Prerna Gala
Published on: September 20, 2022 at 19:53 IST
In the case of Tata Sons Private Limited vs. Hakunamatata Tata Founders and Ors., the Delhi High Court on Monday barred two cryptocurrency-related businesses with offices in the US and the UK from using the TATA trademark.
The TATA group of enterprises are the only ones that come to mind when people hear the name TATA, according to a division bench of Justices Mukta Gupta and Manoj Kumar Ohri, whose preeminence and popularity are unquestionable.
The Court observed that the two businesses—Hakunamatata TATA Founders and Tata Bonus—were selling cryptocurrency coins and were using the trademark TATA exactly as it is—not even making an attempt to cover it up with a prefix or a suffix in order to claim distinctiveness—so their actions appeared to be shady.
It was also noted that the crew behind one of the websites was of Pakistani descent and based in the UK, raising suspicions about their motivations because it is possible that they were aware of the TATA brand.
“Further, respondent Nos.1 and 3 (companies) are directed to immediately take down the website parked on the domain ‘www.tatabonus.com’ and to put the said domain on hold till the pendency of the application, with an exception, that use of domain name ‘www.hakunamatata.finance’ by respondent No.1 is not prohibited, at this stage,” the Court ordered.
TATA Sons has appealed a single-judge’s decision to deny the two businesses an injunction to stop using their trademark.
The judge did not, however, throw out the case.
The Trademarks Act and the Civil Procedure Code (CPC) are only applicable inside the borders of India, according to the judge, who stated that he is unable to issue an injunction.
The division bench, however, held that the single judge had no reason to continue with those self-doubts for the purposes of deciding the application for an ad-interim injunction and rejected the same outright and definitively once he could disregard them regarding the territorial jurisdiction to hear the suit.
In order to wait for the respondents’ answer to the lawsuit and application following notice, the single judge might have postponed making a decision on the ad-interim application.
However, the Court noted that the single judge chose to dismiss the application entirely.
“It is pertinent to note that learned Single Judge otherwise did not doubt the appellant’s claim to the ownership of its IP. He had sufficient material before him to assume territorial jurisdiction to form a prima facie view, both for the purpose of maintainability of suit, which he did, and also for deciding the application for ad-interim injunction, which he did not,” the bench added.
The bench added that courts could impose a temporary restraining order while waiting for the outcome of the trial on the territorial jurisdiction issue, which is frequently a mixed-up legal and factual matter.
As a result, it overturned the single-decision judge’s and prohibited the two businesses from utilizing the TATA brand.