Full Judgment Text
2023:DHC:3086
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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% Judgment Reserved on: 21 April, 2023
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Judgment Delivered on: 8 May, 2023
+ CRP-IPD No.4/2023, CM No.48/2023 & CM No.49/2023
YAMINI MANOHAR ..... Petitioner
Through: Mr. J Sai Deepak with Ms.Shraddha
Chirania, Mr.Kartikey Bhatt and
Mr.R. Abhishek, Advocates.
versus
T K D KEERTHI ..... Respondent
Through: Mr. Kunal Khanna, Ms.Vridhi
Pasricha and Mr.Prakasha Walia,
Advocates.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
JUDGMENT
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1. The present revision petition assails the order dated 6 February, 2023
passed by the District Judge (Commercial Court)-01, South District, Saket
Courts, New Delhi, whereby the application filed on behalf of the
petitioner/defendant under Order VII Rule 11 of the Civil Procedure Code,
1908 (CPC) seeking rejection of the plaint, was dismissed.
2. The suit from which the present petition arises was filed seeking
permanent injunction restraining infringement of trademark and passing off
along with other ancillary reliefs. The suit was filed along with an
application under Order XXXIX Rules 1 and 2 of the CPC for grant of
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interim injunction and an application seeking exemption from compliance
with Section 12A of the Commercial Courts Act, 2015.
3. The petitioner/defendant filed an application under Order VII Rule 11
of the CPC seeking rejection of the plaint as being not maintainable as the
plaintiff failed to comply with provisions of Section 12A of the Commercial
Courts Act mandating pre-institution mediation before filing a commercial
suit.
4. The case of the petitioner before the Commercial Court was that mere
filing of an application under Order XXXIX Rules 1 and 2 of CPC would
not exempt the plaintiff from compliance under Section 12A of the
Commercial Courts Act, as the same is a mandatory requirement. Reliance
in this regard has been placed on the judgment of the Supreme Court in Patil
Automation (P) Ltd. v. Rakheja Engineers (P) Ltd. , 2022 SCC OnLine SC
1028.
5. The case set up by the respondent/plaintiff before the Commercial
Courts was that in cases pertaining to intellectual property, the relief of
interim injunction, including ex parte ad interim stage is extremely
important as the cases relating to intellectual property are not only for the
benefit of the plaintiff but also for the benefit of the public at large. In the
present case, the respondent/plaintiff had made valid grounds for grant of an
ad interim injunction order.
6. Agreeing with the submission of the respondent/plaintiff that grant of
an ad interim injunction in intellectual property cases is extremely important
and in view of the fact that the respondent’s/plaintiff’s suit contemplated
urgent interim relief against the petitioner/defendant, the Commercial Court
held that there was no requirement for the plaintiff to undergo pre-institution
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mediation before filing the present suit and hence, the application filed by
the petitioner/defendant under Order VII Rule 11 of the CPC was dismissed.
Relevant observations of the Commercial Court are set out below:
“8. As per the experience seen in intellectual property cases,
the relief of interim injunction, even during ad-interim stage, is
extremely important. In the present case, the plaintiff has filed
the suit on 26.03.2022 for permanent injunction restraining
infringement of trademarks, passing off, unfair trade
competition, rendition of account, damages, delivery up etc of
its trademark Life impressions against the defendant. The said
plaint was accompanied with an application U/o 39 Rule 1 and
2 r/w Section 151 CPC for ad-interim injunction. In view of the
foregoing discussion and particularly, when the plaintiff’s
suit contemplated urgent interim relief for ad-interim
injunction against the defendants, there was no requirement
of the plaintiff to undergo pre-institutional mediation before
filing the present suit. The application of the defendant filed
U/o 7 Rule 11 CPC for rejection of the plaint is devoid of any
merits and the same is hereby dismissed with a costs of
Rs.5,000/- payable to the plaintiff within two weeks . The said
application stands disposed of accordingly.”
7. The present revision petition has been filed assailing the aforesaid
order on the following grounds:
i. The impugned order is not in conformity with the judgment of the
Supreme Court in Patil Automation (supra) wherein it has been held
that there has to be mandatory compliance of pre-institution mediation
in terms of Section 12A of the Commercial Courts Act, 2015.
ii. The contemplation of urgent interim relief under Section 12A of the
Commercial Courts Act cannot be left at the sole discretion of the
plaintiff. Section 12A of the Commercial Courts Act uses the words
‘ contemplate any urgent interim relief ’ in respect of the suit.
