The Delhi High Court has restrained the two US and UK based companies dealing in cryptocurrencies from using the TATA trademark.
The appellant, Tata Sons Private Limited in a suit for permanent injunction restraining infringement of registered trademarks, passing off, dilution and tarnishment of trademarks and copyrights etc., has sought ad-interim injunction against the respondents/defendants from using its registered trademark “TATA” for business purposes.
Appellant alleged that the respondents are businesses registered in the United Kingdom and the United States, which are using its trademark for doing online trading in cryptocurrency through their website(s) ‘www.tatabonus.com’ and ‘www.hakunamatata.finance’. It is further alleged that the websites are accessible in India and are in fact accessed by visitors from Delhi on a daily basis.
The appellant was incorporated in the year 1917. Its trade name/trademark “TATA”, stated to have been derived from the surname of its founder-Shri Jamsetji Nusserwanji Tata, is reportedly in continuous and consistent use since then.
Appellant is the holding company of TATA Group of Companies, and claims to be the owner and registered proprietor of the trademark “TATA”, and also its various permutations and combinations. The appellant, and its group companies, claim to be India’s largest private-sector employer.
The group has presence across a number of sectors namely, textiles, iron and steel, power, chemicals, hotels and automobiles, computers and computer software, electronics, beverages, telecommunications, financial services, mutual funds, insurance, broadcasting, aerospace and retail, etc.
The appellant has particularly mentioned its business of financial services, which includes digital currency, blockchain technologies, etc.
The appellant claimed that as on March 31, 2021, the market capitalisation of 29 publicly-listed Tata Companies was about Rs.17,80,000 crores and they employed 800,000 people worldwide. It is the appellant’s case that on account of the distinctive nature, the name and the trademark “TATA” have acquired excellent reputation and exclusively denote the conglomeration of Tata companies, also known as ‘House of TATA’. As such, the mark “TATA” and other “TATA” formative marks are well-known marks, which have also been so acknowledged by the Courts. According to the appellant, the word “TATA” exudes quality and trust that the group is known for both within the country and abroad.
The respondents are allegedly using the mark ‘TATA’ for selling their digital and physical merchandise through website ‘www.hakunamatata.finance’, as well as through online portals like Facebook, Twitter, Instagram, etc. which are interactive and accessible in India. It is averred that respondent unauthorisedly has used the trademark “TATA ” in its handle ‘tatatoken’/‘TataToken’.
In India, the trademark TATA is embedded in the sub-consciousness of the public. In public consciousness, the word “TATA” is only relatable to the TATA group of companies. As pleaded, the appellant is the owner of the trademarks in question, and the said marks are used across the board by almost all the group companies of TATA. The pre-eminence of the business reputation of the TATA group and the popularity of the trademarks is beyond contest. There is sufficient pleading in the plaint to reach the said conclusion.
The bench of Justice Mukta Gupta and Justice Manoj Kumar Johari has held that the way trademark “TATA” has been lifted and adopted as it is, without even an attempt to disguise it with a prefix or a suffix to claim distinctiveness, appears to be unscrupulous. It cannot further be ruled out that it could be an attempt by the respondent to deceive the public by selling inferior and dubious products in the name of TATAs.
“We prima facie find no ground to agree with the appellant that it infringes the appellant’s trademark “TATA”. Hakunamatata is a generic word and the word “TATA ” is fully coalesced in the word hakunamatata. It does not cause any deception or confusion. There is only partial phonetic overlap with the word “TATA ” in Hakunamatata. The appellant cannot prevent adoption by others of names that naturally have alphabets TATA embedded in them,” the court said.
Case title: TATA Sons Private limited v/s Hakunamatata TATA founders & Ors
Citation: FAO(OS) (COMM) 62/2022 & CM APPL. Nos.13107-08/2022