Court’s attention through documents showing involvement of TATA, its subsidiaries and group companies in financial services including cryptocurrency. Although it was nowhere reflected that the TATA is in itself dealing in crypto currency under any brand name or trademark. Strangely, they do indicate, that TATA is, under its well-known brand providing the platform for trading crypto- currency. The case was filed against Defendants before the Delhi High Court who are situated in the U.K. and the U.S. respectively. They deal in crypto currency, under the name “TATA coin/$TATA”. None of them has any outlets in India. TATA was seeking a permanent injunction, restraining the opposite party from using the trademark “TATA”, as part of the name under which their crypto currency is made available to the public, or as part of their corporate name or domain name.
Admittedly and interestingly, the opposite party mark “TATA coin/$TATA” is not registered in India.
The first question that arose for consideration is, therefore, whether TATA can seek an injunction against the defendants’ mark, the defendants being located outside the sovereign borders of India and, therefore, statutorily outside the reach of the Trademarks Act, 1999, as well as the Code of Civil Procedure, 1908 (CPC).
The Supreme Court, in Indian Performing Rights Society Ltd. v. Sanjay Dalia (2015) 10 SCC 161 has clarified that a plaintiff is entitled to institute a suit for infringement of its trademark, or for passing off, within any court, which would be competent to adjudicate on the suit, as envisaged by Section 134 of the Trademarks Act, 1999 or Section 20 of the CPC.
In addition, therefore, to a court within whose jurisdiction the plaintiff resides or voluntarily works for gain, a suit may also be instituted, by virtue of Section 20, CPC, in a court within whose jurisdiction the defendant resides or carries on business or personally works for gain, or where the cause of action arose, wholly or in part.
In substance, therefore, a suit can be instituted where either the plaintiff resides or voluntarily works for gain or the defendant resides or voluntarily works for gain or the cause of action arose wholly or in part.
The moot question is whether this court has the territorial jurisdiction to issue any injunctive direction to the defendants, who are both located outside India with, admittedly, no physical Indian presence, or injunct the use, by them, of their “Tata Coin/$TATA” mark.
(India TV) Independent News Services Pvt. Ltd. v. India Broadcast Live LLC 3 (2007) 35 PTC 177 (Del)
The position that emerges from the aforesaid decision is that:
(i) the accessibility of the website of the defendant to persons within the jurisdiction of this Court would not, by itself, empower this Court to exercise jurisdiction over the defendant,
(ii) something more substantial, indicating purposefully directed activity, by the defendants to persons located within the territorial jurisdiction of this Court, is necessary,
(iii) Indian Courts do not possess long arm jurisdiction, to act against non-resident defendants,
(iv) orders which would operate to the prejudice of non-resident defendants (i.e. defendants located outside India) can, therefore, be passed by Indian Courts only if
(a) the defendants’ activities have a sufficient connection with India,
(b) the cause of action, for the plaintiff, arises out of such activities and
(c) the exercise of jurisdiction would be reasonable,
(v) the fact that the defendants’ website is interactive and is accessible to persons located within the jurisdiction of this Court, is undoubtedly a relevant factor, and
(vi) mere interactivity or accessibility, however, is insufficient; the level of interactivity is also relevant.
The position that emerges
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.
A somewhat more incisive approach is, however, required where the activity is carried out over the internet, as in the present case. A discernable line does exist, in such cases, between activities which would expose the defendants to the jurisdiction of this Court, and those which would not. 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 extent to which the website would be interactive is also, however, relevant; mere interactivity would not suffice. The decision in India TV3 details, in this context, the considerations of website interactivity and of “purposeful targeting” of Indian customers, by the defendants located abroad. The interactivity should, therefore, be coupled with an overt intent, of the defendants, to target customers in India.
(In India TV3, it was found that India was expressly mentioned on IBL’s website as one of the countries from where customers could access the services provided by IBL.) It would also be relevant to examine whether any collateral evidence of purposeful targeting of the Indian market, by the foreign defendants, is, or is not, available. Where such evidence exists – as in the case of India TV3 – that would support the inference of amenability of the defendants to the jurisdiction of Indian Courts. At the end of the day, the two considerations which would pre-eminently decide the issue would be whether the website of the defendants is interactive and whether it discloses an overt intent to target the Indian market. “Intent to target” appears, at any rate, to be a mandatory governing consideration, the satisfaction of which is a sine qua non for this Court to exercise jurisdiction.
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.
The submissions of Mr. Pravin Anand do not in court considered view, make out the existence of the requisite “connection” between the defendants’ activities and India. As a result, the court was of the prima facie opinion that it cannot issue directions, as sought, to the defendants as they are outside the territorial reach of this Court.
image courtsey: carlogos.org
