Utracon Corporation Pte Ltd vs Ucon Pt Structural System Private Limited Formerly Utracon Structural Systems Private Limited & Ors.
- Court
- Delhi High Court
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
BEFORE
HON'BLE MR. JUSTICE PURUSHAINDRA KUMAR KAURAV
# CNR No. DLHC010481242024
+ CS(COMM) 661/2024, I.A. 35756-35757/2024, I.A. 41704-
41705/2024, I.A. 42215/2024, I.A. 48836/2024, I.A. 48838/2024,
I.A. 49350/2024, I.A. 10445/2025, I.A. 20676/2025, I.A.
27157/2026, I.A. 27163-27165/2026 and I.A. 27173/2026
UTRACON CORPORATION PTE LTD
COMPANY REGISTRATION NO: 200510379E
REGISTERED OFFICE AT: 5 JOO KOON WAY,
SINGAPORE 628944..
.....Plaintiff
( Through: Mr. Abhishek Malhotra, Senior Advocate with Mr.
Himanshu Deora, Mr. Sukrit Kapoor, Ms. Shambhavi Sharma, Ms.
Garima Singh, Ms.Anukriti Trivedi, Mr. Divya Bhushan, Mr. Tanay
Raj and Mr.Kartikay Dutta, Advocates. )
versus
1. UCON PT STRUCTURAL SYSTEM PRIVATE LIMITED
FORMERLY UTRACON STRUCTURAL SYSTEMS PRIVATE
LIMITED
CIN: U45200TN2004PTC072704
THROUGH ITS DIRECTORS:
(I) MR. MUTHUKUMARASWAMY KAMALA KANNAN
[DIN:01941628];
(II) MR. RADHAKRISHNAN MAHENDIRAN [DIN: 06616668];
AND
(III) MR. JAYAKUMAR [DIN: 07386445]
ADDRESS:
164, BASEMENT FLOOR, B5 BLOCK, B4 BLOCK,
SAFDARJUNG ENCLAVE, NEW DELHI, DELHI 110029
ALSO AT:
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
16:04:05
CS(COMM) 661/2024 Page 1 of 42
NEW NO.45, OLD NO.23,
PADMANABA NAGAR 5TH CROSS STREET,
ADYAR NA, CHENNAI, TAMIL NADU 600020
2. MR. MUTHUKUMARASWAMY KAMALA KANNAN
[DIN:01941628];
FLAT 20 PLOT 146 KSHETRA APT, BEACH ROAD,
KALAKSHETRA CLY, BESANT NAGAR,
CHENNAI, TAMIL NADU
INDIA-600090
3. MR. RADHAKRISHNAN MAHENDIRAN
[DIN: 06616668]
6 VANTAGE SPRING
26 SRINIVASA PRM 2ND STREET L P NGR
CHENNAI, TAMIL NADU
INDIA-600041
4. MR. JAYAKUMAR
[DIN: 07386445]
M35, 3-D, RAMANIYAM SHREE MAHALAKSHMI,
THIRUVANMIYUR, CHENNAI TAMIL NADU
INDIA-60004
5. UTRACON STRUCTURAL SYSTEMS PRIVATE LIMITED
CIN: U41002TN2023PTC162180
THROUGH ITS DIRECTORS
(I) MR. KARTHIKEYAN [DIN: 10251701]; AND
(II) MR. BALAJI SELVAMUTHUKUMAR [DIN: 10251702].
ADDRESS:
1/379 1ST CROSS ARUNAGIRI, NAGAR,
NACHIKURICHI, SOMARASAMPETTAI,
TIRUCHIRAPPALLI, SRIRANGAM,
TAMIL NADU, INDIA, 620102
6. UCON MEP ENG PRIVATE LIMITED
[FORMERLY UTRACONINDIA STRUCTURAL SYSTEMS
PRIVATE LIMITED]
CIN: U45209TN2022PTC149023
THROUGH ITS DIRECTORS
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
16:04:05
CS(COMM) 661/2024 Page 2 of 42
(I) MR. ARUNKUMAR BALAJI [DIN: 09458530] AND
(II) MR. KAMALAKANNAN MUTHUKUMARASAMY SRIRAM
[DIN:09396930]
ADDRESS:
P.NO.32, 1ST MAIN ROAD, RAJA NAGAR,
NEELANKARAI, CHENNAI, CHENNAI,
TAMIL NADU, INDIA, 600115.
ALSO AT:
164, BASEMENT FLOOR, B5 BLOCK, B4 BLOCK,
SAFDARJUNG ENCLAVE, NEW DELHI, DELHI 110029.
7. UCON LIVSPACE PRIVATE LIMITED
(FORMERLY UTRACON CONSTRUCTION PRIVATE LIMITED)
CIN: U45207TN2018PTC125620
THROUGH ITS DIRECTORS:
(I) MR. JAYAKUMAR [DIN: 07386445]; AND
(II) MR. SHIVRAM JAYAKUMAR [DIN: 08221219]
ADDRESS:
PLOT NO 32, RAJA NAGAR FIRST MAIN ROAD,
NEELANKARAI, CHENNAI,
TAMIL NADU, INDIA, 600041
8. NAME.COM INC.
HAVING ITS ADDRESS AT:
2500, EAST 2ND AVENUE DENVER, CO 80206 UNITED STATES
.....DEFENDANTS
( Through: Mr.Siddhartha Iyer, Ms. Jaspriya Poply and Mr.Aman
Gupta, Advocates for D-1 to D-4, D-6 and D-7.
Ms. Suriti Chowdhary, Ms. Arushi and Ms. Tanya Sharma, Advocates
for D-5.
None for D-8. )
------------------------------------------------------------------------------------
% Reserved on: 12.10.2026
Pronounced on: 28.10.2026
-----------------------------------------------------------------------------------
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
16:04:05
CS(COMM) 661/2024 Page 3 of 42
JUDGMENT
INDEX
I. FACTUAL MATRIX: ..............................................................................5
II. SUBMISSIONS ON BEHALF OF THE DEFENDANT NO.1/
APPLICANT: ............................................................................................... 10
III. SUBMISSIONS ON BEHALF OF THE PLAINTIFF ....................... 13
IV. ISSUES FOR CONSIDERATION: .................................................... 16
V. ANALYSIS: ........................................................................................ 16
a. Scope of inquiry at the stage of referral: ............................................ 16
b. Whether the subject matter of the suit is covered by an arbitration
agreement? ............................................................................................... 20
c. Effect of order dated 30.04.2026 of the Supreme Court and of the
proceedings under Section 9 .................................................................... 26
d. Section 8 or Section 45 of the A&C Act .............................................. 27
e. Rights in rem v. Rights in personam ................................................... 29
f. International perspective on arbitrability of intellectual property
disputes ..................................................................................................... 34
VI. DIRECTIONS: .................................................................................... 41
I.A. 41705/2024 (under Section 8 of Arbitration & Conciliation Act r/w
Section 151 of CPC)
By way of the present judgment, the Court is called upon to decide the
application filed by defendant no.1 under Section 8 of the Arbitration and
Conciliation Act, 1996 (“A&C Act”) read with Section 151 of the Code of
Civil Procedure, 1908 (“CPC”), seeking reference of the parties to
arbitration in view of the existence of an arbitration agreement between
them.
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
16:04:05
CS(COMM) 661/2024 Page 4 of 42
I. FACTUAL MATRIX:
2. The plaintiff, Utracon Corporation Pvt. Ltd., is a company
incorporated under the laws of Singapore, having its registered office at 5
Joo Koon Way, Singapore. It is engaged in the construction and
infrastructure industry and claims to render, inter alia , post-tensioning and
pre-tensioning services, bridge construction, precasting, structural
retrofitting, heavy lifting and allied construction engineering services.
3. The plaintiff claims to have adopted the trade mark “UTRACON” in
the year 1998 and to have subsequently adopted stylised variants and a logo
thereof (collectively, the “UTRACON Marks”). It claims to be the registered
proprietor of the UTRACON Marks in India under Class 37, dating back to
14.08.2012. It also claims copyright in the artistic features of the
UTRACON logo and in its technical documents, drawings and photographs
of projects.
4. Defendant no.1, formerly known as Utracon Structural Systems
Private Limited and now known as Ucon PT Structural System Private
Limited, was incorporated in Chennai in the year 2004 as a wholly owned
subsidiary of the plaintiff. It is an ex-licensee of the plaintiff. By virtue of
the Licence Agreement dated 22.03.2012 (“Licence Agreement”), defendant
no.1 was granted the right to use the UTRACON Marks and the other
intellectual property rights of the plaintiff pertaining to technical material,
pictures, drawings, designs, etc.
