltd., the bench stated 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.”

The court, therefore, granted ex-parte ad-interim injunctions prohibiting the respondents, their partners, or proprietors from manufacturing, selling, offering for sale, supplying, advertising, or using the appellant's well-known trademark TATA, or any deceptively similar mark thereto, as part of the name of their digital token/cryptocurrency TATA Coin/$TATA or as part of their corporate name/domain name and websites 'www.tatabonus.com.

The Court also ordered that the case be assigned to a single judge to serve notice on the appellant's application for interim relief on the respondents on September 26, 2022.

Case Title: Tata Sons Private Limited v. Hakunamatata Tata Founders & Ors.