MALHOTRA INTERNATIONAL PRIVATE LIMITED vs ROHAN MALHOTRA AND ORS.

OCD-1
IN THE HIGH COURT AT CALCUTTA
COMMERCIAL APPELLATE DIVISION
ORIGINAL SIDE

TEMPAPO-IPD/7/2026
IA NO: GA-COM/1/2026

MALHOTRA INTERNATIONAL PRIVATE LIMITED
VS
ROHAN MALHOTRA AND ORS.

BEFORE:
The Hon’ble JUSTICE DEBANGSU BASAK
-AND-
The Hon’ble JUSTICE AJAY KUMAR GUPTA


For the Appellant : Mr. Debnath Ghosh, Sr. Adv.
Mr. Biswaroop Mukherjee, Adv.
Mr. Vishwarup Acharyya, Adv.

For Respondent No. 3 : Mr. Sayantan Roy Chowdhury, Adv.
Mr. Tanmoy Roy, Adv.
Ms. Sohini Mukherjee, Adv.

For I.L.S : Mr. Jaydip Kar, Sr. Adv.
Mr. K. Mondal, Adv.
Mr. A. Pramanick, Adv.

HEARD ON : 13.11.2026
DELIVERED ON : 13.11.2026

DEBANGSU BASAK, J.:-



1. Appeal is at the behest of the plaintiff in a suit for infringement
and passing off and directed against the order dated October 14,
2026 passed in TEMPAPO-IPD 7/2026.
2. By the impugned order, learned Single Judge did not dispense
with pre-institution mediation under Section 12A of the

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Commercial Courts Act, 2015. Learned Single Judge directed
return of the plaint along with the Court fees to the appellant.
Learned Single Judge also consequently, did not consider the
prayer for leave under Clause 14 of the Letters Patent, 1865 and
Order II Rule 2 of the Code of Civil Procedure, 1908. Learned
Single Judge directed the suit to be de-registered from the
database of the High Court.
3. Learned Senior Advocate appearing for the appellant submits that,
the respondents are guilty of infringement and passing off. He
refers to the products of the appellant as well as of the
respondents. He submits that, the appellant manufactures and
sells shaving blades in the name and style of “PANAMA, since
1951. At the very least, the appellant is in such business since
1954, on the basis of the documents disclosed. He submits that,
the respondents commenced marketing of shaving blades in the
same name and style of “PANAMA” from the month of September,
2026. In this regard, he draws the attention of the Court to the
averments made in the plaint at paragraph nos. 58 to 61.

4. Learned Senior Advocate appearing for the appellant submits that,
the appellant possesses a registered trademark in respect of the
word “PANAMA”. He submits that, the respondents filed an
application for rectification. Such rectification application is being
contested on behalf of the appellant. Registrar is yet to take a final
decision on the application for rectification.

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5. Learned Senior Advocate appearing for the appellant submits that,
during the pendency of the application for rectification, the
appellant came across products manufactured and marketed by
nd
the respondents in the 2 week of September, 2026. He draws the
attention of the Court to the products of the respondents. He
submits that, the respondents are using the same word “PANAMA”
to market shaving blades. He submits that, the appellant made out
a case both of infringement as also of passing off.
6. On the aspect of infringement, learned Senior Advocate appearing
for the appellant submits that, till such time, the application for
rectification is decided in favour of the respondents, the appellant
can maintain a suit for infringement. That apart, on the aspect of
passing off, he submits that, since, the appellant is a prior user,
the respondents are guilty of marketing a product in the same
name and style of “PANAMA” and therefore, are guilty of passing
off.
7. Learned Senior Advocate appearing for the appellant submits that,
the learned Single Judge, in the impugned order, noted that,
although, the case for infringement is not made out so as to
sustain a prayer for dispensation under Section 12A of the Act of
2015, nonetheless, there was an arguable case on account of
passing off. He submits that, on both grounds, the learned Trial
Judge, erred in holding so. He submits that, the appellant can
sustain a suit and seek urgent interim relief on the basis of the
claim for infringement as also of passing off.