5. Defendant nos.2, 3 and 4 are the directors of defendant no.1.
According to the plaintiff, they have incorporated companies using the
plaintiff’s mark or marks similar thereto. Defendant nos.5, 6 and 7, namely
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
16:04:05
CS(COMM) 661/2024 Page 5 of 42
Utracon Structural Systems Private Limited (incorporated on 24.07.2023),
Ucon MEP ENG Private Limited (formerly Utraconindia Structural Systems
Private Limited, incorporated on 05.01.2022) and Ucon Livspace Private
Limited (formerly Utracon Construction Private Limited, incorporated on
01.11.2018), are stated in the plaint to be affiliated or sister concerns of
defendant no.1.
6. The plaintiff itself avers that defendant nos.1 to 7 function as a “single
economic unit”. Defendant no.8 is the domain name registrar for the
impugned domain name “www.utraconindia.com” and has been impleaded
as a pro forma party.
7. The controversy in the suit relates to (a) the continued use of the
plaintiff’s UTRACON Marks as a trade mark, trade name, trading style,
domain name and social media handles by defendant no.1, despite the
termination of the Licence Agreement; (b) the incorporation of defendant
nos.5, 6 and 7 using the trade mark UTRACON as a part of their corporate
names; and (c) the use of printed material, advertisements, technical
documents and pictures of projects bearing the UTRACON Marks by
defendant nos.1 to 7, despite the termination of the Licence Agreement.
8. It is the case of the plaintiff that the rights under the Licence
Agreement were effective from 01.04.2011, and expired on 31.03.2021 by
efflux of time. On the same date as the Licence Agreement, i.e., on
22.03.2012, the plaintiff, Utracon Management Pvt. Ltd., defendant no.2 and
defendant no.1 had also executed a Sale of Shares Agreement (“SOS
Agreement”).
9. The plaintiff claims that despite the expiry of the Licence Agreement,
defendant no.1 continued with the use of the UTRACON Marks and the
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
16:04:05
CS(COMM) 661/2024 Page 6 of 42
other intellectual property rights. The plaintiff had issued a letter calling
upon defendant no.1 to comply with its obligations under Clause 8.4 of the
Licence Agreement within 30 days of the expiry thereof.
10. The relevant clauses of the Licence Agreement, on which the plaintiff
has founded its case in the plaint, read as under:
“3.5. Assistance and due care: USSI understands that UCPL is in the
process of registering its Trademarks "UTRACON" and its logo
(Trademarks as defined in Annexure A), in India and outside India. USSI,
its Affiliates and associates hereby agrees and undertakes that it will not
register and/or try to register Trademarks and represent in any way that it
has title to or ownership of Trademarks, nor shall do or cause to be done
any act or thing contesting or in any way impairing UCPL's right, title of
ownership and interest in and to Trademarks. Further during or any time
after the Term of this Agreement, USSI agree that it shall refrain from
doing anything which has or might have the effect of endangering the
objectives of this Agreement and/or of discrediting the Trademarks.
3.6. Anytime after the Term of this Agreement, USSI agree to cease using
the Trademarks in any form whatsoever, and agree not to adopt or use any
other trademarks which is confusing with the Trademarks and agree to
promptly deliver up to UCPL all pamphlets, printed materials, advertising
or other material which is marked with the Trademarks. Furthermore,
USSI, their Affiliates, associates, successors, subsidiaries agree and
undertake that they shall not either on their own account or in conjunction
with others directly or indirectly use or represent in any way and in
anywhere that they have title to or ownership of UCPL's Trademarks nor
refrain from doing anything which has or might have the effect of
endangering and/or discrediting the Trademarks. Provided UCPL may
authorise USSI to use or represent the Trademarks by a letter of
authorisation which shall be in writing and carried out by way of
internationally accepted couriers and email or by fax.
xxx xxx xxx
8.1. Term: This Agreement shall be effective for 10 years ("Term") from
the Effective Date. Unless sooner terminated by UCPL or USSI in
accordance with the provisions described below, this Agreement will
continue in force for a period of ten (10) years. Parties hereby agree that
the Agreement is irrevocable and exclusive during the Term. After the
expiry of the Term, the Parties shall thereafter have the option to renew
for one year periods from year to year. A notice of renewal by USSI under
this clause shall be given by registered letter at least six (6) weeks prior to
the effective termination date.
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
16:04:05
CS(COMM) 661/2024 Page 7 of 42
xxx xxx xxx
8.4. Further Rights of UCPL for Termination: Within 30 (Thirty) calendar
days from the date of termination or expiry of this Agreement, USSI
undertakes and agrees to the following: i. USSI will change its registered
company name and the new name be it current or in future, cannot
includes, resemble or similar to the name "UTRACON" or the logo of
UTRACON as defined in Annexure A; ii. shall notes in writing on the
change of company name to all its clients; and iii. shall place a notice in a
publicly National available newspapers on the change of its corporate
name.”
(In the Licence Agreement, “UCPL” refers to the plaintiff and “USSI”
refers to defendant no.1.)
11. Vide letter dated 04.05.2022, defendant no.1 asserted that the licence
had been extended till 31.03.2022 and sought permission to use the name
“UTRACON” for a further period of five years. The plaintiff denies any
such extension. The plaintiff issued a legal notice dated 29.08.2022, to
which defendant no.1 replied on 16.09.2022 and 12.10.2022. The plaintiff
replied on 30.01.2023 and published a trade mark caution notice on
02.02.2023.
12. Defendant no.1, in turn, issued legal notices dated 11.02.2023 and
21.02.2023 alleging that the plaintiff had violated Clause 10.2 of the Licence
Agreement by incorporating an Indian subsidiary, namely Utracon
Engineering Services Private Limited, in the year 2019. The plaintiff replied
on 13.02.2023 and 15.03.2023. In June 2023, defendant no.1 changed its
name to Ucon PT Structural System Private Limited.
13. In April 2024, defendant no.1 initiated pre-institution mediation
before the Tamil Nadu State Legal Services Authority, Chennai, against the
plaintiff and its Indian subsidiary, raising grievances, inter alia , as regards
the termination of the Licence Agreement. The plaintiff participated in the
said mediation without prejudice to its rights and contentions, as recorded in
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
16:04:05
CS(COMM) 661/2024 Page 8 of 42
its letter dated 30.05.2024. On the same date, i.e., 30.05.2024, the plaintiff
issued a cease-and-desist notice to defendant nos.1 to 7.
14. On 30.07.2024, defendant no.1 issued a notice invoking arbitration
under Clause 14.1 of the Licence Agreement. By a notice dated 06.08.2024,
defendant no.1 recalled its notice dated 30.07.2024 insofar as it invoked
arbitration under the Licence Agreement.
15. The plaintiff instituted the present suit, and on 07.08.2024, this Court
passed an ex parte ad interim injunction restraining defendant nos.1 to 7 and
all persons acting on their behalf from using the UTRACON Marks or any
deceptively similar mark, logo, domain name or trade name.
16. In the meantime, defendant no.1 filed a petition under Section 9 of the
A&C Act before the High Court of Judicature at Madras, in which the
plaintiff filed its counter affidavit on 10.09.2024. The said application was
dismissed on 09.10.2024. Vide order dated 02.04.2025 in Review
Application Nos. 4 to 6 of 2025, the High Court of Madras clarified that the
observations in the order of dismissal would not affect or influence the
arbitration.
17. Defendant no.1 then invoked the arbitration clause contained in
Clause 18 of the SOS Agreement by notice dated 27.09.2024 under Section
21 of the A&C Act, and thereafter filed a petition under Section 11 of the
A&C Act before the Supreme Court. The Supreme Court, vide order dated
30.04.2026, appointed a sole arbitrator to adjudicate the disputes arising out
of the SOS Agreement. The said order was taken on record by this Court
vide order dated 06.08.2026. According to defendant no.1, the arbitral
proceedings have commenced where the plaintiff is also participating.
18. Defendant no.1, in its written statement, has denied the averments
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
16:04:05
CS(COMM) 661/2024 Page 9 of 42
made in the plaint and has made extensive averments of its own. At this
stage, all of them may not have any relevance, as the Court is only dealing
with the application under Section 8 of the A&C Act.
II. SUBMISSIONS ON BEHALF OF THE DEFENDANT NO.1/
APPLICANT:
19. Mr. Siddharth Iyer, learned counsel for defendant submits that
defendant no.1 was formerly a wholly owned subsidiary of the plaintiff.
When the plaintiff took a business decision to close its India operations,
defendant no.2, the executive director of defendant no.1, offered to purchase
the plaintiff’s stake and run the company. On 22.03.2012, the parties
executed the SOS Agreement, under which defendant no.2 purchased 90%
of the shares of defendant no.1 from the plaintiff. The expression “Trade
Marks” is defined in the SOS Agreement, and Clause 10.6.1 thereof records
the arrangement under which the plaintiff was to make the Utracon
intellectual property and logo available to defendant no.1. The agreed logo is
reproduced in Schedule E to the SOS Agreement.
