An 'anti-suit injunction' can be defined as a court order requiring the injunction defendant to not commence, pursue or advance a particular claim or to take steps to terminate or suspend court or arbitration proceedings in a foreign jurisdiction.(1)
Anti-suit injunctions have deep roots in English law. Traceable at least to 15th century England, the remedy first appeared in the form of a writ of prohibition by the common law courts to the ecclesiastical courts to prevent their expansive jurisdictional assertions.(2) Further, anti-suit injunctions are said to have evolved from ordinary injunctions, which used to be granted by the English chancery courts when an English common law court's judgment violated the principles of equity.(3) The earliest instance of a court granting an anti-suit injunction can be traced back to the 17th century in Love v Baker.(4)
Anti-suit injunction granting developed in the US courts in the early 19th century, where they were used to restrain parties from instituting suits in different states for the same causes of action.(5) The US courts started issuing international anti-suit injunctions mainly from the 1970s. Today, anti-suit injunctions have grown as a remedy not only in common law jurisdictions, but also in civil law jurisdictions.
The dictionary defines 'injunction' as "a court order commanding or preventing an action".(6) In other words, an 'anti-suit injunction' is used to refrain a party to a suit or proceeding from instituting or prosecuting a case in another court, including a foreign court. In India, the meaning of anti-suit injunctions was explained by the Supreme Court in Dinesh Singh Thakur v Sonal Thakur(7) as follows:
Anti-Suit Injunctions are meant to restrain a party to a suit/proceeding from instituting or prosecuting a case in another court, including a foreign court. Simply put, an anti-suit injunction is a judicial order restraining one party from prosecuting a case in another court outside its jurisdiction. The principles governing grant of injunction are common to that of granting anti-suit injunction. The cases of injunction are basically governed by the doctrine of equity. It is a well-settled law that the courts in India have power to issue anti-suit injunction to a party over whom it has personal jurisdiction, in an appropriate case. However, before passing the order of anti-suit injunction, courts should be very cautious and careful, and it should be granted sparingly and not as a matter of routine as such orders involve a court impinging on the jurisdiction of another court, which is not entertained very easily specially when the it restrains the parties from instituting or continuing a case in a foreign court.
The ground on which the Indian courts can grant anti-suit injunctions were set out by the Supreme Court in Oil and Natural Gas Commission v Western Company of North America,(8) in which the court pointed out that an anti-suit injunction can be granted when "it is necessary or expedient to do so or when justice requires it".
These grounds were further elaborated in Modi Entertainment Network v WSG Cricket PTE Ltd(9) as follows:
(1) In exercising discretion to grant an anti-suit injunction the court must be satisfied of the following aspects:-
(a) the defendant, against whom injunction is sought, is amenable to the personal jurisdiction of the court; (b) if the injunction is declined the ends of justice will be defeated and injustice will be perpetuated; and (c) the principle of comity -- respect for the court in which the commencement or continuance of action/proceeding is sought to be restrained -- must be borne in mind.
(2) in a case where more forums than one are available, the Court in exercise of its discretion to grant anti-suit injunction will examine as to which is the appropriate forum (Forum conveniens) having regard to the convenience of the parties and may grant anti-suit injunction in regard to proceedings which are oppressive or vexations or in a forum non-conveniens;
…
(7) the burden of establishing that the forum of the choice is a forum non-conveniens or the proceedings therein are oppressive or vexatious would be on the party so contending to aver and prove the same.
Anti-suit injunctions are also a matter of interest when it comes to providing parties with provisional relief; however, their granting will be restricted even when a court has been empowered to do so. The Delhi High Court recently shed light on the meaning and scope of such suits in HT Media Ltd & Anr v Brainlink International Inc.(10)
HT Media sought a permanent injunction to restrain Brainlink International from:
- using the domain name 'www.hindustan.com' or adopting any mark deceptively similar or identical to its registered trademarks HINDUSTAN and HINDUSTAN TIMES;
- proceeding with a suit(11) already filed before the US District Court for the Eastern District of New York; and
- instituting or filing in a court any other suit, application or proceeding relating to the impugned domain name or any issue which forms the subject matter of the present suit.
HT Media has been continuously using the trademarks HINDUSTAN and HINDUSTAN TIMES since 1920. Brainlink International, a corporation providing IT-related services, bought the disputed domain name in 1996, leading to HT Media's present allegations of infringement and cybersquatting in violation of its trademark rights.
