Anti-Suit Injunctions (“ASI”) are court orders restraining a defendant from commencing, advancing, or pursuing its claim in another jurisdiction or forum; or a court order directing the defendant to terminate or suspend proceedings initiated in an alternate forum, especially where the alternate forum is a foreign jurisdiction.
The concept of ASI can be traced back to the 15th century in England, later gaining prominence around the 1970s in the United State of America. The first case to mark the initiation towards the grant of ASI in restraint of foreign proceedings is Love v Baker1 wherein ASI was granted on the ground of violation of the principles of equity. The jurisprudence in India in respect of ASI is still at a nascent stage and there are no conclusive parameters and rules that have been delineated for grant or rejection of an ASI. Recently, however, the Delhi High Court has decided certain cases that could herald the commencement of a larger debate and consequently, clarity in this interesting position of law.
It is important to note that ASI are orders made against the party-Defendant, in personam i.e., it is directed towards an individual party and not the Court in the alternate jurisdiction. Thus, ASI can be said to be a powerful and important tool to prevent a party involved in the proceedings from initiating parallel proceedings in different foreign jurisdictions and avoid possible conflicts in the judgments and prevent forum shopping.
The principles for grant of an ASI were first enumerated by the Hon’ble Supreme Court of India in the case of Modi Entertainment Network & Anr v. W.S.G. Cricket Pte. Ltd2 and the same are as follows:
1) “In exercising discretion to grant an ASI, 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 granting the injunction;
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 ASI in regard to proceedings which are oppressive or vexatious or in a forum non-conveniens.
3) The burden of establishing that the forum of 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.”
The principles from the Modi Entertainment Network case are verbatim referenced by the Delhi High Court in the case of HT Media Limited & Anr. v. Brainlink International Inc3 (“HT Media Case”). In that matter, HT Media Limited sought a permanent injunction to restrain Brainlink International Inc., from (i) using the domain name ‘www.hindustan.com’ or adopting any mark deceptively similar or identical to its registered trademarks “HINDUSTAN” and “HINDUSTAN TIMES”; and consequently, (ii) from proceeding with the suit already filed before the US District Court for the Eastern District of New York (“US Court”) on this issue; and (iii) instituting any proceeding relating to the subject matter before the Hon’ble Delhi High Court in the said case. The author in this article is focussing on the portion of the matter/order where the ASI was sought, to restrain Brainlink International Inc. from proceeding before the US Court.
The Hon’ble Delhi High Court granted an ASI to HT Media Limited confirming that the Delhi High Court is the Forum Conveniens (appropriate forum) in the present case. Whilst arriving at this conclusion, the Court took into consideration, (i) that HT Media is a company based in India and does not carry business in the USA, (ii) trademark infringement involving loss of goodwill and reputation has its primary viewership in India, (iii) HT Media Limited has not asserted trademark rights in the USA (though their goodwill spills over internationally), and most importantly, (iv) Brainlink International Inc. had offered to sell the impugned domain name to HT Media for an exorbitant and unmerited price, but once unsuccessful, in a further attempt to profiteer, had filed a suit for declaration in the USA.
Courts usually consider factors such as availment of a company to another jurisdiction; whether the act in question was done in another jurisdiction and whether the jurisdiction is reasonable for the defendant to be expected to defend himself there and these very tests have been applied by the Hon’ble Delhi High Court in the HT Media Case while restraining the proceeding initiated by Brainlink International Inc. before the US Court.
Interestingly, the very same High Court was approached in another matter concerning AntiAnti-Suit Injunction, in the case of Interdigital Technology Corporation & Ors. v. Xiaomi Corporation & Ors4 . Vide order dated 03.05.2021, the Hon’ble Court passed an AntiEnforcement Injunction which is the first-ever judgement passed by Indian Courts on the enforcement of an ASI, (“Interdigital Technology Case”). Before proceeding the understand the nuance of the Interdigital Technology Case it is important to understand that term AntiAnti Suit Injunction which is effectively an injunction order restraining a party from continuing with an ASI proceedings that are pending and/or from continuing with proceedings where orders of ASI have been passed (anti-enforcement of ASI). It is one of the many forms of a provisional measure that can be issued by a court of law and is a special form of an ASI.
The Wuhan Intermediate People’s Court (“Wuhan Court”) had granted an ASI against Interdigital Technology Corporation in an ex-parte proceedings. In the Interdigital Technology Case, Interdigital Technology Corporation filed a lawsuit in Delhi High Court against Xiaomi Corporation alleging infringement of certain Standard Essential Patents (SEP’s) registered by Interdigital Technology Corporation in India and sought to restrain Xiaomi from enforcing the order passed by the Wuhan Court pending final disposal of the Interdigital Technology Case and seeking withdrawal of the said ASI pending before the Wuhan Court.