20. On the same date, and in furtherance of the SOS Agreement, the
plaintiff and defendant no.1 executed the Licence Agreement, under which
defendant no.1 was permitted to use the plaintiff’s trade marks against
payment of royalty. Recitals A and D of the Licence Agreement expressly
record that it was executed in furtherance of the SOS Agreement. Both
agreements were executed in Chennai, and both contain non-compete and
non-solicitation clauses which restrained the plaintiff from carrying on
activities competing with defendant no.1. The transfer of shares, the
permitted use of the UTRACON Marks, the payment of royalty and the
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
16:04:05
CS(COMM) 661/2024 Page 10 of 42
reciprocal business restrictions, therefore, form one composite transaction.
21. Disputes arose when the plaintiff, contrary to its obligations under the
agreements, commenced a competing business. Defendant no.1 invoked
Section 9 of the A&C Act, and thereafter invoked arbitration under the SOS
Agreement, which has culminated in the appointment of a sole arbitrator by
the Supreme Court on 30.04.2026. Allowing the suit to proceed on the same
underlying transaction would result in parallel adjudication, duplication of
evidence, multiplicity of proceedings and a real possibility of inconsistent
findings on the same contractual rights.
22. The plaintiff concealed the existence of the arbitration clauses, the
pre-institution mediation in Chennai and the invocation of arbitration while
seeking the ex parte injunction dated 07.08.2024.
23. Learned counsel further submits that the existence of the arbitration
agreements is not disputed. The application was filed immediately upon
receipt of summons and before filing the first statement on the substance of
the dispute. The scope of examination under Section 8 is confined to a prima
facie examination of the existence of the arbitration agreement, and non-
arbitrability can be examined only in exceptional situations. Reliance is
1
placed on Vidya Drolia v. Durga Trading Corporation, In Re: Interplay
between Arbitration Agreements under the Arbitration and Conciliation
2
Act, 1996 and the Indian Stamp Act, 1899, Hindustan Petroleum
3
Corporation Ltd. v. Pinkcity Midway Petroleums, Magma Leasing &
4
Finance Ltd. v. Potluri Madhavilata, Sundaram Finance Ltd. v. T.
1
(2021) 2 SCC 1.
2
(2024) 6 SCC 1.
3
(2003) 6 SCC 503.
4
(2009) 10 SCC 103.
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
16:04:05
CS(COMM) 661/2024 Page 11 of 42
5 6
Thankam, and P. Anand Gajapathi Raju v. P.V.G. Raju .
24. The plaintiff’s claim against defendant no.1 cannot be examined
independently of the SOS Agreement and the Licence Agreement. The use
of the UTRACON name, logo and marks by defendant no.1 was
contemplated by the SOS Agreement and regulated by the Licence
Agreement. Merely describing the claims as infringement, passing off or
copyright claims does not alter their contractual foundation. Reliance is
7
placed on Ameet Lalchand Shah v. Rishabh Enterprises, Cox and Kings
8
Ltd. v. SAP India (P) Ltd ., and National Skill Development Corporation v.
9
Surya Wires (P) Ltd. .
25. The plaint does not contain a single prayer relating to the grant,
registration or cancellation of a trade mark. The dispute concerns the inter se
right of the plaintiff and defendant no.1 to use the marks under the
agreements executed between them and is, therefore, an action in personam .
10
Reliance is placed on Sanjay Mehra v. Sharad Mehra, Hero Electric
11
Vehicles (P) Ltd. v. Lectro E-Mobility (P) Ltd. and Liberty Footwear Co.
12
v. Liberty International .
26. The plaintiff cannot avoid its admitted agreement to arbitrate by
impleading additional defendants and framing common or consequential
reliefs against them. Section 8 permits an application by a party to the
arbitration agreement or by any person claiming through or under such
5
(2015) 14 SCC 444.
6
(2000) 4 SCC 539.
7
(2018) 15 SCC 678.
8
(2024) 4 SCC 1.
9
2026 SCC OnLine SC 1798.
10
2023 SCC OnLine Del 2205.
11
2021 SCC OnLine Del 1058.
12
2023 SCC OnLine Del 83.
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
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CS(COMM) 661/2024 Page 12 of 42
party. Reliance is placed on Cox and Kings (supra) and on the decision of a
13
Division Bench of this Court in Canara Bank v. Sanjeev Sharma, to
contend that where the pleadings and reliefs disclose a composite
transaction, the agreements must be read as a whole, and the cause of action
cannot be split between the civil court and the arbitral tribunal.
27. The arbitration agreement survives the expiry or termination of the
underlying contract, as held in Magma Leasing (supra). Any contention
based on the expiry of the Licence Agreement, therefore, does not exhaust
the arbitration agreement.
III. SUBMISSIONS ON BEHALF OF THE PLAINTIFF
28. Per contra , Mr. Abhishek Malhotra, learned senior counsel appearing
on behalf of the plaintiff, has opposed the application submits that the suit
has been filed against all the defendants collectively and not against
defendant no.1 alone. There is no agreement, arbitral or otherwise, between
the plaintiff and defendant nos.2 to 8. The causes of action against them are
distinct and separate and cannot be said to arise from the Licence Agreement
or the SOS Agreement.
29. The suit is based upon the plaintiff’s statutory and common law rights
in the registered and famous UTRACON Marks and its other intellectual
property. The Licence Agreement and its termination merely provide the
background of the relationship between the plaintiff and defendant no.1.
Disputes relating to infringement and passing off affect rights in rem and are
non-arbitrable. Infringement suits cannot be filed before any court inferior to
the District Court, which shows that such a suit can only be resolved by a
13
2025 SCC OnLine Del 4959.
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By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
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CS(COMM) 661/2024 Page 13 of 42
competent court.
30. Reliance is placed on J. Nithyanandham v. M/s M.V.S. Gramany &
14
Sons, wherein the High Court of Madras, in a suit for infringement and
passing off against a contracting party and a non-signatory, rejected the
application under Section 8 and observed as under:
“An action for infringement and passing off is not an action in relation to
subordinate rights relating to a trademark. It is an action asserting a right
in rem, but the proceedings are in personam. [...] The position prevailing
throughout the country today is that actions for infringement and passing
off are only adjudicated by jurisdictional District Courts and High Courts
and not by arbitral tribunals.”
31. The entire subject matter of the suit must be covered by the
arbitration agreement before a reference can be made under Section 8. The
plaintiff cannot be asked to split its cause of action. The causes of action and
reliefs against defendant no.1 and the non-signatory defendants, particularly
defendant no.5, which was incorporated on 24.07.2023, i.e., more than two
years after the expiry of the Licence Agreement, arise out of a joint and
collusive conspiracy and cannot be segregated. Reliance is placed on
15
Tirupati Vancom Pvt. Ltd. v. James Glendye & Co. Pvt. Ltd. .
32. The Supreme Court, while disposing of the petition under Section 11
of the A&C Act, noted that the reference before it was limited to the
arbitration clause contained in Clause 18.2 of the SOS Agreement and
clarified that the scope of the arbitration shall be strictly confined to the
disputes arising out of the SOS Agreement. It was further directed that the
said order and the arbitration proceedings would have no impact whatsoever
on the present suit.
14
2026 SCC OnLine Mad 2281.
15
2026 SCC OnLine Cal 1598.
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Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:29.10.2026
16:04:05
CS(COMM) 661/2024 Page 14 of 42
33. Clause 10.6 of the SOS Agreement merely acknowledges and
preserves the pre-existing ownership of the plaintiff in its trade mark and
logo. It does not create, grant or regulate any licence. The tort proceedings
for infringement and passing off cannot be dragged into the arbitration
clause of the SOS Agreement merely by reference to a generic preservation
clause.
34. The Licence Agreement and the SOS Agreement are independent of
each other. The two agreements contain mutually exclusive and conflicting
arbitration clauses, one providing for arbitration under the SIAC Rules at
Singapore and the other for arbitration at Chennai under the A&C Act. The
Licence Agreement is strictly bilateral, whereas the SOS Agreement is a
multi-party contract involving a third party. The SOS Agreement was an
executed share purchase transaction, whereas the Licence Agreement was a
determinable ten-year commercial licence. Neither agreement makes the
other subject to it. Recital D of the Licence Agreement refers to the SOS
Agreement only by way of background.
35. No invocation presently subsists under the Licence Agreement, which
expired on 31.03.2021. Even on defendant no.1’s plea of extension till
31.03.2022, the period of three years to invoke arbitration has expired. Any
contractual claim under the Licence Agreement is, therefore, time-barred.
36. Learned senior counsel lastly submits that the parties to the suit are
not identical to the signatories of either arbitration clause. Defendant nos.3
to 8 are not signatories to the SOS Agreement, and defendant nos.2 to 7 are
non signatories to the Licence Agreement. All the defendants are necessary
and proper parties, without whom no complete and effective decree can be
passed. Defendant no.1 has selectively invoked Section 8 with reference to
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the SOS Agreement, which provides for a Chennai seat, in order to
circumvent the scrutiny under Section 45 of the A&C Act in respect of the
Licence Agreement, which provides for a Singapore seat.