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8. Learned Senior Advocate appearing for the appellant submits that,
the learned Single Judge did not apply the correct principles in
assessing leave under Section 12A of the Act of 2015. He relies
upon (2022) 10 SCC 1 (Patil Automation Private Limited Vs. Rakheja
Engineers Private Limited) as well as 2023 SCC OnLine SC 1382
(Yamini Manohar Vs. T. K. D. Keerthi) in support of the proposition
that, assessment of requirement to dispense with compliance
under Section 12A of the Act of 2015 is on the basis of materials
made available on record by the plaintiff in the plaint. On such
assessment, the Court needs to arrive at a finding as to whether or
not the plaintiff is entitled to dispensation under Section 12A of
the Act of 2015. He submits that, both Patil Automation Private
Limited (supra) as well as Yamini Manohar (supra) were considered
by a later decision of the Hon’ble Supreme Court reported at (2025)
9 SCC 424 (Dhanbad Fuels Private Limited Vs. Union of India and
Another) .
9. Learned Senior Advocate appearing for the appellant relies upon
(2026) 4 SCC 815 (Novenco Building and Industry A/S Vs. Xero
Energy Engineering Solutions Private Limited and Another.) for the
proposition that, the Court is to look into the plaint pleadings and
supporting documents to decide where urgent interim relief is
genuinely contemplated or not. He submits that, in the instant
case, the learned Trial Judge erred in not applying the ratio laid
down in Patil Automation Private Limited (supra,) Yamini Manohar
(supra), Dhanbad Fuels Private Limited (supra) and Novenco

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Building and Industry A/S (supra) so far as dispensation of leave
under Section 12A of the Act of 2015 is concerned.
10. Learned Senior Advocate appearing for the appellant draws the
attention of the Court to the decision of the Co-ordinate Bench
dated October 12, 2026 passed in APDT/24/2026 (ITC Limited Vs.
SMM Tobacco Private Limited and Ors.) . He submits that, a Special
Leave Petition directed against such decision is pending before the
Hon’ble Supreme Court, where the Hon’ble Supreme Court was
pleased to stay such decision by the order dated November 4, 2026
passed in Special Leave Petition to Appeal (C) No. 37908 of 2026
(ITC Limited Vs. SMM Tobacco Private Limited and Ors.) .
11. Relying upon (2008) 10 SCC 419 (K. Narayanan and Another Vs. S.
Murli) , learned Senior Advocate appearing for the appellant
submits that, contest of the rectification application, per se , did
not give rise to a cause of action of infringement and passing off
since, the appellant did not come across any product in the
market manufactured and marketed by the respondents. The
nd
appellant came across such products only in the 2 week of
September, 2026. The suit was filed on October 9, 2026. He points
out that, an application for injunction was made ready. However,
the Department did not allow filing of the injunction petition
simultaneously/together with the plaint.

12. Although, the respondents need not be heard at the stage where
the present suit is lying, nonetheless, we extended the facility of
hearing the respondents. We did so, in view of the fact that, there

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is an Office Order dated January 20, 2026 issued by the Registrar-
in-Charge, Original Side, High Court at Calcutta with regard to
filing of interlocutory application simultaneously/together with the
plaint. Such Office Order was passed on the basis of an order
dated March 26, 2025 passed in CS No. 38 of 2025 in IA No.
GA/1/2025 by a learned Single Judge and, on consideration of a
representation dated February 7, 2025 submitted by the President,
Incorporated Law Society, a wing of the Members of the Bar of the
High Court at Calcutta.
13. Learned Advocate appearing for the respondents submits that, the
respondents are manufacturing and selling the shaving blades in
the name and style of “PANAMA” since January 20, 2026.
According to him, the appellant as the plaintiff knew of such
manufacture and sale. The plaint was filed in October, 2026.
Therefore, there was a delay in filing the plaint. Consequently, the
Court rightly rejected dispensation under Section 12A of the Act of
2015.
14. In course of hearing of the appeal, our attention was drawn to the
order dated March 26, 2025 passed in CS No. 38 of 2025 in IA No.
GA/1/2025 (Aditya Vikram Birla Vs. Parivesh Shukla and Anr.) . By
such order, a learned Single Judge, directed as follows:
“9. In view of the above, the department is directed
henceforth, unless the plaint is admitted or leave is
taken from this Court for filing interlocutory application
before the presentation of the plaint, the department is
directed not to register any interlocutory application

