Anti-Suit Injunctions

Our Associate Aishwarya Pande dissscuss “Anti-Suit Injunctions

Recently the Delhi High Court, in HT Media Ltd. & Anr. v. Brainlink International Inc. & Anr., granted an anti-suit injunction, restraining Brainlink International Inc. (the “Defendant”) from prosecuting a legal proceeding initiated by it against HT Media Ltd. (the “Plaintiff”) before the Eastern District of New York (“EDNY”), United States of America.

The case of the Plaintiff was that the Defendant, a New York based corporation, is infringing its registered trademarks, HINDUSTAN and HINDUSTAN TIMES. The Plaintiff also alleged cybersquatting in respect of the domain name www.hindustan.com. The Plaintiff claimed that it approached the Defendant to purchase the disputed domain name. However, the Defendant quoted an exorbitant price and rejected the Plaintiff’s counter-offer. Thereafter, the Defendant surreptitiously filed a declaratory suit for non-infringement against the Plaintiff before the EDNY. The Plaintiff, then, approached the Delhi High Court to restrain the Defendant from infringing the Plaintiff’s registered trademarks, and to obtain an anti-suit injunction against the Defendant to restrain the Defendant from prosecuting the suit in the EDNY.

The Delhi High Court followed the Supreme Court’s holding in Modi Entertainment Network v. WSG Cricket Pte Ltd, [(2003) 4 SCC 341] (“Modi Entertainment Case”). 

First, the Court observed that it must consider whether the Defendant’s activities have any connection with India. Secondly, it must examine whether the cause of action arises out of the Defendant’s activities in India and third, whether the exercise of the court’s jurisdiction would be reasonable.

The Court observed that the owner of the Defendant was of Indian origin. The Defendant’s website was accessible to users in India and was targeted towards Indian audiences. Negotiations for sale of the disputed domain name were carried on in Delhi.  In light of these factors, the Court found that the Defendant’s activities have a connection with India, and an integral part of the cause of action has occurred in Delhi.  

The Court also observed that the Defendant has not used the disputed domain name for any legitimate activity since the year 2000. Further, if a consumer accidentally reaches the Defendant’s website, whose content is unrelated to the content of the Plaintiff’s site, users may be deterred from accessing the Plaintiff’s website. This would lead to erosion of reputation and goodwill of the Plaintiff and weaken the value and strength of Plaintiff’s trademarks. Moreover, the exorbitant price quoted by the Defendant for the disputed domain name is indicative of the Defendant’s bad faith. Consequently, the Court held that refusal of an injunction would cause irreparable harm to the Plaintiff’s goodwill and will defeat the ends of justice.

The Court noted that the suit filed by the Defendant against the Plaintiff before the EDNY is vexatious and oppressive. The Plaintiff’s marks are registered in India, and their goodwill spills over internationally. However, the Plaintiff does not carry any business in the USA. The Court held that the suit before the EDNY was filed with the sole intention to cause unnecessary hardship to the Plaintiff.

On the basis of the above, the Delhi High Court held that the Plaintiff has made out a prima facie case for the grant of an anti-suit injunction. Granting the Plaintiff relief, the Court restrained the Defendant from proceeding with the suit filed before the EDNY or initiating any suit/proceeding in any other court and from using the disputed domain name and/or any other mark similar to the Plaintiff’s registered trademark.