ITC LIMITED vs SMM TOBACCO PRIVATE LIMITED AND ORS.

OIPD 2
IN THE HIGH COURT AT CALCUTTA
INTELLECTUAL PROPERTY RIGHTS DIVISION
ORIGINAL SIDE


Present :
THE HON’BLE JUSTICE ARINDAM MUKHERJEE


IP (COM) No.10 of 2026

ITC LIMITED
Vs.
SMM TOBACOO PRIVATE LIMITED & ORS.


For the Plaintiff : Mr. Rudraman Bhattacharya, Sr. Adv.
Mr. Sarathi Dasgupta, Adv.
Mr. K.K. Pandey, Adv.
Mr. Manosij Mukherjee, Adv.
Mr. Aayush Sinha, Adv.
Mr. Naman Chowdhury, Adv.
Mr. Bhavesh Garodia, Adv.
..... Advocates



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Heard on : 8 September, 2026

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Judgment on : 8 September, 2026


Arindam Mukherjee, J:

1) The plaint on being filed in the Central Filing Department of this
Court has been allotted a suit number and has been placed before the
Court under the heading “Presentation of Plaint” for the plaint being
presented and admitted for institution of the suit.
2) The proposed plaintiff, (hereinafter for the sake of convenience
referred to as ‘the plaintiff’) by presenting the plaint, subject to the
same being admitted intends to institute a suit for infringement and
passing off by seeking dispensation of the formalities under Section
12 A of the Commercial Courts Act, 2015 (hereinafter referred to as
‘the 2015 Act’).
3) The learned Counsel for the plaintiff refers to various paragraphs in
the plaint to persuade the Court to grant dispensation of the
formalities under Section 12A of the 2015 Act.
4) It is no more res integra that the provisions of Section 12A of the 2015
Act are mandatory in view of the decision of the Supreme Court
rendered in [ Patil Automation Private Ltd. & Ors. v. Rakheja
Engineers Private Ltd., ] (2022) 10 SCC 1. The law is also well-
settled now that on the basis of the averments in the plaint, the Court
on being satisfied that the plaintiff contemplates urgent interim relief,
the mandatory formalities under Section 12A of the 2015 Act can be
dispensed with at the discretion of the Court. As to how a Court is to
consider the plaintiff(s) contemplation of urgent interim relief has
been explained by the Supreme Court in the judgment reported in
2026(4) SCC 815 : AIR 2026 SC 5158 [Novenco Building &
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Industry A/S v. Xero Energy Engg. Solutions (P) Ltd. & Anr.]. The
authority available to the Court for the scrutiny of the plaint at the
time of presentation of plaint is provided in the judgment of the
Supreme Court rendered in ( Yamini Manohar v. T.K.D. Keerthi )
[2024(5) SCC 815].
5) On a perusal of the plaint, for the limited scrutiny as has been
directed by the Supreme Court in Yamini Manohar (supra) it
appears from the paragraph 27 of the plaint that “In or around the
third week of July 2026, the Plaintiff received specific and credible
intelligence through its dedicated field investigators, revealing that
unauthorised and illicit counterfeiting operations were actively being
carried out in certain parts of Muzaffarpur, Bihar”. “ The information
specifically indicated that defendant no. 1 was carrying on such
counterfeiting activities equipped with mechanised cigarette making,
packing and allied machinery”. Pursuant thereto, through discreet
inquiries and sustained monitoring, the plaintiff conclusively
identified that defendant no. 1 engaged in the business of
manufacturing, processing and trading in cigarette and tobacco
products from its facility in Muzaffarpur, Bihar was orchestrating and
operating these illicit manufacturing and distribution activities.
6) It further appears from paragraph 28 of the plaint, that the plaintiff
made an First Information Report (in short, FIR) in terms whereof
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search and seizure operations were conducted on 22 July, 2026
which reveal the illegal and wrongful activities of the defendant no. 1.
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The plaintiff, thereafter has provided the details of recovery of goods
and articles in course of search and seizure.
7) The plaintiff then refers to paragraphs 78, 79 and 85 of the pliant to
seek dispensation of the mandatory formalities under Section 12A of
the 2015 Act. By referring to the averments in these paragraphs the
plaintiff says that it has suffered continuing wrong at the instance of
the defendants and in particular defendant no. 1 and as such in
connection with its intellectual property rights and as such is entitled
to dispensation with the formalities of Section 12A of the 2015 Act in
view of the ratio laid down in Novenco (supra) .
8) The issue which fell for consideration in Novenco (supra) has been
stated in page 823, paragraph 20 of the said judgment which reads
as follows:
“The issue which arises for consideration in this appeal is
whether a suit alleging continuing infringement of patent and
design rights, accompanied by a prayer for interim injunction,
can be said to contemplate urgent relief within the meaning of
Section 12-A of the Act, notwithstanding certain delay in its
institution ”

