TATA SONS PRIVATE LIMITED v HAKUNAMATATA TATA FOUNDER & ORS.

CIA 3: Economics of Law

BECH641A

CASE STUDY: TATA SONS PRIVATE LIMITED vs

HAKUNAMATATA TATA FOUNDER & ORS.

Sovit Agrawal(2033385)

ISHA RAJ (2033480)

6ECOHB

Dr Roopa Patavardhan

April 15, 2023

TATA SONS PRIVATE LIMITED v HAKUNAMATATA TATA FOUNDER & ORS.

INTRODUCTION

Trademark is one of the intellectual property (IP) saviours. A trademark is the security

that an individual, trust, or company may provide for their goods or services. A trademark is

a logo, design, colour, phrase, symbol, or anything else that can help customers differentiate

one product from another. It is a label issued to prove uniqueness and to avoid any ambiguity

that may develop among buyers looking for their chosen brands. It is regarded as an excellent

instrument capable of bringing enormous popularity to a certain product or service.\

The Trade Marks Act of 1999 is the current governing legislation regarding

trademarks. In general, a trademark is either registered or unregistered. As the name implies,

a registered trademark is one that has been registered with the National Trademark Office and

represents the firm or source of the goods, whereas the other does not.

Tata Sons Private Limited v. Hakunamatata Tata Founders & Ors.

The Delhi High Court recently dismissed a case filed by Tata Sons, the controlling

company of the Tata Group, and refused a request for a permanent injunction prohibiting

Hakunamatata Tata Founders and others from using the brand Tata as their name in

cryptocurrencies. Tata Sons is the plaintiff in this case, while Hakunamatata Tata Founders &

Ors are the defendants.

The plaintiff is a company located in India. The defendant's cryptocurrency trading

moniker is TATA coin / $TATA. The Lawsuit's Defendants were businesses based in the

United States and the United Kingdom, with no presence in India. Tatabonus.com and

Hakunamatata.com were emphasised as their domain names.

TATA SONS PRIVATE LIMITED v HAKUNAMATATA TATA FOUNDER & ORS.

FACTS

The plaintiff is a well-known Indian corporation. The plaint describes the party's

engagement in numerous financial services, including cryptocurrencies. However, the

plaintiff's bitcoin activities are not demonstrated to be done under any trademark. However,

the plaintiff is a well-known brand name, "TATA," which operates a bitcoin trading platform.

The defendants, on the other hand, are located in the United States and the United Kingdom,

respectively. They deal with cryptocurrencies under the name "TATA coin/$TATA". None of

them has an Indian subsidiary, and the plaintiff's action does not include the defendants

engaging in any overt manufacturing or marketing activities in India.

Whereas Tata Sons sought a permanent injunction banning the defendants from using

the trademark "TATA" as part of the name, company name, or domain name of their crypto-

public money. To be sure, the defendants' trademark(s) are not registered in India. The central

issue in the case was whether the Delhi High Court had jurisdiction over the defendants due

to their location outside of India. (Admin, 2021)

ISSUE

1. Whether the plaintiff can obtain an injunction for the parties who are not within the

jurisdiction provided by the Trademarks Act of 1999 and the Code of Civil Procedure

of 1908.RULES

Section 20 of the CPC, read in conjunction with Section 13(1) of the Trademarks Act of

1999; Section 134 of the Trademarks Act of 1999.

TATA SONS PRIVATE LIMITED v HAKUNAMATATA TATA FOUNDER & ORS.

ANALYSIS

Plaintiff’s Contention

On behalf of the plaintiffs, the council argued that there were three primary requirements for

this court's geographical jurisdiction, all of which had been met:

1. The defendants' intentional use of this court's jurisdiction;

2. The formation of the cause of action from the defendants' activity within the court's

jurisdiction; and

3. The existence of a critical relationship between the defendants' act, its effects, and this

court's jurisdiction.

It was alleged that the defendant had a deliberate plan to pursue India as a prospective

consumer base. Anyone in India can buy the defendants' cryptocurrency through their

website, which receives roughly 50 visitors every day from India -

www.hakunamatata.finance. Furthermore, numerous Indian clients have inquired about the

method of acquiring defendants' cryptocurrency.

There was clearly a "connection" between the defendants' activities and the plaintiff's and

customers' damage in India. It was also alleged that the defendants exploited their social

media posts to lure Indian consumers under the term "Tata coin/$Tata," so harming the

plaintiff's image. Using the case of Gramphone Company of India Ltd. v. Birendra Bahadur

Pandey. Under International Law, it was said. In the instance of foreign defendants who

reside or conduct business within Indian borders, the Indian courts are limited in their ability

to exercise jurisdiction due to municipal law limits. Section 20 of the CPC is the same. As a
TATA SONS PRIVATE LIMITED v HAKUNAMATATA TATA FOUNDER & ORS.

result, it was asserted that the current complaint can be brought since the defendants target

Indian clients and the cause of action establishes a nexus between the two jurisdictions.

