JSA represented Chemco Plastic Industries Private Limited (CPIPL / the Plaintiff) against an application for rejection of its suit for non- compliance with pre-suit mediation provisions under the Commercial Courts Act, 2015.
By an order dated 10 June 2024 (“Order”), a single judge of the Bombay High Court dismissed an application filed under Order VII Rule 11 of the Code of Civil Procedure, 1908 (“Application”) seeking rejection of a Commercial IP Suit for infringement of trademark (“Suit”) on the ground that Chemco Plastic Industries Private Limited had failed to comply with the mandatory provisions of Section 12-A of the Commercial Courts Act, 2015 (“Act”).
The Bombay High Court thus delivered its first decision on the interplay between seeking urgent interim relief in IPR matters and the applicability of Section 12-A of the Act.
The Plaintiff had filed the Suit for an injunction restraining M/s. Chemco Plast (“Defendant”) from infringing its registered trademark. The Defendant filed the Application inter alia contending that the Suit cannot contemplate any urgent interim relief as the Suit has been filed 8 years after the Plaintiff became aware of the cause of action. The Plaintiff also contended that – (i) the Plaint did in fact contemplate urgent interim relief; (ii) the question of alleged delay is of no relevance as any enquiry in that regard would require the court to go into the merits of the case, which could not be done at this stage; and (iii) in IPR matters the rights of consumers are relevant and the urgency is in the context of protecting the public at large from confusion likely to be created by the impugned mark.
The Hon’ble Court agreed with the contentions of the Plaintiff and dismissed the Application holding that –
- While considering whether a plaint deserves to be rejected for non-compliance with Section 12-A of the Act, the court necessarily undertakes a limited exercise to appreciate the plaint, documents, and facts to assess whether the plaint “contemplates” urgent interim relief.
- The court is not expected to enter into the merits of the matter and therefore shall not enquire into any delay in filing a suit. Delay and its effect on entitlement for interim relief are not relevant for the limited enquiry of finding as to whether on the basis of the material on record, the plaintiff can contemplate urgent interim relief.
- In cases pertaining to IPR infringement, the cause of action arises on each occasion that the impugned mark is used by the defendant.
- The Plaintiff in the present case has contemplated urgent interim relief while filing the Suit and the same cannot be rejected as being barred by Section 12-A of the Act.
Our Disputes Team Comprised Lead Partner – Farhad Sorabjee, Partner – Pratik Pawar, Principal Associate – Siddhesh Pradhan, and Associate – Meher Mistri
Farhad acts and appears in diverse complex multi-jurisdictional national and international commercial arbitrations and disputes involving tortious and contractual aspects of civil law.