The Delhi High Court whilst adjudicating the Interdigital Technology Case emphasised and relied upon the concept of Forum Conveniens to hold that the Hon’ble Delhi Court is the appropriate forum and not Wuhan Court, for trying a case alleging infringement of an Indian patent. It was also emphasized that the principles of comity of courts, also enumerated in 1(c) in Modi Entertainment case (supra), have to be adhered to, especially when determining/ evaluating the issue of the appropriate forum. In this case, since the Wuhan Court had failed to consider the all important issue of which Court would be most competent to opine on Indian laws, and further since Courts in India would, in fact, be better placed/convenient to determine questions of Indian law, hence the Hon’ble High Court of Delhi Decided that only an Indian court could exercise jurisdiction to decide such an issue.
The other principle considered by the Hon’ble High Court, was the aspect of injustice that is likely to be perpetrated in the event that the ASI was granted or refused. This was in keeping with the principle enumerated in 1(b) in Modi Entertainment case (supra). The Hon’ble Court concluded that in the event that the order of the Wuhan Court was not restrained from enforcement, it would result in a consequence whereby Interdigital Technology Corporation would continue to suffer infringement. An important consideration as Xiaomi’s suppression of initiation of ASI in Wuhan Court.
The Interdigital judgement has landmark significance as it also analyses the corelation between ASI and Anti-Anti Suit Injunction/Anti-Enforcement Injunctions, emerging from foreign jurisprudence, and goes on to list the principles in relation to the same. The said principles have been summarized below:
- An ASI should be granted only in rare cases, and not for the mere asking.
- An ASI could only be granted by a Court possessing “sufficient interest” in the lis forming subject matter of the proceedings which it intends to injunct.
- The possibility of palpable and gross injustice, were the injunction not to be granted, remains a definitive test.
- Mere overlap of issues is not regarded, either by the law in this country or in any other jurisdiction, as sufficient to grant ASI. It is only where the overlap results in the foreign proceedings being rendered “oppressive or vexatious” that ASI may be justified.
- If proceedings in which injunction is sought, was oppressive to the applicant seeking injunction, comity was of relatively little importance, as a factor telling against grant of such injunction.
- There is no reason to treat anti-execution injunction applications as “exceptional”, so as to deny grant of such an injunction, even if grounds for grant of injunction were made out.
- Instances whether Anti-Anti Suit Injunction/ Anti-Enforcement Injunction would be justified are:
a) where the judgment, the execution of which injunction was sought, was obtained in haste or secretly to enable the applicant seeking injunction to take pre-emptive remedial measures;
b) where the order of the execution of which injunction was sought, was obtained fraudulently;
c) where the applicant seeking Anti-Enforcement Injunction had no means of knowing of the passing of the judgment or order against it, until it was served on him.
The landmark nature of this judgment is not only because of its determination in municipal law of India, but is also an indicative guidance for courts internationally, to follow the same.
Courts in India, being courts of both law and equity, practice the issue of injunctions on grounds of equity and to prevent miscarriages of justice. The significant test adopted in both the above discussed decisions of the High Court is whether the foreign proceedings are ‘oppressive or vexatious’. The sole objective is to determine how best the interests of justice will be served in the matter i.e., whether grant of an ASI is necessary in the interest of justice. Additionally, the High Court’s judgement in the Interdigital Technology Case in particular, gives birth to the principles for Indian jurisprudence that govern the grant of an Anti-Anti Suit Injunction/ Anti-Enforcement Injunction and the Court has even gone so far to say that “the tests for grant of anti-suit injunction are not entirely irrelevant, where anti-enforcement injunction is sought, for the simple reason that the enforcement is itself an order passed in the suit.” These principles throw some light on this area as there was no precedent on this aspect. Jurisprudence on the issue of ASI along with Anti-Anti Suit Injunction/ Anti-Enforcement Injunction under metamorphosis, and these decisions of the High Court are a significant addition to this material. Grants of ASI is an optimistic development and the fact that a request for Anti-Anti Suit Injunction/ Anti-Enforcement Injunction has been granted by an Indian Court is a welcome development for litigants in India.
Sapna Chaurasia, Partner
Sapna has post graduated in Constitutional Law and has worked both on litigation and transactions. She has a vast experience of 10 years in media and entertainment sector and has been working on production related transactions, distribution of channels, acquisition / licensing of content and copyright infringement cases, amongst others.
Sakshi Nayak, Associate
Sakshi Nayak is an Associate at TMT Law Practice. Her primary areas of work are Commercial & Corporate Law, Data Protection & Privacy and Public Policy & Regulatory Affairs and the subject areas of Technology and Pharma, Lifesciences & Healthcare. She also has exposure in the areas of Renewable Energy Laws and Media & Entertainment Laws.
An alumnus of University of Petroleum and Energy Studies, Dehradun, Sakshi joined the bar in 2018. Prior to joining the firm in January 2021, she served as a Legal Research Assistant to the Hon’ble Justice Shabihul Hasnain and Hon’ble Justice Vikas Kunvar Srivastava in the Allahabad High Court where she got the opportunity to hone her research skills.