TATA trademark embedded in sub-conscious of Indian public: Delhi High Court restrains US, UK companies from using TATA mark

The Delhi High Court on Monday restrained two US and UK based companies dealing in cryptocurrencies from using the TATA trademark [Tata Sons Private Limited v. Hakunamatata Tata Founders and Ors]..A Division Bench of Justices Mukta Gupta and Manoj Kumar Ohri said that in public consciousness, the word TATA is only relatable to TATA group of companies whose pre-eminence as well as popularity is beyond contest.The Court noted that the two companies -- Hakunamatata TATA Founders and Tata Bonus -- engaged in the sale of crypto coins, were using the trademark TATA as it is, without even an attempt to disguise it with a prefix or a suffix to claim distinctiveness and, therefore, their conduct appeared to be unscrupulous..It also observed that the team behind one of the websites was of Pakistani origin based in the UK further making their motives suspect because their awareness of the TATA brand cannot be ruled out.“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 had filed an appeal against a single-judge’s order which had refused to injunct the two companies from using their trademark. However, the judge did not dismiss the suit.The judge had said that he cannot pass an order of injunction because the operation of Trademarks Act and the Civil Procedure Code (CPC) is limited to the boundaries of India..The division bench, however, held that once the single-judge could ignore his own self-doubts about the territorial jurisdiction to entertain the suit, he had no reason to persist with those self-doubts for the purposes of deciding the application for ad-interim injunction and reject the same outright and conclusively.Single-judge could have deferred a decision on the ad-interim application and awaited respondents’ response to the suit and application after notice. But the single-judge opted to outright dismiss the application instead, the Court noted.“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 further said that courts can grant interim injunction, pending final determination of issue of territorial jurisdiction, which often is a mixed question of law and facts, after trial..It therefore, set aside the single-judge’s order and ordered the two companies against using the TATA’s trademark..Advocates Pravin Anand, Achuthan Shreekumar and Rohil Bansal appeared for Tata Sons.None appeared for the respondents. .[Read Order].Operation of Trademarks Act, CPC only within Indian territory: Delhi High Court