Courts Observation

J. Shankar stated that simply because the defendant's services are available to an

Indian client, which might harm the plaintiff's reputation when considered collectively, does

not offer a valid ground for interfering with the defendant's mark and business.

In contrast to the judgement in Juggernaut Books Pvt. Ltd. v. Ink Mango Inc, it was

recognised that there were no evidence of a concerted endeavour by the defendants to target

Indian buyers in this instance. "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 that the defendants targeted India as a customer base for its cryptocurrency

market," it was remarked. Furthermore, the lack of defendants' identities from its website

does not provide the court authorization to exercise jurisdiction against defendants

incorporated outside of Indian territory.

After considering the present submissions, the court concluded that the scope of

Section 134(2) of the TM Act[3] is broad enough to cover provinces of jurisdiction until

otherwise stated u/s 20 of the CPC read in conjunction with Section 13(1) of the 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. As per Section 134(2)

of the TM Act, the plaintiff has submitted its business address in Delhi, and hence the suit

must be brought in Delhi. (Shrivastava, 2023)

TATA SONS PRIVATE LIMITED v HAKUNAMATATA TATA FOUNDER & ORS.

The question here is whether the court has the territorial jurisdiction to enjoin the

defendants from using their mark notwithstanding the fact that they are based outside of India

and have no physical presence in the nation. According to J. Shankar, the court lacks the

power to do so.

As a result, the "intent to target" is required for the court to exercise its jurisdiction in

this instance. According to the court, the TM Act and CPC are only applicable within Indian

borders. To exercise jurisdiction in cases of internet infringements, a required connection

between the conduct of foreign-based defendants and India must be proved. (Shrivastava,

2023)

CONCLUSION/ JUDGEMENT

The Delhi High Court stated that a complaint involving registered trademark

infringement by a person or its goods or services must be filed in a district or superior court

with jurisdiction to file and hear the suit. As a result, by dismissing the claim, the court

declined to award the defendants the requested directives or interim relief since they were

located outside the geographical jurisdiction of this court.

Critical Analysis- Subjective Perception

While the Hon’ble Court’s conclusion is agreed to in terms of indefinite

expansion of territorial jurisdiction of courts in such cases if they are construed

liberally, it is felt that such cases leave the petitioners in a critical spot. As in the

present case too, the “harmful effect” principle proposed by the petitioner in view of its

market being affected and diluted, deserves discussion. The economic loss to the

petitioners in such cases appears inevitable through the decision. The necessity of
TATA SONS PRIVATE LIMITED v HAKUNAMATATA TATA FOUNDER & ORS.

establishing a “connection” between the defendants’ activities and India, though

rational, a strict application of the same in cases involving internet presence may always

work to the detriment of the petitioner.

With trade and commerce evolving virtually, a dynamic construction of statutory

provisions related to territorial jurisdiction is needed.

TATA SONS PRIVATE LIMITED v HAKUNAMATATA TATA FOUNDER & ORS.

REFERENCES

Admin, C. (2021, November 22). Tata Sons Private Limited V Hakunamatata Tata Founder
& Ors. Retrieved April 15, 2023, from https://iprlawindia.org/tata-sons-private-limited-
v-hakunamatata-tata-founder-ors/

Indiankanoon.org. (n.d.). Retrieved April 14, 2023, from

https://indiankanoon.org/doc/67428923/

Iplf. (2022, November 02). Analysis of Tata Sons Private Limited v. Hakunamatata Tata
founders- determining territorial jurisdiction. Retrieved April 15, 2023, from
https://www.ipandlegalfilings.com/analysis-of-tata-sons-private-limited-v-
hakunamatata-tata-founders-determining-territorial-jurisdiction/

P. (n.d.). Trademark infringement: A case analysis of tata sons V/S Hakunamatata Tata
Founders. Retrieved April 14, 2023, from
https://www.legalserviceindia.com/legal/article-7204-trademark-infringement-a-case-
analysis-of-tata-sons-v-s-hakunamatata-tata-founders.html

Reportable in the Supreme Court of India criminal original ... - lawbeat. (2002, September
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https://lawbeat.in/sites/default/files/2022-07/Mohammed%20Zubair%20vs.%20State
%20of%20NCT%20of%20Delhi%20%26%20Ors.pdf

Shrivastava, A. (2023, April 15). Strip searching undertrial prisoner violates fundamental
right to privacy: Mumbai court. Retrieved April 15, 2023, from
https://www.livelaw.in/news-updates/strip-searching-undertrial-prisoner-violates-
fundamental-right-to-privacymumbaicourt-226383?infinitescroll=1