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without the presentation of the plaint or without the
leave of this Court”
15. Department issued an Office Order dated January 20, 2026
containing inter alia, the following directions:-
“By an order dated 26.03.2025, in CS 38 of 2025, IA
No. GA 01 of 2025, The Hon’ble Justice Krishna Rao
has been pleased to direct, inter alia, as follows:
“…9. In view of the above, the department is directed
henceforth, unless the plaint is admitted or leave is
taken from this Court for filing interlocutory application
before the presentation of the plaint, the department is
directed not to register any interlocutory application
without the presentation of the plaint or without the
leave of this Court…”
4. Hence Central Filing Department is directed to
comply with the above referred order of the Hon’ble
Court.
The Joint Registrar (Admin-I), Original Side and the
Deputy Registrar (Court & Judicial), Original Side are
also requested to ensure the compliance of the Office
Order.”

16. The Office Order dated January 20, 2026 was issued pursuant to
the representation dated February 7, 2025 submitted by the
President, Incorporated Law Society of the High Court at Calcutta.
17. In such conspectus, we requested the learned President,
Incorporated Law Society, High Court at Calcutta to address us on
the representation dated February 7, 2025 and the portion of the
Office Order dated January 20, 2026 as noted above. Learned
President of the Incorporated Law Society of High Court at
Calcutta did so at our request.

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18. In response to a query of the Court, learned President of the
Incorporated Law Society, High Court at Calcutta submitted that,
the representation dated February 7, 2025 was to the contrary of
the ultimate direction issued in the Office Order. In this regard, he
draws the attention of the Court to the representation dated
February 7, 2025 and particularly to paragraph (vii) thereof. He
submits that, the members of the Bar were facing difficulty in
filing injunction petitions or any interlocutory application
simultaneously/together with the filing of the plaint. He submits
that, the Department was not accepting filing of interim
applications along with the plaint which was inimical to the
interest of the litigants and was not in the aid of justice. He
submits that, the direction contained in the Office Order dated
January 20, 2026 following the order dated March 26, 2025
should be set aside. He submits that, the litigant should be
allowed to file such application as they are entitled to file interim
application simultaneously/together with the plaint. In the event,
ultimately, if the plaint is not admitted, then, the interim
applications will also, meet the fate of non-admission of the plaint.
19. Given the nature of the Office Order dated January 20, 2026,
which followed the order dated March 26, 2025 passed in CS No.
38 of 2025 in IA No. GA/1/2025, we invited the opinion of the
learned counsel for the respective parties. We also invited the
learned Senior Advocate appearing for the plaintiff in CS No. 38 of
2025 to address us on the order dated March 26, 2025.

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20. At the Bar, the consensus was that, a litigant should be allowed to
file an interim application simultaneously/together with the plaint.
At the Bar, the consensus was that, the direction contained in the
order dated March 26, 2025 passed in CS No. 38 of 2025 in IA No.
GA/1/2025 and the Office Order dated January 20, 2026 created
unnecessary fetters on the rights of a litigant to approach the
Court. Therefore, the direction to that extent should be set aside.
In fact, the Court should permit filing of interim applications
simultaneously/together with the plaint. The Department should
be directed to accept such filing subject, however, to the just
objections which the Department may raise by way of a writing to
be placed before the Court which is to consider such plaint and
the application.
21. Considering such consensus of the members of the Bar as noted
above and considering the fact that, a litigant is entitled to
approach the Court, subject to just limitations, we deem it
appropriate to set aside the directions contained in the Office
Order dated January 20, 2026 as noted in paragraph 15. The
Department will permit a litigant to file any interim application
simultaneously/together with the filing of the plaint henceforth.
22. The portions of the Office Order dated January 20, 2026 as noted
in paragraph 15, if allowed to stand in the manner and form as it
stands today, is likely to defeat the request for urgent interim relief
as also the grant thereof. In a given facts and circumstances of a
case, a plaintiff may need to approach the Court