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Therefore, the Court has to apply its mind to assess whether the plaint
and the application for interim relief contemplates an urgent relief that
would require bypassing the mandatory provision of Section 12A of
the Commercial Courts Act.
iii. The Commercial Court failed to conduct the exercise to determine
whether the present suit contemplated any urgent interim relief and
dismissed the application filed by the petitioner only on the ground
that in intellectual property cases, relief of interim injunction is
extremely important.
iv. The petitioner places reliance on Section 80(2) of the CPC to interpret
the provisions of Section 12A of the Commercial Courts Act. Under
Section 80(2) of the CPC, a person can file a suit against the
Government without sending the requisite notice in terms of Section
80(1) of the CPC after taking leave of the Court. Therefore, while
considering grant of leave under Section 80(2), the Court would have
to apply its judicial mind to determine if urgency is contemplated in
the suit or not. Reliance in this regard has been placed on the
judgment of the Supreme Court in State of A.P. v. Pioneer Builders ,
(2006) 12 SCC 119.
8. Per contra, counsel for the respondent/plaintiff has made the
following submissions:
i. Reliance placed by the petitioner on Patil Automation (supra) is
misplaced as in the said case, the Supreme Court was not concerned
with cases where urgent interim relief was contemplated. Even
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otherwise, the present suit was filed on 5 March, 2022, and the
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judgment in Patil Automation (supra) was applicable only to suits
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filed after 20 August, 2022.
ii. In Chandra Kishore Chaurasia v. R A Perfumery Works Private
Ltd. , 2022 SCC OnLine Del 3529, a Division Bench of this Court has
categorically held that the question whether a suit involves any urgent
relief or not, is to be determined solely by the pleadings and the relief
sought by the plaintiff. Whether the Court accedes to such pleading or
not is not relevant for the purposes of the plaintiff fulfilling the
requirement under Section 12A of the Commercial Courts Act.
iii. In Bolt Technology OU v. Ujoy Technology Private Limited and
Ors. , 2022 SCC OnLine Del 2639, a case where facts were very
similar to the facts of the present case, the Single Bench of this Court
relying upon the pleadings in the suit held that the pre-institution
mediation under Section 12A of the Commercial Courts Act was not
required in the said case.
iv. In the facts of the present case, the suit contemplated grant of urgent
interim relief. The respondent/plaintiff issued a cease and desist notice
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to the petitioner on 6 November, 2020 and no response thereto was
received. The respondent/plaintiff also filed a Notice of Opposition
against the petitioner’s trademark application, to which the
petitioner/defendant filed a counter statement that the opposition was
frivolous. In these circumstances, the plaintiff had filed the suit
seeking urgent reliefs and therefore, there was no requirement to go
through pre-institution mediation under Section 12A of the
Commercial Courts Act.
v. The language used in Section 80(2) of the CPC is quite dissimilar to
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the language used in Section 12A of the Commercial Courts Act.
Unlike Section 80(2) of the CPC, under Section 12A of the
Commercial Courts Act, there is no requirement of taking leave of the
Court.
9. I have heard the rival contentions.
10. At the outset, reference may be made to sub-section (1) of Section
12A of the Commercial Courts Act:
“ 12A. Pre-Institution Mediation and Settlement --(1) A suit,
which does not contemplate any urgent interim relief under
this Act , shall not be instituted unless the plaintiff exhausts the
remedy of pre-institution mediation in accordance with such
manner and procedure as may be prescribed by rules made by
the Central Government. ”
11. The aforesaid provision was the subject matter of consideration before
the Supreme Court in Patil Automation (supra). The relevant observations
of the aforesaid judgment are set out below:
“ 100. In the cases before us, the suits do not contemplate urgent
interim relief. As to what should happen in suits which do
contemplate urgent interim relief or rather the meaning of the
word “contemplate” or urgent interim relief, we need not dwell
upon it . The other aspect raised about the word “contemplate” is
that there can be attempts to bypass the statutory mediation under
Section 12-A by contending that the plaintiff is contemplating
urgent interim relief, which in reality, it is found to be without any
basis. Section 80(2)CPC permits the suit to be filed where urgent
interim relief is sought by seeking the leave of the court. The
proviso to Section 80(2) contemplates that the court shall, if, after
hearing the parties, is satisfied that no urgent or immediate relief
need be granted in the suit, return the plaint for presentation to
the court after compliance. Our attention is drawn to the fact that
Section 12-A does not contemplate such a procedure. This is a
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matter which may engage attention of the lawmaker . Again, we
reiterate that these are not issues which arise for our consideration.