IV. ISSUES FOR CONSIDERATION:
37. On the basis of the submissions made and arguments advanced, the
following issues arise for consideration:
37.1 What is the scope of the inquiry which this Court is required to
undertake while deciding an application seeking reference of the parties to
arbitration?
37.2 Whether the subject matter of the suit is covered by an arbitration
agreement between the parties, and if so, which agreement?
37.3 What is the effect of the order of the Supreme Court dated 30.04.2026
and of the orders passed by the High Court of Madras in the proceedings
under Section 9 of the A&C Act?
37.4 Whether the dispute raised in the suit is non-arbitrable on the ground
that it relates to rights in rem ?
37.5 Whether the impleadment of defendants who are not signatories to the
arbitration agreement, and the alleged inseverability of the causes of action,
prevent a reference?
V. ANALYSIS:
a. Scope of inquiry at the stage of referral:
38. Section 8(1) of the A&C Act, as amended by Act 3 of 2016, reads as
under:
“8. Power to refer parties to arbitration where there is an arbitration
agreement.--(1) A judicial authority, before which an action is brought in
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a matter which is the subject of an arbitration agreement shall, if a party
to the arbitration agreement or any person claiming through or under him,
so applies not later than the date of submitting his first statement on the
substance of the dispute, then, notwithstanding any judgment, decree or
order of the Supreme Court or any court, refer the parties to arbitration
unless it finds that prima facie no valid arbitration agreement exists.”
39. The language of the provision is mandatory. The Supreme Court in P.
Anand Gajapathi Raju (supra) held that the language of Section 8 is
peremptory and that it is, therefore, obligatory for the Court to refer the
parties to arbitration. The Court further observed that once the parties are so
referred, nothing remains to be decided in the original action. This was
reiterated in Hindustan Petroleum Corporation Ltd . (supra), wherein it was
held that it is mandatory for the Civil Court to refer the dispute to an
arbitrator, and that the courts below ought not to have proceeded to examine
the applicability of the arbitration clause which question will have to be
raised before the concerned Arbitral Tribunal. In Magma Leasing (supra),
the Supreme Court described Section 8 as being in the form of legislative
command and held that no option is left to the court once its conditions are
met.
40. The Constitution Bench of seven Judges in SBP & Co. v. Patel
16
Engineering Ltd., noticed the complementary nature of Sections 8 and 11
of the A&C Act. The said observations have been extracted by the Supreme
Court in Vidya Drolia (supra) as under:
“16. We may at this stage notice the complementary nature of Sections 8
and 11. Where there is an arbitration agreement between the parties and
one of the parties, ignoring it, files an action before a judicial authority
and the other party raises the objection that there is an arbitration clause,
the judicial authority has to consider that objection and if the objection is
found sustainable to refer the parties to arbitration. The expression used
16
(2005) 8 SCC 618.
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in this section is “shall” and this Court in P. Anand Gajapathi Raju v.
P.V.G. Raju and in Hindustan Petroleum Corpn. Ltd. v. Pinkcity Midway
Petroleums has held that the judicial authority is bound to refer the matter
to arbitration once the existence of a valid arbitration clause is
established. Thus, the judicial authority is entitled to, has to and is bound
to decide the jurisdictional issue raised before it, before making or
declining to make a reference.”
41. Relying upon the aforesaid, the Supreme Court in Vidya Drolia
(supra) held that the scope of the Court’s jurisdiction under Sections 8 and
11 of the A&C Act is similar, and that in an application under Section 8, the
court has the advantage of the specific details pleaded in the suit. The
relevant observations read as under:
“We are clearly bound by the dictum of the Constitutional Bench judgment
in Patel Engineering Ltd. that the scope and ambit of court's jurisdiction
under Section 8 or 11 of the Arbitration Act is similar. An application
under Section 11 of the Arbitration Act need not set out in detail the
disputes or the claims and may briefly refer to the subject matter or broad
contours of the dispute. However, where judicial proceedings are initiated
and pending, specific details of the claims and disputes are normally
pleaded and, therefore, the court or the judicial authority has the
advantage of these details.”
42. The approach which a civil court must adopt on an application under
17
Section 8 was explained in A. Ayyasamy v. A. Paramasivam, , as noted in
Vidya Drolia (supra), in the following words:
“13. Arbitration Act is filed, the approach of the civil court should be not
to see whether the court has jurisdiction. It should be to see whether its
jurisdiction has been ousted. There is a lot of difference between the two
approaches.”
43. In Vidya Drolia (supra), the Supreme Court also emphasised that the
language of Sections 8 and 11 is peremptory, and that the arbitration
17
(2016) 10 SCC 386.
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agreements must be enforced:
“71. ... In terms of the mandate of Section 89 of the Civil Procedure Code
and the object and purpose behind the Arbitration Act and the mandatory
language of Sections 8 and 11, the mutually agreed arbitration clauses
must be enforced. The language of Sections 8 and 11 of the Arbitration Act
are peremptory in nature.”
44. The Supreme Court in Vidya Drolia (supra) further held that the
review by the referral court is a prima facie review, meant to weed out
manifestly non-arbitrable and non-existent claims, and that the court is not
to conduct a mini-trial. The Court summed up the approach as “ when in
doubt, do refer ”. The Constitution Bench of seven Judges in In Re:
Interplay (supra) has thereafter reiterated that the referral court is to confine
itself to the prima facie existence of the arbitration agreement, and that the
arbitral tribunal, by virtue of Section 16 of the A&C Act, is the preferred
first authority to determine questions of its own jurisdiction. The same
principle has been followed in SBI General Insurance Co. Ltd. v. Krish
18
Spinning .
19
45. Recently, in K. Mangayarkarasi v. N.J. Sundaresan, which also
arose out of a commercial suit for injunction against the use of trade marks,
the Supreme Court reiterated the nature of the obligation under Section 8 in
the following words:
“23. ... Once there is an arbitration agreement between the parties, a
judicial authority before whom an action is brought covering the subject-
matter of the arbitration agreement is under a positive obligation to refer
parties to arbitration by enforcing the terms of the contract. There is no
element of discretion left in the court or judicial authority to obviate the
legislative mandate of compelling parties to seek recourse to arbitration.”
18
(2024) 12 SCC 1.
19
(2025) 8 SCC 299 : 2025 INSC 687.
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46. Therefore, the inquiry before this Court is a limited one. The Court is
to see (a) whether the application has been filed by a party to the arbitration
agreement or a person claiming through or under it, before the submission of
the first statement on the substance of the dispute; (b) whether, prima facie ,
a valid arbitration agreement exists; and (c) whether the subject matter of the
suit is the subject of that arbitration agreement and is not ex facie non-
arbitrable.
b. Whether the subject matter of the suit is covered by an arbitration
agreement?
47. The plaintiff describes defendant no.1 as its ex-licensee. The
controversy, is the continued use of the “UTRACON” Marks despite the
termination of the License Agreement. The plaintiff has relied upon Clause
8.4 of the Licence Agreement, which obliges defendant no.1 to change its
corporate name, and upon Clauses 3.5 and 3.6 thereof, which oblige
defendant no.1 and its affiliates, associates and subsidiaries to cease use of
the marks after the term and not to claim any title to them.
48. Defendant no.1, on the other hand, claims that the licence stood
extended, that the plaintiff itself breached the non-compete covenant under
the agreements, and that its right to use the UTRACON name flowed from
the commercial arrangement under which the plaintiff exited its Indian
business. Whether defendant no.1 had any surviving right to use the marks,
whether the licence was extended, what obligations survived the term, and
whether either side breached the agreements are, therefore, the core
questions that require adjudication.
49. The Licence Agreement expressly records that the same was executed
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in furtherance of the SOS Agreement. Recitals A to D of the Licence
Agreement read as under:
“RECITALS
A. WHEREAS UCPL, Utracon Management Pte Ltd ("UMPL") Mr.
Muthukumaraswamy Kamalakannan ("KK") and USSI have entered in to
Memorandum of Understanding ("MOU") dated 1st day of October 2011
and a Sale Of Shares Agreement whereby UCPL and UMPL agreed to
transfer its 14,00,000 (Fourteen Lakhs) and 2,00,000 (Two Lakhs) equity
shares of USSI respectively to KK for the sum of INR 60,000,000 and INR
10,000,000 respectively.
