Contributed by: Khaitan & Co
INTRODUCTION
In a recent suit i.e. HT Media Limited & Anr v. Brainlink International Inc & Anr[1] (HT Media), the High Court of Delhi (Delhi HC) granted an ex-parte anti-suit injunction to HT Media and restrained Brainlink International from proceeding with its suit filed before the New York District Court in the United States. The present article discusses the general principles of anti-suit injunctions in India as followed by Indian courts for granting of such injunctions and their specific application in relation to intellectual property rights disputes.
PRINCIPLES GOVERNING ANTI SUIT INJUNCTIONS
An anti-suit injunction is an order where a court restrains a party from filing/or continuing with proceedings in any other court (including foreign courts) with respect to the subject matter of the suit. The said definition of an anti-suit injunction was recently approved by the Supreme Court of India (Supreme Court) in the case of Dinesh Singh Thakur v. Sonal Thakur[2].
In its landmark judgement of Modi Entertainment Network & Anr v. W.S.G. Cricket Pte Ltd[3] (Modi Entertainment), the Supreme Court had laid down the key principles governing anti-suit injunctions. The principles laid down by the Supreme Court are as follows:
1. While exercising its discretion to grant an anti-suit injunction, the court has to be satisfied with respect to the following aspects:
a. the defendant is amenable to the personal jurisdiction of the court where the suit for grant of anti-suit injunction is filed;
b. the non-grant of an injunction will result in the ends of justice being defeated; and
c. the principle of comity – i.e. respect for the court against which the anti-suit injunction is being sought must be kept in mind.
2. In cases where there are multiple forums available, the court, after considering all the factors before it, must decide which forum is the appropriate forum (forum conveniens) and grant an anti-suit injunction against the proceedings which are vexatious or oppressive (forum non-conveniens).
3. The burden of proof of satisfying the court that the forum against which the anti-suit injunction has to be granted is a forum non-convenience or that proceedings therein are vexatious or oppressive in nature is on the party filing for the anti-suit injunction.
It is to be noted that the courts in India are typically cautious and careful in granting anti-suit injunctions as the same involves impinging on the jurisdiction of another court. Therefore, such injunctions are granted sparingly and not as a matter of routine, especially in matters where the opposing party is a foreign entity or resides abroad and has already initiated proceedings in a foreign court.
In the case of Board of Control for Cricket in India v. Essel Sports Private Limited and Ors[4], the Delhi HC, in furtherance of the principles laid down in Modi Entertainment, held that in matters where the opposing party is a foreign entity or resides abroad, the court will have to tread carefully in issuing anti-suit injunctions. It further held that courts in India would have to be even more circumspect where the foreign party has already instituted an action in a foreign court, as the foreign party may attempt to seek remedy in the court where it is a resident, or not comply with summons issued by Indian courts.
ANTI SUIT INJUNCTIONS IN INTELLECTUAL PROPERTY MATTERS
Generally, anti-suit injunctions are prayed for in matters relating to arbitration or family law. However, Courts have also started granting anti-suit injunctions in matters relating to intellectual property as well. One such judgement has been passed by the Delhi HC, in the case of Independent News Service Pvt Ltd v. India Broadcast Live LLC & Ors[5] (India TV).
The Delhi High Court in the India TV case dealt with the issue of passing off of the plaintiff’s trade mark by way of domain names registered by the defendants. On an application of the settled principles relating to anti-suit injunctions, the Delhi HC determined that as the defendants were amenable to the personal jurisdiction of the court and had sufficient connection with the jurisdiction of the court, the Delhi HC and not the district court, Arizona was the forum conveniens in the matter. In view of the same, the Delhi HC restrained the said defendants from proceeding with the suit filed before the district court, Arizona in the United States.
Similarly, an order granting an anti-suit injunction was recently passed by the Delhi HC in the HT Media case. The said suit was filed by HT Media against Brainlink International, a New York based entity which had registered the domain name www.hindustan.com and was thereby, infringing HT Media’s trade marks “Hindustan” and “Hindustan Times”. HT Media submitted before the court that after the issuance of the legal notice to Brainlink by HT Media directing it to cease and desist from using the trade marks “Hindustan” and “Hindustan Times”, Brainlink had shown its mala fide by not only quoting an exorbitant amount of USD 3 million for selling the domain name to HT Media, but had also surreptitiously filed a declaratory suit for non-infringement against HT Media in the United States District Court for the Eastern District of New York titled Brainlink International, Inc. v HT Media Ltd. & Anr[6].
