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Justice C. Hari Shankar of Delhi High Court has held that in case of internet infringements of trademark, intent of the defendants, to target India as a customer base, must be established. The Court was hearing a trademark infringement suit brought by Tata Sons Pvt Ltd against Hakunamatata Tata Founders, a company based in the United Kingdom (UK).

FACTS

The defendants are situated in the UK and the United States (US), and deal in crypto currency, under the name “TATA coin/$TATA”.

None of the defendants have 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.

Tata Sons, however, sought 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. The defendants’ mark/marks are not registered in India. The primary issue in the matter was with regard to Delhi High Court’s jurisdiction in the matter since the defendants are based out of territory of India.

CONTENTION OF TATA SONS

Counsel Pravin Anand, arguing on behalf of Tata Sons, contended that the three requirements for availing territorial jurisdiction of this court have been fulfilled in the present case, namely:

1. purposeful availment, by the defendants, of the jurisdiction of this Court,
2. arising of the cause of action, from the activities of the defendants, within the jurisdiction of this Court, and
3. substantial connection between the acts of the defendants or their consequences and the jurisdiction of this Court

He also contended that there was, a clear intent, on the part of the defendants, to target India as a customer base.

VIEW OF COURT

The Delhi High Court observed that it does not have the jurisdiction to injunct the defendants from using the said marks. The Court relied on Independent News Services Pvt. Ltd. v. India Broadcast Live LLC, to reach such a conclusion:

"The resultant legal position is that, 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... 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 Court said.

It therefore held that, the “intent to target” is a mandatory governing consideration, the satisfaction of which is a sine qua non for the Court to exercise jurisdiction in such cases. The Court thus held that the Court cannot issue directions as the defendants are outside the territorial reach of this Court. In conclusion, the Court stated:

"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."

Cause Title: Tata Sons Private Limited V. Hakunamatata Tata Founders & Ors.