B. WHEREAS, UCPL either directly or through one or more of its
Affiliates ("UCPL Group"), has, during the course of its activities,
acquired worldwide recognition of the name "Utracon" and its corporate
logo (as defined in Annexure A) and certain unique skills and expertise in
practicing and implementing engineering ideas to support consultants and
contractors in construction projects. Further, UCPL with in-depth
knowledge of both design and practical construction, provides the value to
projects from the conceptual stage to the construction stage of structures;
C. WHEREAS, USSI acknowledges and recognizes UCPL's Intellectual
Property Rights (as defined herein after) and Trademarks "Utracon"
including its corporate logo (as defined in Annexure A) and USSI hereby
agrees to avail the Intellectual Property Rights including but not limited to
the Trademarks from UCPL with the commitment that the License Fees
shall be paid in accordance with the provisions of this Agreement;
D. WHEREAS, UCPL acknowledges and recognizes that USSI in
furtherance of the Sale of Shares Agreement is now entering into this
License Agreement for the Term specified herein in relation to all the
Intellectual Property Rights, present and future, of UCPL used/to be used
by USSI, including but not limited to such rights in UPS Post tensioning
systems, Trade-name and corporate logo.”
50. Recital D reinforces that the Licence Agreement was executed in
furtherance of the SOS Agreement. The Licence Agreement is essentially in
relation to all the intellectual property rights, present and future, of the
plaintiff used or to be used by defendant no.1, including such rights in the
UPS post-tensioning systems, the trade name and the corporate logo.
51. Clause 14 of the Licence Agreement pertains to the applicable law
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and the mechanism for resolution of disputes. It provides that, in the event
the parties are unable to resolve a dispute through the stated procedure, the
dispute shall be submitted to final and binding arbitration in accordance with
the scheme agreed therein. For the sake of clarity, Clause 14 is extracted in
its entirety as under:
“14. APPLICABLE LAW AND MEDIATION
14.1 USSI and UCPL agree to negotiate in good faith to resolve any
dispute between them regarding this Agreement. If any dispute is not
resolved through discussions, then UCPL or USSI can issue written notice
requesting commencement of reconciliation. Within 30 (thirty) days from
such notice, UCPL shall appoint 1 (one) representative and USSI shall
nominate the other representative. These representatives shall, within 30
(thirty) days of a written request by either UCPL or USSI to call such a
meeting, meet in person and shall attempt in good faith to resolve the
dispute ("Reconciliation Meeting"). UCPL or USSI shall, if appropriate,
also consider the appointment of a mediator to assist in the resolution of
any dispute. UCPL or USSI shall not commence legal or arbitration
proceedings unless 30 (Thirty) Business days' notice has been given to the
other. In the event that UCPL or USSI are unable to resolve a dispute
through the foregoing procedures, the dispute shall be submitted to final
and binding arbitration, in accordance with the following:
a. Such arbitration shall be in accordance with the Singapore
International Arbitration Centre Rules for the time being in force which
rules are deemed to be incorporated by reference to this Section. All
proceedings of such arbitration shall be in the English language. The
venue of arbitration shall be Singapore.
b. The arbitration tribunal shall consist of 1 (One) member ("Arbitrator")
who shall be appointed by USSI and UCPL mutually, in accordance with
Singapore International Arbitration Rules Arbitration Laws. In the event
of failure of the appointment of the Arbitrator, USSI and UCPL hereby
agree to have the Arbitrator nominated by the Singapore International
Arbitration Centre.
c. Arbitration awards rendered shall be final and binding and shall not be
subject to any form of appeal.
d. UCPL and USSI shall use their best efforts to effect the prompt
execution of any such awards and shall render whatever assistance as may
be necessary to this end, including, if necessary, compliance with the
enforcement procedures stipulated in the United Nations Convention on
the Recognition and Enforcement of Foreign Arbitral Awards.
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e. In the event any dispute occurs and when any dispute is under
arbitration, except for the matters under dispute, USSI and UCPL shall
continue to exercise their other respective rights and fulfill their other
respective obligations under this Agreement.
14.2 This Agreement will be governed by the laws of the India, without
regard to the conflict of laws provisions thereof.”
52. It is, thus, noted that there exists a binding arbitration clause between
the plaintiff and defendant no.1, which covers any dispute between them
regarding this agreement. A dispute as to whether an ex-licensee may
continue to use the licensed marks after the term, and whether it has
complied with the post-term obligations under Clauses 3.5, 3.6 and 8.4, is
plainly a dispute regarding the Licence Agreement.
53. The SOS Agreement dated 22.03.2012 also contains a similar clause,
i.e., Clause 18 thereof, which is extracted as under:
“18. GOVERNING LAW & JURISDICTION
This Agreement shall be governed by, enforced and construed in
accordance with the laws of India and the courts at Chennai shall have
exclusive jurisdiction over any disputes between the parties with respect to
the subject matter hereof.
18.1 The Parties agree that only the Courts at Chennai shall have
jurisdiction to entertain any proceedings related to this Agreement
whether during pendency, or after expiry/termination. No other Court
shall have jurisdiction to entertain any proceedings related to this
Agreement.
18.2 Any Dispute which is not settled after an attempt by the parties to the
Dispute at amicable negotiations shall be resolved by final and binding
arbitration held in Chennai, India in accordance with the provisions of the
(Indian) Arbitration and Conciliation Act, 1996, as amended from time to
time (the "Arbitration Act"). The language of such arbitration proceedings
shall be English.
18.3 The Disputes shall be referred to a sole arbitrator if the Parties agree
upon a sole arbitrator and failing such agreement, to three arbitrators,
one to be appointed by each party and the third to be jointed appointed by
the two arbitrators appointed by the Parties.”
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54. The plaintiff is correct in contending that the two clauses are different.
One provides for arbitration under the SIAC Rules at Singapore, and the
other for arbitration at Chennai under the A&C Act. However, the difference
does not advance the plaintiff’s case. The question under Section 8 is not
whether the two clauses can be merged, but whether the matter brought
before the Court is the subject of an arbitration agreement between the
parties. In the opinion of this Court, the subject matter of the present suit is
squarely covered by Clause 14 of the Licence Agreement, which binds the
plaintiff and defendant no.1. Whether, and to what extent, the disputes under
the two agreements overlap is a matter for the arbitral tribunal(s) to consider.
55. The plaintiff has contended that defendant no.1 has sought reference
only under Clause 18 of the SOS Agreement. A perusal of the application,
however, shows that defendant no.1 has specifically pleaded both the
Licence Agreement and the SOS Agreement, has extracted Clause 14 of the
Licence Agreement as well as Clause 18 of the SOS Agreement, and has
asserted that both agreements envisage the resolution of disputes by
arbitration. The written submissions of defendant no.1 pray for reference of
the parties in accordance with the arbitration agreements. The application
also contains a general prayer for such further orders as the Court may deem
fit. The plaintiff has replied to the application on both clauses and has
addressed the Court on Clause 14 at length. It is, therefore, not a case where
the plaintiff has been taken by surprise. The duty of the Court under Section
8 is to see whether the matter before it is the subject of an arbitration
agreement, and it is not confined to the particular clause on which the
applicant lays greater emphasis. Nor does the conduct of defendant no.1 in
recalling its notice dated 30.07.2024 efface the arbitration agreement
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contained in Clause 14 of the Licence Agreement.
56. The recall of a notice of invocation is not a waiver or abandonment of
the arbitration agreement itself. More importantly, the arbitration agreement
binds the plaintiff as much as defendant no.1. The plaintiff, which is a party
to Clause 14, has chosen to bring the very dispute that clause covers before
this Court. Therefore, the foundation of the plaintiff’s case rests on the
Licence Agreement; it would not permit the plaintiff to rely on the Licence
Agreement to found its cause of action, and at the same time to avoid the
dispute resolution clause in the very same agreement, i.e., selective reliance
is impermissible.
57. Similarly, the expiry of the Licence Agreement by efflux of time does
not render the arbitration clause inoperative. In Magma Leasing (supra), the
Supreme Court held that upon termination of the contract, the arbitration
clause does not get perished nor rendered inoperative, and that it survives for
resolution of disputes arising out of the contract. The plaintiff’s own claim is
based on obligations which, according to it, operate after the term of the
Licence Agreement.
58. The plaintiff has then argued that any claim under the Licence
Agreement is time-barred and is, therefore, deadwood. The Court is not
persuaded to accept the said contention at this stage. Defendant no.1 has set
up a plea of extension of the licence till 31.03.2022. The plaintiff itself has
pleaded that the cause of action is recurring and continuing and that it
continues till the defendants are restrained. The claims of the plaintiff, which
relate to continuing use of the marks after the term, are not ex facie barred.
Questions of limitation, which turn on disputed facts, are pre-eminently for
the arbitral tribunal. The referral court may decline a reference only where
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the claim is manifestly and ex facie time-barred, which is not the position
here.
c. Effect of order dated 30.04.2026 of the Supreme Court and of the
proceedings under Section 9
59. The Supreme Court, vide order dated 30.04.2026, has appointed the
sole arbitrator to adjudicate the disputes arising out of the SOS Agreement,
and the arbitration proceedings are pending. According to the plaintiff, the
Supreme Court noted that the reference before it was limited to Clause 18.2
of the SOS Agreement, clarified that the scope of the arbitration shall be
strictly confined to the disputes arising out of the SOS Agreement, and
further directed that the said order and the arbitration proceedings shall have
no impact whatsoever on the present suit.
