Tata v Hakunamatata: High Court Allows Conglomerate Appeal Against Cryptocurrency

The Delhi High Court on Monday allowed an appeal by Tata Sons Private Limited against a UK and US-based company that sold and traded cryptocurrency under the coin name ‘TATA’, granting an interim injunction against the Respondents to use its trademark “TATA” for commercial purposes.

A division bench of Judge Mukta Gupta and Judge Anil Kumar Ohri set aside the contested order issued by a single judge bench dated October 26, 2021 and observed that the appellant and his group companies have a ubiquitous presence in various businesses – automotive, telecommunications, agriculture, hospitality, energy, defense manufacturing, heavy industries, retail – and that “TATAs are supposed to be ubiquitous in all businesses”.

“At this point, we have no reason to doubt the Appellant’s right to protect its intellectual property against a very clear case of infringement by the Respondents, whether intentional or not. As stated above, the people behind the website… are declared to be people of Pakistani origin in the UK. Their knowledge of the “TATA” mark cannot be ruled out, which makes their motive suspicious. The way the “TATA” trademark was lifted and adopted as is, without even attempting to conceal it with a prefix or suffix to claim distinctiveness, appears to be unscrupulous. Furthermore, it cannot be excluded that this may be an attempt by Respondent 1 to mislead the public by selling substandard and questionable products on behalf of TATA.

But with respect to the domain name, http://www.hakunamatata.finance, the court held that it had no prima facie grounds to agree with the appellant that it infringed its trademark “TATA” . The court observed that Hakunamatata is a generic word and that the word “TATA” is fully integrated into it; it did not cause any deception or confusion; and there was only partial phonetic overlap with the word “TATA” in Hakunamatata.

The Single Judge had considered the issue of territorial jurisdiction at the Threshold itself and disagreed with the Appellant that Delhi courts could have jurisdiction over defendants who are registered and located overseas.

The court found that the appellants had good prima facie grounds to seek an injunction with respect to the website http://www.tatabonus.com, crypto products named $TATA or any other product of the respondent sold on the website. , http://www.hakunamatata.finance, under the name of TATA is concerned, in order to avoid any confusion that may be caused in the minds of the Indian public who may be deceived into thinking that the respondents’ website in question and the products sold therein are the TATA Group’s own website or have an association with the TATA Group.

Allowing the appeal, the court found that failure to grant an interim injunction may cause “irreparable harm to the goodwill enjoyed by the appellant’s mark” and that any questionable or substandard product sold through the respondent’s website can seriously damage its credibility.

Disposing of the appeal, the court ordered that the action be registered before the single judge to serve the appellant’s request for provisional measures on the respondents on September 26, 2022.

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