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simultaneously/together with the plaint in order to seek that
urgent interim relief.
23. Adverting to the merits of the matter in the present case, we are
concerned presently with refusal to grant leave under Section 12A
of the Act of 2015 and consequently, non-consideration of the
prayer for leave under Clause 14 of the Letters Patent, 1865 and
Order II Rule 2 of the Code of Civil Procedure, 1908.
24. There is no dispute that the subject matter of the disputes in the
plaint falls within Section 2(1)(c) (xvii) of the Act of 2015. Suit is
valued in excess of the Specified Value in terms of Section 7 of the
Act of 2015. The suit was sought to be presented before the
Commercial Division of this Hon’ble Court on October 14, 2026
with the plaint being filed on October 9, 2026. Sum and substance
of the allegations of the appellant as the plaintiff is that, it is
manufacturing and marketing shaving blades in the name and
style of “PANAMA” since 1951. It possesses a registered trademark
in respect of the word “PANAMA” since 1954. The appellant as the
plaintiff came across products of the respondents which infringed
the word mark and is in any event a passing off of the products of
nd
the appellants in the market in the 2 week of September, 2026
whereupon, the appellant approached the Court for urgent interim
relief in the suit for infringement and passing off.

25. Section 12A of the Act of 2015 is mandatory. Such is the view of
the Hon’ble Supreme Court as appearing from Patil Automation
Private Limited (supra,) Yamini Manohar (supra), Dhanbad Fuels

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Private Limited (supra) and Novenco Building and Industry A/S
(supra) .
26. All of these decisions of the Hon’ble Supreme Court further noted
that, in the event, a plaintiff makes out a case for grant of urgent
interim relief then, the plaintiff need not be asked to undertake
mandatory pre-institution mediation under Section 12A of the Act
of 2015.
27. So far as dispensation of compliance with pre institution mediation
under Section 12A of the Act of 2015 is concerned, Dhanbad Fuels
Private Limited (supra) is of the following view:-
“71.4. A suit which contemplates an urgent interim relief
may be filed under the 2015 Act without first resorting
to mediation as prescribed under Section 12-A of the
2015 Act.
71.5. Unlike Section 80(2)CPC, leave of the court is not
required to be obtained before filing a suit without
complying with Section 12-A of the 2015 Act.
71.6. The test for “urgent interim relief” is if on an
examination of the nature and the subject-matter of the
suit and the cause of action, the prayer of urgent interim
relief by the plaintiff could be said to be contemplable
when the matter is seen from the standpoint of the
plaintiff.
71.7. The Courts must also be wary of the fact that the
urgent interim relief must not be merely an unfounded
excuse by the plaintiff to bypass the mandatory
requirement of Section 12-A of the 2015 Act.
71.8. Even if the urgent interim relief ultimately comes
to be denied, the suit of the plaintiff may be proceeded
with without compliance with Section 12-A if the test for
“urgent interim relief” is satisfied notwithstanding the
actual outcome on merits.”

