Ruling in favour of Tata Sons Private Limited, the Delhi High Court has permanently restrained a UK-based company from unauthorisedly using the Indian conglomerate's registered trademark 'TATA' while selling and marketing digital token or cryptocurrency.
Passing an order of permanent injunction against 'HakunaMatata $TATA Founders' that has now changed its name to Hakumatata Token Ltd and started a new website, Justice Pratibha M Singh confirmed an ad interim injunction order of a division bench.
The appellate court had also asked the company and domain name registrar to take down the two websites www.hakunamatata.finance and www.tatabonus.com.
"The present suit is liable to be decreed by way of permanent injunction granted in terms of paragraph 30 of the judgment dated 19th September, 2022, passed by the ld. Division Bench of this Court extracted hereinabove. No other reliefs are pressed," the court said in its order passed on October 27.
While the websites had no physical presence in India but were accessed on a daily basis, Tata filed the suit seeking permanent injunction restraining infringement of its registered trademarks.
On September 19, a division bench had set aside an order passed by the single judge declining interim relief to Tata. Though the Single Judge did not doubt Tata's entitlement to file the suit in Delhi, yet it doubted its extraterritorial jurisdiction to injunct the overseas parties by way of ad-interim order.
In appeal, the division bench ruled that there were "sufficient indicators" to assume jurisdiction for the purposes of deciding the application for ad- interim injunction.
Subsequent to the filing of the case, 'Hakunamatata $Tata Founders' took down its websites 'www.hakunamatata.finance' and 'www.tatabonus.com' and also changed its name. It also started a new website 'www.hakunamatatatoken.com' by removing all references to the mark 'TATA'.
The name of its cryptocurrency was also changed to $HKUN Token.
However, a legal notice, sent by Tata Sons, seeking an undertaking from the company that it will not use the 'Tata' mark in future was not responded to.
Perusing screenshots of the websites, Justice Singh noted that apart from changing the domain name and the name of crypto currency, even the 'TATA' merchandise being sold on the website was rebranded as 'HKUN'.
The court also said the defendant was repeatedly served with summons and notices but has chosen not to appear before it.
"Considering that no other email addresses or physical address to contact the Defendant No.1 is available and the impugned websites have also been taken down, issuance of further summons and notice to the Defendant No.1 in the present suit has become an impossibility. Hence, Defendant No.1 is being proceeded against ex parte," said the court.
Title: TATA SONS PRIVATE LIMITED v. HAKUNAMATATA TATA FOUNDERS & ORS.