In the fact of the cases admittedly there is no urgent interim relief
contemplated in the plaints in question .
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113. Having regard to all these circumstances, we would dispose
of the matters in the following manner:
113.1. We declare that Section 12-A of the Act is mandatory and
hold that any suit instituted violating the mandate of Section 12-A
must be visited with rejection of the plaint under Order 7 Rule 11.
This power can be exercised even suo motu by the court as
explained earlier in the judgment. We, however, make this
declaration effective from 20-8-2022 so that stakeholders
concerned become sufficiently informed.
113.2. Still further, we however direct that in case plaints have been
already rejected and no steps have been taken within the period of
limitation, the matter cannot be reopened on the basis of this
declaration. Still further, if the order of rejection of the plaint has
been acted upon by filing a fresh suit, the declaration of prospective
effect will not avail the plaintiff.
113.3. Finally, if the plaint is filed violating Section 12-A after the
jurisdictional High Court has declared Section 12-A mandatory
also, the plaintiff will not be entitled to the relief. ”
12. The following position emerges from a reading of the aforesaid
paragraphs:
(i) Provisions of Section 12A of the Commercial Courts Act are
mandatory in nature.
(ii) A plaint can be rejected under Order VII Rule 11 of the CPC, if
it is instituted without following the mandate of Section 12A of the
Commercial Courts Act. However, this would be in respect of suits
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filed after 20 August, 2022.
(iii) The cases before the Supreme Court did not contemplate any
urgent interim relief and therefore, the Supreme Court did not make
any observations with regard to the meaning of the expression, ‘ suits
where urgent interim reliefs are sought’ .
(iv) There is a difference between the language used in Section
80(2) of the CPC and Section 12A of the Commercial Courts Act.
Unlike Section 80(2) of CPC, Section 12A of the Commercial Courts
Act does not contemplate taking leave of the Court.
13. In Chandra Kishore Chaurasia (supra), a Division Bench of this
Court interpreted the expression, ‘contemplate any urgent interim relief’
used in Section 12A of the Commercial Courts Act. In the case before the
Division Bench, the Commercial Court did not accept the contention of the
defendant that the plaint should be rejected under Order VII Rule 11 of the
CPC on the ground that the suit had been filed without complying with the
mandatory provisions of Section 12A of the Commercial Courts Act. Before
the Division Bench, a contention was raised on behalf of the defendant that
the plaintiff could not be the sole judge of determining whether the
provisions of Section 12A of the Commercial Courts Act are applicable or
not, as is sought to be done in the present case. It was in this backdrop that
the Court considered the expression, ‘contemplate any urgent interim relief’ ,
as used in Section 12A(1) of the Commercial Courts Act and made the
following observations:
“33. This Court also finds it difficult to accept that a
commercial court is required to determine whether the urgent
interim reliefs ought to have been claimed in a suit for
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determining whether the same is hit by the bar of Section
12A(1) of the Commercial Courts Act, 2015 . The question
whether a plaintiff desires any urgent relief is to be decided
solely by the plaintiff while instituting a suit. The court may
or may not accede to such a request for an urgent interim
relief. But that it not relevant to determine whether the
plaintiff was required to exhaust the remedy of pre-institution
mediation. The question whether a suit involves any urgent
interim relief is not contingent on whether the court accedes
to the plaintiff's request for interim relief.
34. The use of the words “contemplate any urgent interim
relief” as used in Section 12(1) of the Commercial Courts Act,
2015 are used to qualify the category of a suit. This is
determined solely on the frame of the plaint and the relief
sought. The plaintiff is the sole determinant of the pleadings
in the suit and the relief sought .
