Operation of Trademarks Act, CPC only within Indian territory: Delhi High Court

The Trademarks Act and the Civil Procedure Code (CPC) operates only within the boundaries of India, the Delhi High Court said on Tuesday while denying interim relief to TATA sons which had filed a plaint seeking permanent injunction against two companies based in the US and UK dealing in crypto currencies (TATA Sons Private Limited v. Hakunamatata Tata Founders and Ors)..The plaint argued that the two companies, Hakunamatata TATA Founders and Tata Bonus, engaged in sale of crypto coins, were using the trademark TATA which went against the Trademarks Act..Justice C Hari Shankar however held that neither of the two companies have any physical presence in India nor is there any connection between the two companies and India. Therefore, the Court cannot issue any injunction against them, the Bench said.."The operation of the Trademarks Act and the CPC statutorily extend only to the boundaries of India. In the case of internet infringements, no doubt, the decision of the Court may, at times, operate against entities located outside India. That, too, however, would be subject to existence of the necessary connection between the activity of the foreign-seated defendants and India. More specifically, intent, of the defendants, to target India, must be established,” the judgment said..Advocate Pravin Anand, appearing for TATA sons, had argued that these coins can be purchased in India, their website could be accessed by Indians and even their Telegram group had several Indians. He added that there was “purposeful availment” by the two companies of the jurisdiction of the Delhi High Court since they had made their crypto currency available for purchase to people of India and Delhi..The Court however, rejected the arguments saying that the mere fact that the website of the two companies had visitors from India or because their social media handles had followers from India does not mean that they were specifically targeting India..“No conscious targeting of India, therefore, exists. Apparently, the defendants’ crypto currency could be purchased, using the QR Code and the methodology indicated on the defendants’ website, by a customer located anywhere in the world. This factor, therefore, too, cannot indicate any conscious targeting of the Indian customer base by the defendants,” the Court said..Justice Shankar said that he is of the prima facie view that the Court cannot issue directions to the defendants since they are outside its territorial reach. The Court however directed that since it is only its prima facie view, the plaint be now registered as a suit and summons issued. The defendants were given time till December 21 to respond to the suit.“Pleadings be completed before the Joint Registrar, and admission and denial of documents carried out, in accordance with the provisions of the CPC read with the Delhi High Court (Original Side) Rules, 2018 and the Commercial Courts Act,” the judgment said..Apart from advocate Pravin Anand, the TATA Sons were represented by advocate Achuthan Sreekumar.The defendants were represented through advocate Mrinal Ojha, Trinath Tadakamalla, Debarshi Dutta, and Aayush Kevlani..[Read Judgment]