60. Though the Supreme Court has clarified that the appointment of the
arbitrator would be without prejudice to the present suit, the said
clarification cuts both ways. It means that the order of the Supreme Court
cannot be read as a determination that the present suit must go to arbitration.
Equally, it cannot be read as a determination that the present suit is not
referable to arbitration. The Supreme Court was dealing with a petition
under Section 11 of the A&C Act with reference to the SOS Agreement
alone.
61. The question as to whether the subject matter of the present suit is
covered by the arbitration agreement contained in the Licence Agreement
was neither before the Supreme Court nor decided by it. Therefore, the
present application is being taken up without being influenced by the
appointment of the arbitrator by the Supreme Court qua the SOS
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Agreement.
62. For the same reason, the dismissal of the petition under Section 9 of
the A&C Act by the High Court of Madras on 09.10.2024 has no bearing on
the present application. The said order was concerned with interim
protection, and the High Court of Madras has itself clarified in the review
order dated 02.04.2025 that the observations made therein would not affect
or influence the arbitration.
63. This Court has, therefore, independently examined the Licence
Agreement dated 22.03.2012 and finds that there exists an independent
arbitration clause, i.e., Clause 14, which binds the parties to the agreement
and which covers the subject matter of the suit.
d. Section 8 or Section 45 of the A&C Act
64. The plaintiff has contended that defendant no.1 has invoked Section 8
to avoid the scrutiny of Section 45 of the A&C Act in respect of the Licence
Agreement. Clause 14.1 of the Licence Agreement provides for arbitration
under the SIAC Rules with Singapore as the venue, and the plaintiff is a
company incorporated in Singapore. If the arbitration contemplated by
Clause 14.1 is one seated outside India, the reference would, strictly
speaking, fall under Section 45 in Part II of the A&C Act, since Part I
applies where the place of arbitration is in India, and Section 8 is not one of
the provisions extended to foreign-seated arbitrations by the proviso to
Section 2(2).
65. Section 45 of the A&C Act reads as under:
“45. Power of judicial authority to refer parties to arbitration.--
Notwithstanding anything contained in Part I or in the Code of Civil
Procedure, 1908 (5 of 1908), a judicial authority, when seized of an action
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in a matter in respect of which the parties have made an agreement
referred to in section 44, shall, at the request of one of the parties or any
person claiming through or under him, refer the parties to arbitration,
unless it prima facie finds that the said agreement is null and void,
inoperative or incapable of being performed.”
66. Both provisions use the expression “shall” and mandate reference, at
the request of a party or any person claiming through or under it, subject
only to a prima facie examination of the arbitration agreement. Section 45
is, more stringent in its mandate, as it operates notwithstanding anything
contained in Part I or in the CPC. The plaintiff has not been able to point out
how the arbitration agreement in Clause 14 is, even prima facie , null and
void, inoperative or incapable of being performed. The objections of the
plaintiff regarding expiry of the licence, limitation and the conduct of
defendant no.1 do not go to the validity of the arbitration agreement.
67. It is well settled that the mere mention of a wrong provision in an
application does not denude the court of a power which it otherwise
20
possesses . Therefore, whether the reference is made under Section 8 or
under Section 45 of the A&C Act, the outcome would remain the same. The
question as to the juridical seat of the arbitration contemplated by Clause
14.1, and the rules and law that would govern it, are matters which the
arbitral tribunal constituted in terms of Clause 14.1 is competent to decide.
This Court does not express any opinion thereon. The contention of the
plaintiff that defendant no.1 has sought to circumvent Section 45 is,
therefore, of no consequence.
20
N. Mani v. Sangeetha Theatres , (2004) 12 SCC 278.
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e. Rights in rem v. Rights in personam
68. The principal objection of the plaintiff is that a suit for infringement
of trade mark and copyright and for passing off asserts rights in rem , and is
therefore not arbitrable. The Court has to examine the aspect of non-
arbitrability of the dispute only to a limited extent, namely, whether the
dispute is ex facie non-arbitrable, as in the exceptional situations where the
statute has conferred exclusive jurisdiction on a court or a public forum and
arbitration is not possible. Such position is affirmed by the Supreme Court in
Vidya Drolia (supra), In Re: Interplay (supra), Hindustan Petroleum
Corporation Ltd. (supra), Magma Leasing (supra), Sundaram Finance Ltd .
(supra) and P. Anand Gajapathi Raju (supra).
69. The distinction between rights in rem and rights in personam was
explained by the Supreme Court in Booz Allen & Hamilton Inc. v. SBI
21
Home Finance Ltd., as under
“35. The Arbitral Tribunals are private fora chosen voluntarily by the
parties to the dispute, to adjudicate their disputes in place of courts and
tribunals which are public fora constituted under the laws of the country.
Every civil or commercial dispute, either contractual or non-contractual,
which can be decided by a court, is in principle capable of being
adjudicated and resolved by arbitration unless the jurisdiction of the
Arbitral Tribunals is excluded either expressly or by necessary
implication. ...
xxx xxx xxx
37. ... A right in rem is a right exercisable against the world at large, as
contrasted from a right in personam which is an interest protected solely
against specific individuals. Actions in personam refer to actions
determining the rights and interests of the parties themselves in the
subject-matter of the case, whereas actions in rem refer to actions
determining the title to property and the rights of the parties, not merely
among themselves but also against all persons at any time claiming an
interest in that property. Correspondingly, a judgment in personam refers
21
(2011) 5 SCC 532.
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to a judgment against a person as distinguished from a judgment against a
thing, right or status and a judgment in rem refers to a judgment that
determines the status or condition of property which operates directly on
the property itself.
38. Generally and traditionally all disputes relating to rights in personam
are considered to be amenable to arbitration; and all disputes relating to
rights in rem are required to be adjudicated by courts and public
tribunals, being unsuited for private arbitration. This is not however a
rigid or inflexible rule. Disputes relating to subordinate rights in
personam arising from rights in rem have always been considered to be
arbitrable.”
70. The said distinction was further elaborated by the Supreme Court in
Vidya Drolia (supra). The Court cautioned that the labels of rights in rem
and rights in personam may not by themselves be decisive, because a right
in rem often results in an enforceable right in personam . Significantly, the
Supreme Court held in terms that a claim for infringement of copyright
against a particular person is arbitrable. The relevant paragraph reads as
under:
“48. A judgment in rem determines the status of a person or thing as
distinct from the particular interest in it of a party to the litigation; and
such a judgment is conclusive evidence for and against all persons
whether parties, privies or strangers of the matter actually decided. Such a
judgment "settles the destiny of the res itself" and binds all persons
claiming an interest in the property inconsistent with the judgment even
though pronounced in their absence. By contrast, a judgment in personam,
"although it may concern a res, merely determines the rights of the
litigants inter se to the res". Distinction between judgments in rem and
judgments in personam turns on their power as res judicata, i.e. judgment
in rem would operate as res judicata against the world, and judgment in
personam would operate as res judicata only against the parties in
dispute. Use of expressions "rights in rem" and "rights in personam" may
not be correct for determining non-arbitrability because of the inter-play
between rights in rem and rights in personam. Many a times, a right in
rem results in an enforceable right in personam. Booz Allen & Hamilton
Inc. refers to the statement by Mustill and Boyd that the subordinate rights
in personam derived from rights in rem can be ruled upon by the
arbitrators, which is apposite. Therefore, a claim for infringement of
copyright against a particular person is arbitrable, though in some
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manner the arbitrator would examine the right to copyright, a right in
rem. Arbitration by necessary implication excludes actions in rem.”
71. The Supreme Court in Vidya Drolia (supra) then propounded the
following fourfold test for determining when the subject matter of a dispute
is not arbitrable:
“76.1. ... (1) when cause of action and subject matter of the dispute relates
to actions in rem, that do not pertain to subordinate rights in personam
that arise from rights in rem.
(2) when cause of action and subject matter of the dispute affects third
party rights; have erga omnes effect; require centralized adjudication, and
mutual adjudication would not be appropriate and enforceable;
(3) when cause of action and subject matter of the dispute relates to
inalienable sovereign and public interest functions of the State and hence
mutual adjudication would be unenforceable; and
(4) when the subject-matter of the dispute is expressly or by necessary
implication non-arbitrable as per mandatory statute(s).
These tests are not watertight compartments; they dovetail and overlap,
albeit when applied holistically and pragmatically will help and assist in
determining and ascertaining with great degree of certainty when as per
law in India, a dispute or subject matter is non-arbitrable. Only when the
answer is affirmative that the subject matter of the dispute would be non-
arbitrable.”
