Tata Sons Private Limited vs. Hakunamatata Tata Founders and Ors. - (High Court of Delhi) (26 Oct 2021)

Existence of necessary connection between the activities of foreign-seated defendants to target Indian customer must be established

MANU/DE/2847/2021

Intellectual Property Rights

The Plaintiff is a company incorporated in India. The Plaintiff seeks a permanent injunction, restraining the Defendants from using the trademark "TATA", as part of the name under which their crypto currency is made available to the public, or as part of their corporate name or domain name.

Defendants 1 and 2 are situated in the U.K. and the U.S. respectively. They deal in crypto currency, under the name "TATA coin/$TATA". None of the Defendants has any outlets in India, and it is not the case of the Plaintiff that, the Defendants are carrying out any overt manufacturing or marketing activities within India.

Where the Defendants are located outside India, this Court can issue directions against such defendants, if the defendants are carrying out their infringing activities within the jurisdiction of this Court. Where the activity is physically carried out, the question of whether this requirement is, or is not, met, is easily answered.

A somewhat more incisive approach is, however, required where the activity is carried out over the internet, as in the present case. A discernable line does exist, in such cases, between activities which would expose the defendants to the jurisdiction of this Court, and those which would not. Mere accessibility of the website of the overseas Defendants, by persons located within the jurisdiction of this Court, is not sufficient to clothe this Court with jurisdiction to act against the Defendants. Interactivity of the website is, in such a case, essential. The extent to which the website would be interactive is also, however, relevant; mere interactivity would not suffice.

The fact that the Defendants' website has 50 visitors from India every day (which, incidentally, is a remarkably small number) and that there was considerable internet traffic from India to the website of Defendant 1 can also not constitute a basis to indicate that Defendant 1 was selling its crypto currency in India or was intentionally targeting India. The mere fact that, the Defendants' crypto currency can be purchased by customers located in India and that, as a result, the Plaintiff's brand value may be diluted, even seeing cumulatively, cannot, therefore, justify this Court interfering with the defendants' activities, or with its brand or mark.

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 submissions do not make out the existence of the requisite "connection" between the Defendants' activities and India. Present Court cannot issue directions, as sought, to the Defendants as they are outside the territorial reach of present Court.

Tags : INFRINGEMENT INJUNCTION ENTITLEMENT