9) Before one goes into the findings in Novenco (supra) it should not be
lost sight of the fact that each case is decided on the facts of such
case. In Novenco (supra) when the matter was considered by the
Supreme Court in October, 2025 an year and half had elapsed from
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the date of filing of the suit which was instituted on 4 June, 2024.
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The appeal before the High Court was decided on 13 November,
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2024. The Hon’ble Supreme Court by an order dated 7 February,
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2025 directed the plaintiff (appellant before the Supreme Court) to
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proceed with mediation. The mediation failed on 23 June, 2026.
10) The main logic in the Novenco (supra ) judgment appears from
paragraphs 21 and 22 the relevant portions whereof are set out
hereunder:-
“21. The subject matter of the present action is continuing
infringement of intellectual property. Each act of manufacture,
sale, or offer for sale of the infringing product constitutes a
fresh wrong and recurring cause of action. It is well-settled in
law that mere delay in bringing an action does not legalise an
infringement and the same cannot defeat the right of the
proprietor to seek injunctive relief against the dishonest user”

“22. From the standpoint of the appellant, each day of
continuing infringement aggravates injury to its intellectual
property and erodes its market standing. The urgency,
therefore, is inherent in the nature of the wrong and does not lie
in the age of the cause but in the persistence of the peril. The
court cannot be unmindful of the fact that intellectual property
disputes are not confined to the private realm. When imitation
masquerades as innovation, it sows confusion among
consumers, taints the marketplace and diminishes faith in the
sanctity of the trade. The public interest, therefore, becomes the
moral axis upon which the urgency turns. Therefore, the public
interest element, need to prevent confusion in the market and to
protect consumers from deception further imparts a colour of
immediacy to the reliefs sought.”

In this background the Hon’ble Supreme Court in paragraph 24 of the
said report has held as follows:
“24. The learned Single Judge [Novenco Building &
Industry A/S v. Xero Energy Engg. Solutions (P) Ltd., 2024
SCC OnLine HP 4266] as well as the Division Bench
[Novenco Building & Industry A/S v. Xero Energy Engg.
Solutions (P) Ltd., 2024 SCC OnLine HP 5795] of the High
Court erred in construing the test for urgent relief
enumerated in Section 12-A of the Act, inasmuch as the
courts have proceeded to examine the entitlement of the
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appellant to urgent relief based on the merits of the case
rather than looking at the urgency as is evident from the
plaint and the documents annexed thereto from the
standpoint of the plaintiff. The High Court has proceeded
on the premise that lapse of time between the appellant's
discovery of infringement and filing of suit negated the
element of urgency. Such an approach, in our considered
view, is contrary to the principles laid down by the
decisions of this Court. The High Court has also failed to
take into account that the present action is one of the
continuous infringement of intellectual property.”