72. While applying the aforesaid test, the Supreme Court observed as
under:
“77. ... Similarly, grant and issue of patents and registration of
trademarks are exclusive matters falling within the sovereign or
government functions and have erga omnes effect. Such grants confer
monopoly rights. They are non-arbitrable. ...”
73. It is, thus, the grant and registration of a trade mark, being a
sovereign function with erga omnes effect, which is non-arbitrable. Any
doubt as to whether the aforesaid observation excludes all trade mark
disputes from arbitration has been set at rest by the Supreme Court in K.
Mangayarkarasi (supra). In that case, a suit had been filed seeking a
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permanent injunction against the use of certain trade marks, and the
defendant had sought reference to arbitration on the basis of arbitration
clauses contained in the trade mark assignment deeds. The Commercial
Court allowed the application under Section 8, the High Court affirmed the
same, and the Supreme Court declined to interfere, observing as under:
“13. ... the grant and issue of patents and registration of trademarks are
matters that fall within the sovereign or government functions and have
erga omnes effect. ... Prima facie, the nature of disputes sought to be
raised by the petitioners cannot be considered as actions in rem.
14. The assumption that all matters relating to trademarks are outside the
scope of arbitration is plainly erroneous. ... Undisputedly, these disputes,
although, involving the right to use trademarks, are arbitrable as they
relate to rights and obligations inter se the parties to a licence
agreement.”
74. This Court, in Liberty Footwear Co. (supra), was dealing with a suit
for infringement and passing off filed by a partnership firm against the sole
proprietorship of one of its partners. The plaintiff therein had contended that
the suit, having been brought under the Trade Marks Act, 1999, could not be
referred to arbitration, and that under Section 134 of the said Act, a suit for
infringement cannot be instituted before a court inferior to a District Court.
75. Rejecting the said contention, this Court held that Section 134
“ merely provides that such claim cannot be adjudicated upon by a Court
inferior to the Court of a District Judge ” and that the Trade Marks Act
“ does not create any specific forum as far as suits for infringement of a
trade mark are concerned ”. It was held that the suit concerned the
enforceability of rights in personam , flowing out of a right in rem , against
someone who claims (whether rightly or wrongly) a right to use the
trademark under or through the registered proprietor. The Court further held
that “The plaintiff cannot breach the arbitration agreement merely by
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framing the suit as one under the Trade Marks Act”. The application under
Section 8 was, accordingly, allowed, the parties were referred to arbitration
in accordance with the arbitration clause contained in the partnership deed,
and the suit was disposed of.
76. Similarly, in Hero Electric Vehicles (P) Ltd . (supra), this Court was
dealing with a suit seeking injunction against the use of the trade mark
“HERO”, where the rights of the parties flowed from a family settlement
agreement and a trade mark and name agreement. This Court held that the
controversy, in the present case, does not relate to the grant or registration of
trademarks, that the right asserted by the plaintiffs is not a right that
emanates from the Trade Marks Act, and that the right asserted was clearly
against the F-4 group, and the F-4 group alone, and not against the whole
world. The parties were, accordingly, referred to arbitration.
77. The same view has been followed by this Court in Golden Tobie Pvt.
22
Ltd. v. Golden Tobacco Ltd ., and in Sanjay Mehra (supra), wherein an
application under Section 8 was allowed in a suit alleging infringement of
trade marks and copyright, where the rights asserted flowed from a family
settlement and a sale deed executed in furtherance thereof. The High Court
of Bombay, in Eros International Media Ltd. v. Telemax Links India Pvt.
23
Ltd., had taken a similar view, holding that actions for infringement and
passing off between identified parties are actions in personam .
78. The plaintiff has also argued that the remedies under the Trade Marks
Act, 1999 and the Copyright Act, 1957 are statutory and must be adjudicated
by a competent court. In this regard, the observations of the Supreme Court
22
2021 SCC OnLine Del 3029.
23
2016 SCC OnLine Bom 2179.
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in Vidya Drolia (supra) on the effect of mandatory law are apposite:
“68. ... Application of mandatory law to the merits of the case do not imply
that the right to arbitrate is taken away. Mandatory law may require a
particular substantive rule to be applied, but this would not preclude
arbitration. Implied non-arbitrability requires prohibition against waiver
of jurisdiction, which happens when a statute gives special rights or
obligations and creates or stipulates an exclusive forum for adjudication
and enforcement. An arbitrator, like the court, is equally bound by the
public policy behind the statute while examining the claim on merits. ...
There is a general presumption in favour of arbitrability, which is not
excluded simply because the dispute is permeated by applicability of
mandatory law. ...”
79. The Supreme Court in A. Ayyasamy (supra), as noted in Vidya Drolia
(supra), also held as under:
“43. Hence, the allegations of criminal wrongdoing or of statutory
violation would not detract from the jurisdiction of the Arbitral Tribunal
to resolve a dispute arising out of a civil or contractual relationship on the
basis of the jurisdiction conferred by the arbitration agreement.”
80. Section 134 of the Trade Marks Act, 1999 and Section 62 of the
Copyright Act, 1957 merely specify the Court, within the hierarchy of civil
Courts, before which a suit for infringement is to be instituted. They do not
create a special right or a special forum with powers beyond those of an
ordinary civil court, and they do not prohibit the parties from agreeing to
resolve their disputes by arbitration. They do not, therefore, satisfy the
fourth test in Vidya Drolia (supra).
f. International perspective on arbitrability of intellectual property
disputes
81. The position in India is consistent with the approach adopted in other
jurisdictions. The English commentary of Mustill and Boyd, which was
noticed in Booz Allen (supra) and approved in Vidya Drolia (supra), states
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the principle in the following words, as extracted by the Supreme Court:
“... Mustill and Boyd in their 2001 Companion Volume have observed that
axiomatically rights that are valid as against the whole world cannot be a
subject of private arbitration, although subordinate rights in personam
derived from such rights may be ruled upon by the arbitrators. Therefore,
rights under a patent license may be arbitrated but the validity of the
underlying patent may not be arbitrable. Similarly, an arbitrator who
derives its power from a private agreement between A and B, plainly has
no jurisdiction to bind a third person by a decision on whether the patent
is valid or not, for no one else has mandated him to make the decision and
the decision which attempts to do so would be useless.”
82. The Supreme Court of Canada in Desputeaux v. Éditions Chouette
24
(1987) Inc ., was dealing with a dispute regarding ownership of copyright
in a character in a series of children books, which arose under a contract
between the author and the publisher. The Court of Appeal of Quebec had
held that the Federal Court and the provincial courts had exclusive
jurisdiction under Section 37 of the Canadian Copyright Act, and that an
arbitrator could not rule on copyright. Reversing the said view, the Supreme
Court of Canada held that Section 37 only identifies which court in the
judicial system would hear a copyright matter and does not exclude
arbitration, being sufficiently general to include arbitration procedures. It
further held that the arbitral award is not binding on third parties who were
not involved in the proceeding, and that the possible effect of a decision on
third parties was not a ground to exclude arbitration of copyright disputes.
The reasoning is in pari materia with Section 134 of the Trade Marks Act,
1999 and Section 62 of the Copyright Act, 1957.
83. In the United States, 35 U.S.C. § 294(a) expressly permits a contract
involving a patent or any right under a patent to contain a provision
24
2003 SCC 17 : [2003] 1 SCR 178.
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requiring arbitration of any dispute relating to patent validity or
infringement arising under the contract. Section 294(c) provides that an
award by an arbitrator shall be final and binding between the parties to the
arbitration, but shall have no force or effect on any other person.
84. Singapore, being the venue chosen by the parties in Clause 14.1 of the
Licence Agreement, has gone a step further. By the Intellectual Property
(Dispute Resolution) Act, 2019, Part 2A was introduced in the International
Arbitration Act, 1994. Section 26B(1) thereof declares that the subject
matter of an IPR dispute is capable of settlement by arbitration as between
the parties to the dispute. Section 26B(3) clarifies that such a dispute is not
incapable of settlement by arbitration only because a law of Singapore or
elsewhere confers jurisdiction on a specified court or entity to decide the
dispute and does not mention arbitration.
85. The common thread running through these authorities is that the
infirmity of arbitration lies only in its inability to bind persons who are not
parties to it. An arbitral tribunal cannot grant, register, rectify or invalidate a
trade mark so as to bind the world at large. But where the dispute is between
identified parties, regarding the right of one of them to use the mark of the
other, the award operates in personam , and there is no impediment to its
adjudication by the arbitral tribunal.
