Author: Intern - Yash Raj
In the matter of Tata Sons Private Limited v. Hakuna Matata Tata Founders [IA 8000/2021 in CS (COMM) 316/2021], a single judge [C. Hari Shankar, J.] of the High Court of Delhi, vide Judgment dated October 26, 2021, while dismissing an injunction application against trademark infringement, held that necessary connection between the foreign-seated defendants’ activities and India must be established for the exercise of jurisdiction by the Court.
Section 134 of the Trade Marks Act, 1999 provides that “No suit…..shall be instituted in any court inferior to a District Court having jurisdiction to try the suit”. Further, Section 20 of the Code of Civil Procedure, 1908 confers jurisdiction on courts where “the defendant….carries on business” or “cause of action, wholly or in part, arises”. The question for consideration is whether the expression “carries on business” or “cause of action….arises” would include activities on the internet thereby providing jurisdiction to the Court to issue injunction.
The Plaintiff contended that they provide a platform for crypto-currency trading under their well-known trademark ‘TATA’ and since the defendants dealt with crypto-currency under the name “TATA coin/$TATA” which was accessible in India through website and social media pages, there was purposeful availment of jurisdiction of the court. They further contended that the effect of defendant’s infringing activity was felt in India as the accessibility of the same led to the dilution of plaintiff’s goodwill and had adversely affected their business. Hence, the defendants should be restrained from using the trademark of the plaintiff. The counter-argument to this being that mere accessibility of the website of the overseas defendants, by persons located within the jurisdiction of the Court, is not sufficient to clothe the Court with jurisdiction to act against the defendants.
The Court denied interim relief to the plaintiff and, after analyzing various judgments on the issue, which provided that the intent to target customers in India is a mandatory governing consideration for courts to exercise jurisdiction, held that “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.”
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