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28. On the same aspect Novenco Building and Industry A/S (supra) is
of the following view:-
“19.2. A plaintiff can be exempted from the requirement
of Section 12-A only when the plaint and the documents
attached with it clearly show a real need for urgent
interim intervention. A wholesome reading of the plaint
and the material annexed to the plaint ought to disclose
the need for urgent relief.
19.3. The court must look at the plaint, pleadings and
supporting documents to decide whether urgent interim
relief is genuinely contemplated. The court may also
look for immediacy of the peril, irreparable harm, risk of
losing rights/assets, statutory timelines, perishable
subject-matter, or where delay would render eventual
relief ineffective.
19.4. A pro forma or anticipatory prayer for urgent relief
used as a device to skip mediation will be ignored and
the court can require the parties to comply with Section
12-A of the Act.
19.5. The court is not concerned with the merits of the
urgent relief, but if the relief sought seems to be
plausibly urgent from the standpoint of the plaintiff the
court can dispense with the requirement under Section
12-A of the Act.”
29. The yardstick for considering as to whether or not, the plaintiff
makes out a case for dispensation under Section 12A of the Act of
2015, as culled out from the authorities noted above are as
follows;
(i) pleadings in the plaint along with the documents
disclosed in the plaint, are to be taken into
consideration from the standpoint of the plaintiff as to

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whether or not, the plaintiff requires urgent interim
relief;
(ii) failure of the plaintiff ultimately to obtain an
interim relief, is not, per se , fatal to the right of the
plaintiff to approach the Court for dispensation under
Section 12A of the Act of 2015; and
(iii) Court, however, must be cautious in order to
ensure that, the prayer for urgent interim relief is not
mis-utilized as a guise for dispensation of mandatory
pre-institution mediation.

30. The Act of 2015 was brought came into being to ensure
expeditious disposal of commercial disputes. The Act of 2015
contemplated establishment of Commercial Courts at the district
level and where a High Court was with Original Jurisdiction, a
Commercial Division. The appeals against the Commercial Court
and the Commercial Division of the High Court would lie to the
Commercial Appellate Division of a High Court.
31. The Act of 2015 delineates the commercial disputes which are to
be considered by the Commercial Court or the Commercial
Division. It also prescribes a Specified Value of the commercial
dispute to be considered by the Commercial Court and the
Commercial Division.

32. Twin test therefore, must be simultaneously satisfied for a
Commercial Court or a Commercial Division to assume jurisdiction
over a matter. The twin tests are that, the dispute involved in the

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matter is a commercial dispute within the meaning of Section
2(1)(c) of the Act of 2015 and that, value of the subject matter of
disputes conforms with the value specified under Section 7 of the
Act of 2015. This assumption of jurisdiction is in addition to the
parameters of jurisdiction that is laid down in the Code of Civil
Procedure, 1908 for a Court to assume jurisdiction over a lis
before it.
33. Section 12A of the Act of 2015 prescribes mandatory pre-
institution mediation unless the plaintiff seeks urgent interim
reliefs. The authorities noted herein namely, Patil Automation
Private Limited (supra,) Yamini Manohar (supra), Dhanbad Fuels
Private Limited (supra) and Novenco Building and Industry A/S
(supra) held that, Section 12A of the Act of 2015 is mandatory.
34. In our understanding, Section 12A of the Act of 2015 specifies a
pre-institution mediation in order to achieve the objective of
mediation that is, preserving the existing relationship between the
contractual parties to the extent possible. Mediation facilitates the
existing contractual relationship to survive which a process of
litigation might otherwise either destroy or at the very least
disturb.
35. Section 2(1)(c) of the Act of 2015 tabulates 21 items which are
commercial disputes within the meaning of the Act of 2015. Out of
all the items tabulated as commercial disputes under Section
2(1)(c) of the Act of 2015, Clause (xvii) stands out in the sense
that, a pre-existing commercial relationship does not exist therein.

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In other words, if the plaintiff is claiming infringement or a passing
off, there is no pre-existing commercial relationship between the
two parties. Anxiety of preservation of a pre existing relationship,
does not, per se , exist in order to require the plaintiff to undertake
pre-institution mediation.
36. Novenco Building and Industry A/S (supra) noted that, an action
alleging continuing infringement of intellectual property rights
involves public interest. It is of the view that, in such kind of
actions, urgency should be assessed in the context of the ongoing
injury and the public interest in preventing deception.

