JSA successfully represented Mr. Bhrugesh Amin (“RP”), Resolution Professional of the Corporate Debtor, before the Hon’ble National Company Law Tribunal, Mumbai (“NCLT”), in obtaining injunctive relief against the erstwhile promoters in using domain name and other social media accounts containing brand name “SMAAASH”. The Resolution Professional was constrained to file an Application under Section 19 read with Section 60(5) of the Insolvency and Bankruptcy Code, 2016, and Rule 11 of the NCLT Rules, 2016, inter-alia, seeking:
- injunction against the erstwhile promoters and its related party from using of the brand name “SMAAASH” in domain name, social media accounts et al;
- transfer the domain “smaaash.com” back to the Corporate Debtor, even though the said domain name was not created by the Corporate Debtor. Accepting the contentions advanced by the Resolution Professional, the Hon’ble NCLT held that:
- The Hon’ble NCLT has jurisdiction under Section 60(5) of the Insolvency and Bankruptcy Code, 2016 to decide the disputes relating to violation of trademarks since such disputes are connected with the insolvency resolution of the Corporate Debtor.
- Domain name falls within the definition of ‘mark’ under Section 2(zb) of the Trade Marks Act, 1999. Hence, using of the domain name with brand name “SMAAASH” amounts to infringement of the Corporate Debtor’s Trade Mark.
- Having possession of domain name “www.smaaash.com” by the erstwhile promoters and its related party (even though the said domain name is not owned by the Corporate Debtor) amounts to “cyber-squatting”. Thus, the Corporate Debtor is entitled to a relief of not only an injunction from usage of domain name but also the relief of transfer of domain name in favour of the Corporate Debtor. By the Order, the Hon’ble NCLT ensured that the brand name “SMAAASH” and associated digital assets of the Corporate Debtor are protected, allowing the RP to manage the business effectively without obstruction. The Order lays down the principles regarding the jurisdiction of the Hon’ble Tribunal’s in resolving disputes relating to intellectual property and digital assets of the Corporate Debtor.
Our Dispute team comprised of Lead Partner, Varghese Thomas, Partner, Kunal Kaul and Fatema Kachwalla & Senior Associate, Virgil Braganza.
Fatema’s core practice area is Dispute Resolution. She mainly practices in High Court(s), City Civil Court(s) various benches of the National Company Law Tribunal and the National Company Law Appellate Tribunal.