86. The plaint, read as a whole, does not seek the grant, registration,
rectification or cancellation of any trade mark. The plaintiff’s registration is
not under challenge. The aspect of the defendants allegedly using the
plaintiff’s trade mark beyond the expiry of the Licence Agreement is
essentially an issue between identified parties, and there is no impediment in
deciding the said issue by an arbitrator. The reliefs of injunction, delivery
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up, damages, rendition of accounts and transfer of the domain name are all
directed against the defendants, and the decree, if any, would bind only
them. The claim is founded upon the contractual arrangement between the
parties. The dispute is, thus, essentially in personam and does not relate to
rights in rem .
87. The plaintiff has also sought a mandatory injunction directing the
defendants to withdraw their trade mark applications (prayer (e)), and a
declaration that the UTRACON mark is a well-known trade mark in India
(prayer (k)). Prayer (e) is again a relief directed against the defendants
personally and does not require any adjudication by the Registrar of Trade
Marks. As regards prayer (k), a declaration of well-known status is not the
foundation of the suit, and it is not a relief without which the dispute
between the parties cannot be resolved.
88. The core of the suit is the post-term use of the marks by an ex-
licensee and its affiliates. A party cannot avoid an arbitration agreement
merely by adding a relief which, by itself, may not be arbitrable. As held in
Liberty Footwear (supra), the plaintiff cannot breach the arbitration
agreement merely by the manner in which it frames the suit. The plaintiff
remains at liberty to seek a determination of the well-known status of its
mark before the Registrar of Trade Marks in accordance with Rule 124 of
the Trade Marks Rules, 2017, and nothing in this judgment shall come in the
way of the same.
89. Insofar as the decision of the High Court of Madras in J.
Nithyanandham (supra) is concerned, the observations relied upon by the
plaintiff themselves recognise that, though an infringement action asserts a
right in rem , the proceedings are in personam . In any case, this Court is
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bound by the decisions of the Supreme Court in Vidya Drolia (supra) and K.
Mangayarkarasi (supra), and is in agreement with the consistent view of
this Court in Hero Electric (supra) and Liberty Footwear (supra). The said
decision, therefore, does not come to the aid of the plaintiff.
90. The last objection of the plaintiff is that defendant nos.2 to 8 are not
parties to the Licence Agreement, that the causes of action against them are
distinct, and that the suit cannot be bifurcated. Reliance is placed on
25
Sukanya Holdings (P) Ltd. v. Jayesh H. Pandya, wherein the Supreme
Court held that “ The words „a matter‟ indicates entire subject matter of the
suit should be subject to arbitration agreement ” and that “ bifurcation of the
subject matter of an action brought before a judicial authority is not
allowed ”.
91. The Supreme Court in Vidya Drolia (supra) explained the rationale
behind the decision in Sukanya Holdings (supra) in the following words:
“28. ... Bifurcation in such cases would result in a suit being divided into
two parts, one being decided by the arbitral tribunal, and the other by the
court or judicial authorities. This would defeat the entire purpose and
inevitably delay the proceedings and increase cost of litigation, cause
harassment and on occasions give rise to conflicting judgments and orders
by two different fora. ...”
92. However, the Supreme Court in Vidya Drolia (supra) also clarified
that the said decision has to be read along with the subsequent decision in
26
Chloro Controls India (P) Ltd. v. Severn Trent Water Purification Inc.,
and in light of the 2015 amendment:
“31. ... Further, the decision in Sukanya Holdings (P) Ltd. has to be read
along with subsequent judgment of this Court in Chloro Controls India
Private Limited v. Severn Trent Water Purification Inc. and Others. The
effect of amendment by Act 3 of 2016 with retrospective effect from
25
(2003) 5 SCC 531.
26
(2013) 1 SCC 641.
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20.10.2015 on Sections 8 and 11 of the Arbitration Act with the stipulation
that the amendments apply notwithstanding any earlier judgment has been
examined by us under the heading Who Decides Non-arbitrability.”
93. After the amendment, Section 8(1) expressly enables not only a party
to the arbitration agreement, but also any person claiming through or under
him, to seek reference, and it operates notwithstanding any judgment, decree
or order of any court. In Ameet Lalchand Shah (supra), the Supreme Court
was dealing with four inter-connected agreements for a single solar power
project, not all of which contained an arbitration clause and not all of which
were signed by all the parties. The Supreme Court held that all the four
agreements are interconnected, that the dispute could be resolved only by
referring all the four agreements and the parties thereon to arbitration, and
that in such a case, all the parties can be covered by the arbitration clause in
the main agreement. The Court noticed that Section 8(1) has been
clarified/amplified to include persons claiming through or under such a
party, and that the amendments are expressed to apply notwithstanding any
prior judicial precedent.
94. The Constitution Bench in Cox and Kings (supra) has held that a non-
signatory may be bound by an arbitration agreement where its conduct, and
the composite nature of the transaction, show a mutual intention of the
parties to bind it. The Supreme Court further held that in such cases, the
referral court should leave it for the arbitral tribunal to decide whether the
non-signatory is bound by the arbitration agreement. In K. Mangayarkarasi
(supra), the Supreme Court also found that the arbitration clauses contained
in the trade mark assignment deeds bound a respondent who was not a
signatory to those deeds.
95. In the instant case, the plaintiff itself has pleaded that defendant nos.1
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to 7 function as a “single economic unit”, that defendant nos.5, 6 and 7 are
affiliates or sister concerns of defendant no.1, and that defendant nos.2 to 4
are directors of defendant no.1 who, in collusion, incorporated defendant
nos.5 to 7. According to the plaintiff’s, defendant no.1 has also stated in its
written statement that defendant nos.1, 6 and 7 form part of the same
economic unit. The plaintiff’s case against defendant nos.2 to 7 is that they
are continuing, through and in collusion with defendant no.1, the very use
which the Licence Agreement prohibits after its term.
96. Clauses 3.5 and 3.6 of the Licence Agreement, on which the plaintiff
relies, themselves cast obligations upon the affiliates, associates, successors,
subsidiaries of defendant no.1. The rights, if any, which defendant nos.2 to 7
may claim to use the “UTRACON” mark are, on the plaintiff’s own
showing, derived from defendant no.1. They are, therefore, prima facie
persons claiming through or under defendant no.1. Defendant no.8 is only a
proforma party, against whom no independent cause of action is pleaded,
and the relief sought against it is merely consequential.
97. It is, thus, clear that the dispute against all the defendants arises out of
the same alleged use of the “UTRACON” marks and the same contractual
arrangement. The case of the plaintiff that the causes of action against all the
defendants are so interconnected that they cannot be segregated, in fact,
supports the conclusion that the entire subject matter of the suit should go to
arbitration. The principle in Sukanya Holdings (supra), and the decision in
Tirupati Vancom Pvt. Ltd. (supra) relied upon by the plaintiff, are aimed at
avoiding the bifurcation of a suit between two fora. That concern does not
arise where the entire subject matter of the suit is referred to arbitration. A
plaintiff which is bound by an arbitration agreement cannot be permitted to
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defeat the same by impleading the affiliates and directors of the other
contracting party and claiming common or consequential reliefs against
them. Whether defendant nos.2 to 7 are ultimately bound by the arbitration
agreement is a matter which the arbitral tribunal shall decide, as held in Cox
and Kings (supra).
98. In view of the aforesaid discussion, this Court is of the considered
opinion that;
98.1 The existence of the arbitration agreement contained in Clause 14 of
the Licence Agreement dated 22.03.2012 between the plaintiff and
defendant no.1 is not in dispute, and the plaintiff has not been able to show
that it is, even prima facie , invalid, inoperative or incapable of being
performed.
98.2 The suit has arisen out of the Licence Agreement, which was executed
in furtherance of the SOS Agreement, and the subject matter of the suit is
the subject of the arbitration agreement contained in Clause 14 thereof.
98.3 The dispute raised in the suit relates to subordinate rights in personam
arising between identified parties and is not ex facie non-arbitrable.
98.4 The order of the Supreme Court dated 30.04.2026 and the orders
passed in the proceedings under Section 9 of the A&C Act do not preclude
the present reference.
VI. DIRECTIONS:
99. I.A. 41705/2024 is allowed.
100. The parties are referred to arbitration in accordance with Clause 14 of
the Licence Agreement dated 22.03.2012.
101. It is clarified that nothing stated hereinabove shall be construed as an
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expression of opinion on the merits of the case. The observations made in
this judgment are only prima facie and are confined to the decision of the
present application.
102. The application stands disposed of in the aforesaid terms.
CS(COMM) 661/2024, I.A. 35756-35757/2024, I.A. 41704/2024, I.A.
42215/2024, I.A. 48836/2024, I.A. 48838/2024, I.A. 49350/2024, I.A.
10445/2025, I.A. 20676/2025, I.A. 27157/2026, I.A. 27163-27165/2026
and I.A. 27173/2026
103. In view of the order passed in I.A. 41705/2024, the present suit, along
with all pending applications, stands disposed of.
(PURUSHAINDRA KUMAR KAURAV)
JUDGE
OCTOBER 28, 2026
aks/NK .
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