In December 2019 HT Media sent Brainlink International a cease and desist letter to acquire the disputed domain name for $1 million. In February 2020 HT Media received a response from Brainlink International requesting $3 million for the disputed domain name. HT Media proposed a counter offer, but Brainlink International filed a non-infringement suit against HT Media.
The Delhi High Court primarily evaluated the following issues in its decision.
Adoption of domain name in bad faith The Delhi High Court observed that a domain name is akin to a trademark and relied on the Supreme Court's ruling in Satyam Infoway Ltd v Siffynet Solutions (P) Ltd,(12) which held that the use of an identical or similar protected domain name may cause internet users to mistakenly access one domain name instead of another. The Delhi High Court also relied on Mr Arun Jaitley v Network Solutions Pvt Ltd,(13) in which the court set out the importance of domain name protection and held that:
the use of a well-known name without any reason by the Defendants as a Domain name and keeping in possession the disputed domain name without sufficient cause is violative of the [Internet Corporation for Assigned Names and Numbers] policy and can be safely held to be a bad faith registration.
Jurisdiction The Delhi High Court also examined whether it had personal jurisdiction over Brainlink International and the forum conveniens (ie, the forum with the appropriate jurisdiction where more than one forum may be available to the plaintiffs).
Agreeing with HT Media, the court observed that it had personal jurisdiction over the matter as the trademarks were registered in, and Brainlink International carried out business within, its jurisdiction. The court also agreed that on denial of injunction, HT Media would have to approach the New York court for redress, which "has no jurisdiction over the Plaintiffs or the subject matter of the dispute".
The court also observed that notice and email correspondence showing HT Media's interest in buying the disputed domain name took place in Delhi and preceded the New York suit, thereby being merely a counterblast to HT Media's legitimate exercise of their rights and availment of remedies, thereby generating a substantial and integral part of the cause of action for HT Media to file a suit.
Grant of anti-suit injunction The Delhi High Court relied on the principles set out in Modi Entertainment Network v WSG Cricket Pte Ltd and was of the prima facie opinion that the suit before the New York court was vexatious and oppressive, as HT Media had not asserted trademark rights or conducted any business in the United States.
Accordingly, the court held that HT Media had successfully legitimised its trademark infringement action and made a prima facie case for granting an anti-suit injunction, as its trademarks were registered in India and its goodwill applied internationally.
The court therefore granted an interim ex-parte injunction in favour of HT Media, temporarily restraining Brainlink International from proceeding with the suit in New York or instituting in any other court any proceeding relating to the disputed domain name or issue which formed the subject matter of the present suit. The court also restrained Brainlink International from creating third-party rights in the disputed domain name or using any other mark identical or deceptively similar to HT Media's trademarks.
Brainlink International's defence remains to be seen.
When a party approaches a court seeking an anti-suit injunction, the court typically determines the forum conveniens and personal jurisdiction depending on the dispute at hand. The courts usually identify the appropriate forum as the one with which the dispute has a 'real' and 'substantial' connection.
Although there are no specific rules governing anti-suit injunctions in India, the Indian courts – being courts of both law and equity – usually grant injunctions on the grounds of equity and preventing miscarriages of justice. The most recently adopted test is whether the foreign proceedings are 'oppressive' or 'vexatious' and the objective is to determine how best the interests of justice will be served (ie, whether an anti-suit injunction is necessary in the interest of justice). While jurisprudence on this matter has been slow to develop, the Delhi High Court's judgment in HT Media Ltd v Brainlink International Inc is a significant contribution in this regard.
Endnotes
(1) Thomas Raphael, The Anti-Suit Injunction, Fourth Edition (Oxford 2008); see also George A Bermann, Transnational Litigation In A Nutshell, pp 113-114 (West 2003).
(2) Lord Coke, as chief justice of the Court of Common Pleas, strongly defended the right of the common law courts to address writs of prohibition to the ecclesiastical courts. For example, see Langdale's Case, 77 Eng Rep 1338 (KB 1609).
(5) George A Bermann, 'The Use of Anti-Suit Injunctions in International Litigation', 28 Columbia Journal of Transnational Law, pp 589-594 (1990).
(6) Black's Law Dictionary, Ninth Edition (p 855).
(10) CS (COMM) 119/2020 and IAs 3767-3771/2020).
(11) Brainlink International, Inc v HT Media Ltd (Civil Action 1 20-cv-01279).