In view of the aforesaid, HT Media prayed for an ex-parte ad-interim injunction against Brainlink from infringing the HT Media’s trade marks and also sought an anti-suit injunction to restrain Brainlink from commencing or initiating any further proceedings in the suit filed before the United States District Court, as the same was oppressive and vexatious in nature.
The Delhi HC, while applying the principles established in Modi Entertainment, noted that it would have to examine whether Brainlink and its owner were amenable to personal jurisdiction of the court, whether injustice would be caused to HT Media if the injunction was refused and whether the Delhi HC or the United States District Court would be the forum conveniens in the matter. The Delhi HC further noted that in the past, the Delhi HC had also exercised jurisdiction over a foreign defendant and granted an ex-parte injunction from using a domain name in the India TV case.
The Delhi HC noted that as Brainlink’s website was accessible to residents of Delhi, and as HT Media was able to demonstrate a close connection with Brainlink’s activities in India, Brainlink as well as the other defendants were amenable to the personal jurisdiction of the court. The Delhi HC further noted that at the time of the adoption of the domain name, Brainlink was actively targeting viewers in India and was also willing to sell the domain name to HT Media which carries on business in Delhi. The correspondence regarding the sale of the domain name was also received by HT Media in Delhi, and hence a substantial and integral part of the cause of action under Section 20 (c) of the Code of Civil Procedure 1908 to file the present suit had arisen within the jurisdiction of the Delhi HC. In view of the aforesaid facts, the Delhi HC held that it had personal jurisdiction over Brainlink as well as the other defendants.
Furthermore, considering that HT Media had not asserted its trade mark rights in United States and does not carry on any business in United States, it is evident that the filing of the declaratory suit by Brainlink in the United States was an attempt to frustrate HT Media from availing its remedies. In view of the same, the Delhi HC held the proceedings before the United States District Court to be vexatious and oppressive in nature and that HT Media had made out a prima facie case for grant of an anti-suit injunction.
In view of the aforesaid, the court restrained Brainlink from proceeding further with the suit titled Brainlink International, Inc v. HT Media Ltd and Anr before the United States District Court.
CONCLUSION
Anti-suit injunctions are an effective mechanism even in intellectual property disputes, especially in cases wherein defendants based outside India attempt to scuttle proceedings initiated by intellectual property right holders in India by initiating frivolous and vexatious suits in their local courts. In cases such as the HT Media case, where the mala fides of the Defendants were clearly made out by their acts of cybersquatting and attempting to extort HT Media for an exorbitant sum of money, the court rightly issued an anti-suit injunction against the defendants. The grant of anti-suit injunctions in such cases becomes all the more relevant in today’s times, as due to the COVID-19 pandemic, international travel has been rendered almost impossible and a party may face difficulties in defending itself in such frivolous litigations. However, care must be taken that the principles as laid down in Modi Entertainment case by the Supreme Court are not diluted by Indian parties, attempting to wriggle out of legitimate proceedings instituted in foreign courts. In the past, the remedy of grant of anti-suit injunctions has been sparingly granted as it involves impinging on the jurisdiction of another court and the courts should continue to keep the same in mind.
[1] CS (COMM) 119/2020, Order dated 28 April 2020. [2] Dinesh Singh Thakur vs. Sonal Thakur (2018) 17 SCC 12 [3] Modi Entertainment Network & Anr Vs W.S.G. Cricket Pte. Ltd. AIR 2003 SC 1177 [4] Board of Control for Cricket in India v Essel Sports Private Limited and Ors 167 (2010) DLT 176 [5] Independent News Service Pvt. Ltd. v. India Broadcast Live LLC & Ors 2007 (35) PTC 177 (Del) [6] Civil Action No.1 20-cv-01279
Contributed by Khaitan & Co
(Author of the above article is Ajay Bhargava (Partner), Ankur Sangal (Principal Associate), Sucheta Roy (Senior Associate) and Shiva Tokas (Associate)