35. This Court is of the view that the question whether a
suit involves any urgent interim relief is to be determined
solely on the basis of the pleadings and the relief(s) sought by
the plaintiff. If a plaintiff seeks any urgent interim relief, the
suit cannot be dismissed on the ground that the plaintiff has
not exhausted the pre-institution remedy of mediation as
contemplated under Section 12A(1) of the Commercial Courts
Act, 2015. ”
14. A reading of the aforesaid observations makes it abundantly clear that
whether a suit involves any urgent interim relief has to be determined solely
on the basis of pleadings and the reliefs sought by the plaintiff. If a plaintiff
seeks urgent interim relief, the suit cannot be dismissed on the ground of
non-compliance with provisions of Section 12A of the Commercial Courts
Act. The Division Bench goes on to hold that whether a suit involves any
urgent interim relief is not contingent on whether the Court accedes to the
request of the plaintiff for interim relief or not. Therefore, what has to be
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seen are the pleadings in the plaint and the reliefs sought by the plaintiff.
15. The facts of the present case are very similar to those before the Co-
ordinate Bench in Bolt Technology (supra). Like in the present case, the
plaintiff in Bolt Technology (supra), had issued a cease and desist notice
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dated 6 November, 2020 to the petitioner/defendant to which no response
was received. In respect of the notice of opposition filed by the plaintiff
therein against the trademark application of the defendant, the defendant
filed a counter-statement stating that the opposition was frivolous. In this
factual backdrop, the Court in Bolt Technology (supra), held as under:
“17. As per the experience seen in intellectual property cases,
the relief of interim injunction, including at the ex parte stage
and ad interim stage, is extremely important. Such matters do
not merely involve the interest of the plaintiff and the
defendants, which are the contesting parties before the court,
but also involve the interest of the customers/consumers of the
products and services in question. Intellectual property cases
relate to a wide gamut of businesses such as — medicines,
FMCG, food products, financial services, technology, creative
works such as books, films, music, etc. Recent trends also point
towards large scale misuse on the internet. In some cases, due
to misuse of known marks and brands, the consumers are being
duped into parting with large sums of money. The rights of the
parties are affected almost on a daily basis as there is
continuous manufacturing, selling, and offering of services or
goods to the customers. The ambit of urgent interim relief that
may be required to be granted is extremely varied and depends
on the facts of each case. Such reliefs are usually granted by
courts not merely for protection of statutory and common law
rights, but also in order to avoid confusion, deception, unfair
and fraudulent practices, etc. in the marketplace .”
16. In these circumstances, the Court in the aforesaid case held that the
requirement of Section 12 A of the Commercial Courts Act stands satisfied
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on both counts i.e., :
“ i. Firstly, the Plaintiff had attempted an amicable
resolution which was clearly refuted, rejected and
condemned by the Defendants;
ii. Secondly, the Plaintiff has also sought urgent interim
relief before this Court and is entitled to maintain the
present suit . ”
17. In light of the aforesaid findings, what has to be examined in the
present suit is whether the plaint in the present suit contemplated any urgent
interim relief or not. To determine this, a reference may be made to the
relevant part of the plaint, which is set out below:
“37. That the Defendant’s adoption of an identical mark is
dishonest and motivated by a desire to usurp the vast reputation
and goodwill which is enjoyed by the Plaintiff in India but
throughout the world. The Defendant’s unlawful adoption of an
identical mark is calculated to cause loss and injury to the
Plaintiff’s reputation and business and dilute the distinctiveness
of its LIFEIMPRESSIONS and __ mark. The loss and injury to
the Plaintiff’s hard earned reputation being caused/ likely to
be caused by such dilution is not capable of being calculated
in monetary terms. Hence, an immediate order of injunction
restraining the Defendant is imperative. ”
18. The plaintiff has also filed along with the plaint an application for
grant of ex parte interim injunction under Order XXXIX Rules 1 and 2 of
the CPC against the defendant from using the impugned mark. In the said
application also, it has been pleaded that the plaintiff shall ‘ suffer an
irreparable loss and injury, which cannot be compensated in monetary
terms unless an immediate order of injunction is passed ’. The plaintiff also
filed an application seeking exemption from complying with the provisions
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of Section 12A of the Commercial Courts Act on the ground that the
plaintiff is seeking ex parte ad interim injunction against the defendant.
19. In light of these pleadings, the Commercial Court correctly came to
the conclusion that the suit filed by the plaintiff contemplated grant of
urgent interim reliefs against the defendant and therefore, the plaintiff was
not required to exhaust the remedy of pre-institution mediation as
contemplated under Section 12A(1) of the Commercial Courts Act.
20. In view of the discussion above, there is no merit in the present
petition and the same is dismissed.
21. All pending applications stand disposed of.
AMIT BANSAL, J.
MAY 08, 2023
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