37. At the same breath, we hasten to add that, simplicitor on the
ground that suit is falling under Section 2(1)(c) (xvii), of the Act of
2015 the dispensation of pre institution mediation under Section
12A is not automatic. It will depend on the facts and
circumstances of each case. However, the yardstick for evaluating
request for dispensation under Section 12A of the Act of 2015 will
be different in the case of a suit under Section 2(1)(c) (xvii) as
against the other clauses of Section 2(1)(c).

38. In the facts and circumstances of the present case, the suit is
composite in the sense that, it seeks relief with regard to an
infringement as well as passing off. The authority cited before us
namely, K. Narayanan and Another (supra) suggests that, the
plaintiff cannot approach the Court merely on the basis of an
application for registration unless, the plaintiff finds the offending
goods in the market. In the facts and circumstances of the present

16

case, the appellant as the plaintiff approached the Court when, it
nd
came across products of the respondents in the market in the 2
week of September, 2026.
39. Therefore, there are two dates which fall for consideration so far as
infringement and passing off are concerned. One is January 20,
2026 when, the respondents claims that it entered the market
while the appellant as the plaintiff claims that it came to learn of
the products in September, 2026. This is an issue of fact which
may be decided at the trial in the injunction petition. This issue of
fact need not detain a Court in considering an application under
Section 12A of the Act of 2015 when, the materials disclosed in the
plaint along with the pleadings read from the standpoint of the
plaintiff, makes out a case for dispensation under Section 12A of
the Act of 2015.
40. In this regard, is of the
Novenco Building and Industry A/S (supra)
following view :-
“23. The appellant's prayer for injunction cannot be characterised
as mere camouflage to evade mediation. It is a real grievance
founded on the continuing nature of infringement and irreparable
prejudice likely to be caused by the delay. The court must look
beyond time lag and evaluate the substance of the plea for
interim protection. The insistence of pre-institution mediation in a
situation of ongoing infringement, in effect, would render the
plaintiff remediless allowing the infringer to continue to profit
under the protection of procedural formality. Section 12-A of the
Act was not intended to achieve such kind of anomalous result.”

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“25. For the reasons stated above, we hold that: (i) In actions
alleging continuing infringement of intellectual property rights,
urgency must be assessed in the context of the ongoing injury
and the public interest in preventing deception (ii) Mere delay in
institution of a suit by itself, does not negate urgency when the
infringement is continuing.”
41. A Special Leave Petition directed against the decision of the Co-
ordinate Bench in ITC Limited (supra) granted stay thereof by the
order dated November 4, 2026 passed in such Special Leave
Petition being SLP (C) No. 37908 of 2026. We are bound by the
ratio laid down by the Hon’ble Supreme Court in the authorities as
noted above.
42. In the facts and circumstances of the present case, the
infringement alleged is continuing wrong. Prevention of the
ongoing injury needs consideration by the Court particularly, in
view of public interest in preventing deception. The pleadings in
the plaint as also documents annexed thereto, read from the stand
point of the plaintiff makes out a case for dispensing with the
requirement of pre institution mediation in terms of Section 12A of
the Act of 2015.
43. In such circumstances, the impugned order is set aside. Appellant
as the plaintiff is granted leave under Section 12A of the Act of
2015. Consequently, the plaint is admitted, subject to scrutiny.
The Department will proceed on the basis of the initial suit
number allotted to the plaintiff in this matter.

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44. On the prayer made on behalf of the appellant as the plaintiff, the
respondents will show cause as to why, leave under Clause 14 of
the Letters Patent, 1865 will not be granted.
45. On the prayer made on behalf of the appellant as the plaintiff,
leave under Order II Rule 2 of the Code of Civil Procedure, 1908 is
granted.

46. TEMPAPO-IPD/7/2026 along with connected application are
disposed of, without any order as to costs.
47. We clarify that, we did not enter into the merits of the rival
contentions of the parties so far as the prayer for injunction is
concerned. The rival contentions are kept open to be decided in the
injunction petition.

(DEBANGSU BASAK, J.)
48. I agree.

(AJAY KUMAR GUPTA, J.)





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