The Delhi High Court restrained two US and UK-based crypto companies from using the well-known mark “TATA”. The Court held that in the public consciousness, TATA could only be associated with the TATA group of companies owing to the eminence they have gained in India and abroad over the years.
The two companies, Hakunamatata TATA founders and Tata Bonus, have been using the TATA trademark to sell crypto coins without making any changes to claim distinctiveness. It appeared “unscrupulous” to the Court. On further inquiry, it was found that the UK-based company was using a Pakistan-based designer, who could not claim ignorance of the TATA brand, given its popularity, especially in the South Asian region.
The Court ordered TATA Bonus to take down the website from their domain, putting it on hold until the pendency of the application, whereas for Hakunamatata, the Court did not order any prohibitions.
Without dismissing the suit, the Court held that it could not pass an order of injunction due to territorial restrictions under the Trademarks Law and the Civil Procedure Code (CPC).
On appeal filed by TATA Group, the Division bench held that once the suit was admitted and entertained on Indian soil, the Court was well within reasonable jurisdiction to adjudicate on the application of ad-interim injunction and reject the same conclusively.
The Court held that while the territoriality of the dispute is determined, an interim injunction can be granted. The Division bench set aside the Single Judge’s order and instructed the two companies against using the TATA trademark.
In this case, the Division bench overruled the single judge’s order as the crypto companies’ continued use of the TATA trademark could sully the name of the TATA group. While the Single Judge Bench was right in not overstepping its territorial jurisdiction, injuncting the two companies from using the trademark was within its powers as the aggrieved company was Indian.
The courts were obliged to protect Tata Group’s well-known registered mark, especially when the infringing companies’ operations directly affect global and domestic goodwill.