High Court at New Delhi
Citation: CS(COMM) 316/2021
Judgment delivered on: October 26, 2021
The plaintiff is a well-known company situated in India. The plaint presents the involvement of the party in various financial services, which involves cryptocurrency as well. However, the dealings of cryptocurrency by the plaintiff is not shown to be done under any trademark. But the plaintiff is a known brand name, “TATA”, which facilitates a platform for cryptocurrency trade. On the other hand, the defendants are situated in US and UK, respectively. They deal with cryptocurrency under the title “TATA coin/$TATA”. None of them has any outlet incorporated in India, and the plaintiff’s case does not involve the defendants’ engagement in any overt production or marketing activity in the country.
Whereas Tata Sons requested a permanent injunction prohibiting the defendants from utilizing the trademark “TATA” as a component of their crypto-public currency’s name, company name, or domain name. Admittedly, the defendants’ mark(s) is/are not registered in India. The fundamental question in the case was whether the Delhi High Court had jurisdiction over the defendants because they were based outside of India.
- Whether the plaintiff can seek an injunction for the parties outside the border of India, expressly observed to be outside the jurisdiction of the Trademarks Act 1999 and the Code of Civil Procedure, 1908.
Section 20 of the CPC read along with Section 13(1) of the Trademarks Act, 1999; Section 134 of the Trademarks Act, 1999.
The council, on behalf of the plaintiff’s submitted that there were primarily three requisites for availing territorial jurisdiction of this court, and the same has been duly complied with:
- Defendants purposeful availment of this court’s jurisdiction;
- The emergence of the cause of action from the defendants’ activities within the court’s jurisdiction, and
- Existence of the vital link between the defendants’ act, their consequences and this court’s jurisdiction.
It was contended that there was a conscious intention on the defendant’s part to target India as a potential customer base. Any individual in India can purchase the defendants’ crypto-currency through their website, and there are about 50 visitors from India per day on the website – www.hakunamatata.finance. Further, many customers from India have had a query regarding the modality for purchasing defendants crypto-currency.
There was evidently a “connection” between the defendants’ actions and the damage suffered by the plaintiff and customers in India. It was also claimed that Defendants used their social media posts to attract Indian clients using the name “Tata coin/$Tata,” tarnishing the plaintiff’s reputation. By placing reliance on the case of Gramphone Company of India Ltd. v. Birendra Bahadur Pandey, it was stated that under International Law. In the case of foreign defendants, if they are residing or conducting business within the Indian boundaries, the Indian courts are subject to municipal law constraints to exercise jurisdiction. The same include Section 20 of the CPC. Thus, it was claimed that the present suit can be instituted as the defendants target Indian customers and the cause of action determines a link between the said jurisdiction.
It was observed by J. Shankar that just based on the fact that the defendant’s services can be availed by an Indian customer, which would hamper the plaintiff’s reputation when viewed collectively, does not provide a reasonable justification to interfere with the defendant’s mark and business.
Contrary to the decision pronounced in Juggernaut Books Pvt. Ltd. v. Ink Mango Inc it was noted that signs of a deliberate attempt by the defendants to target Indian customers are not present in the case. It was observed that “the mere fact that the ‘India Development and Relief Fund’ happens to be one of the charities the defendants intended to contact can hardly constitute a basis to indicate targeting of India, by the defendants, as a customer base for its cryptocurrency market”. Additionally, the absence of defendants’ identity from its website does not grant the authority to the court to exercise jurisdiction over the defendants who are incorporated beyond Indian boundaries.
After taking into consideration the present submissions, the court observed that the ambit of Section 134(2) of the TM Act is wide enough to be covered as provinces of the jurisdiction until otherwise is stating u/s 20 of CPC read along with Section 13(1) of TM Act, by additionally granting jurisdiction to a court within whose geographical boundaries the plaintiff lives, conducts business, or works for a living to try the case. Here, the plaintiff has presented its business address in Delhi, and thus the suit shall be filed in Delhi, cannot be gainsaid as per Section 134(2) of the TM Act. The question here is, does the court have the territorial jurisdiction to be able to injunct the defendants from use of their mark, who are located outside India, without any physical presence in the country. In J. Shankar’s opinion, the court does not possess the authority for the same.
Thus, the “intent to target” is necessary for the court to exercise its jurisdiction in the present case. The court opined that TM Act and CPC is enforceable only within Indian boundaries. To exercise the jurisdiction in case of internet infringements, there shall be a necessary connection established between the activities of foreign-based defendants and India.
The Delhi HC ruled that a case concerning registered trademark infringement by an individual or its goods or services shall be instituted in a district court or a superior court that possesses the jurisdiction to institute and hear the suit in that particular matter. Thus, the court, by dismissing the suit, refused to issue directions or interim relief sought to the defendants, as they are located outside the territorial jurisdiction of this court.
 1984) 2 SCC 534
 CS(COMM) 421/2019
 THE TRADE MARKS ACT, 1999