Bombay High Court Affirms Trademark Suit Can Bypass Pre-Institution Mediation, Highlights Intellectual Property Urgency

Urgent interim relief necessary in intellectual property disputes,” rules Justice Manish Pitale in Chemco Plast vs. Chemco Plastic Industries Pvt. Ltd.

The Bombay High Court has dismissed an application seeking rejection of a trademark infringement plaint for non-compliance with the mandatory pre-institution mediation requirement under Section 12-A of the Commercial Courts Act, 2015. Justice Manish Pitale, delivering the judgment on June 10, 2024, held that the plaintiff, Chemco Plastic Industries Pvt. Ltd., adequately demonstrated the need for urgent interim relief, justifying the bypass of pre-institution mediation.

Chemco Plastic Industries Pvt. Ltd. Filed a commercial IP suit against Chemco Plast, alleging trademark infringement and passing off its registered trademark “CHEMCO.” The plaintiff sought permanent and mandatory injunctions against the defendant. Chemco Plast responded by filing an application under Order VII Rule 11 of the Code of Civil Procedure, 1908, arguing for the rejection of the plaint due to non-compliance with the pre-institution mediation mandate.

The defendant contended that the plaintiff failed to adhere to Section 12-A of the Commercial Courts Act, which mandates pre-institution mediation unless urgent interim relief is contemplated. They argued that the plaintiff, having delayed the suit since the cause of action in 2015, had no grounds for urgent relief.

Justice Manish Pitale emphasized, “The question of urgent interim relief must be assessed holistically from the plaintiff’s standpoint based on the plaint and accompanying documents.” He further noted that the nature of intellectual property disputes often involves protecting consumer interests and preventing market confusion.

The court referenced significant judgments, including the Supreme Court’s decisions in Patil Automation Private Limited vs. Rakheja Engineers Private Limited and Yamini Manohar vs. T.K.D. Keerthi, which highlighted the mandatory nature of pre-institution mediation but allowed exceptions where urgent relief is genuinely contemplated. Justice Pitale remarked, “In cases concerning intellectual property rights, the cause of action arises with each instance of infringement, underscoring the continuous need for urgent relief.”

Justice Pitale underscored, “The facts and circumstances must be considered holistically. Non-grant of interim relief at the ad-interim stage does not justify the dismissal of the commercial suit under Order VII, Rule 11 of the Code.” He added, “Consumers are likely to be duped if marks are misused, necessitating immediate judicial intervention.”

The court’s decision reinforces the principle that in intellectual property disputes, the urgency of interim relief can justify bypassing pre-institution mediation. By dismissing the defendant’s application, the judgment underlines the judiciary’s commitment to protecting proprietary rights and preventing consumer confusion. This ruling is expected to influence future cases, reinforcing the need for swift judicial action in similar trademark infringement disputes.

Date of Decision: June 10, 2024

Chemco Plast vs. Chemco Plastic Industries Pvt. Ltd.