11) In the light of the observations made in paragraphs 21, 22 and 24
as in Novenco (supra) if we analyse the facts of the instant case it will
be seen that the delay is not more than a month and the cause of
action, if any arises out of infringement of intellectual property of the
plaintiff coupled with passing off but the striking dissimilarity is that
the plaintiff immediately upon coming to know about the illicit
manufacturing and distribution activities of the defendant no. 1
approached the police authorities. Both under the Trademark Act,
1999 (hereinafter referred to as 1999 Act) and Copyrights Act, 1957
(hereinafter referred to as 1957 Act) there is a measure against
applying false trademark and trade description or for providing
services to which false trade mark or false trade description is
applied. Sections 103 and 104 of the 1999 Act while Section 63 of the
1957 Act provides for the same. This right is available to a party in
addition to the right to bring a civil action for infringement and
passing off.
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12) The plaintiff, therefore, was specifically aware about the illegal and
wrongful acts of the defendant no. 1 in July, 2026. The plaintiff
therefore at that point of time could have either gone to police
authorities with a complaint invoking the provisions of 1999 Act or
could have approached the competent Civil Court by filing a suit
alleging infringement and passing off. The plaintiff also could have at
the same time maintained the criminal and civil action since such
remedy are independent of each other. The plaintiff, however, chose
one of the remedies available to it by lodging an FIR with the police
authorities which led to search and seizure by keeping the other
remedy in abeyance though the same was available. The plaintiff at
that juncture on its own volition did not approach the competent Civil
Court on the apprehension that its goods and services were being
infringed or passed off though the right to sue had for the first time
accrued in July, 2026 in favour of the plaintiff. A continuing cause of
action as held in Novenco (supra) is available to an owner of an
intellectual property. This revives the cause of action and keeps the
same alive but a suit is required to be filed in case of urgency when
the right to sue first accrues.
13) The plaintiff by relying upon Novenco (supra) has tried to project a
picture that in case of intellectual property where delay in
approaching the Court is not fatal, the Court has to exercise its
discretion to dispense with the formalities of 12A of 2015 Act as it
always require an urgent interim relief. I am unable to accept such
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restricted interpretation of the mandatory provisions of Section 12A of
2015 Act by agreeing with such submission of the plaintiff. This name
interpretation will lead to a conclusion that in case of suits relating to
intellectual property matters irrespective of the accrual of the right to
sue accruing for the first time a suit can be instituted by dispensing
with the provisions of Section 12A of 2015 Act whenever the plaintiff
approaches the Court. This will also render the mandatory provisions
of Section 12A of the 2015 Act otiose in case of intellectual property
matters which is not the legislative intention when suits relating to
intellectual property right has been specifically included in the 2015
Act.
14) The judgment of Novenco (supra) has been considered by a
majority of High Courts but there has been explanation to the ratio
laid down in Novenco (supra) which is not in substantive deference to
the view expressed in Novenco (supra) . The notable amongst such
judgments is a Division Bench judgement of this Court reported in
2026 SCC Online Cal 12021 (Goodfaith Holding (P) Ltd. v.
Supreme Wood Productys (P) Ltd.) and a Division Bench judgment
of Bombay High Court reported in 2026 SCC Online Bombay 9115
(High Point Supply Co. LLC v. Agati Healthcare (P) Ltd.) .
15) In the aforesaid facts and circumstances when the plaintiff has
absolutely chosen a specific avenue out of the two roads
simultaneously available to the plaintiff for the selfsame cause, I am
unable to grant dispensation of the mandatory provisions of Section
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12A of the 2015 Act as the ratio laid down in Novenco (supra) is not
applicable to the facts of the instant case.
16) Since the plaint has been only filed in the Central Filing Section
and has only been allotted a number, the plaint does not actually
enter the records of the Court unless presented and admitted, the
plaint is directed to be returned for being filed after completion of the
pre-suit mediation formalities along with Court fees with leave to use
the same Court fees for instituting the suit on selfsame cause if
needed so arise after the pre-suit mediation subject to complying with
the provisions of applicable law. The department, after return of the
plaint on completing the requisite formalities shall de-register the suit
number allotted so that the matter is not shown to be pending.

Urgent photostat certified copy of this judgment and order, if applied
for, be supplied to the parties on priority basis after compliance with
all necessary formalities.



(Arindam Mukherjee, J)
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