Delhi HC Sends UTRACON Trademark Suit Over Alleged Post-Licence Use To Arbitration, Finding Core Dispute Is About Licence Rights

The plaintiff, a Singapore company and registered proprietor of the “UTRACON” marks, had licensed its intellectual property to defendant no. 1 under a Licence Agreement dated 22 March 2012.

The plaintiff alleged that, after the licence expired, defendant no. 1 and related defendants continued using the marks and associated material.

It brought a suit for infringement, passing off and related reliefs; defendant no. 1 sought reference to arbitration under Section 8 of the Arbitration and Conciliation Act, 1996 (“A&C Act”).

The Licence Agreement contained an arbitration clause providing for arbitration under the SIAC Rules, with Singapore as the venue.

The Supreme Court had separately appointed an arbitrator under the Sale of Shares Agreement (“SOS Agreement”), while the Madras High Court had dismissed defendant no. 1’s Section 9 petition.

Section 8 of the A&C Act requires referral where a valid arbitration agreement prima facie exists and the action concerns a matter covered by it; the referral court’s inquiry is limited and should not become a mini-trial (*Vidya Drolia v. Durga Trading Corporation*, (2021) 2 SCC 1; *In Re: Interplay between Arbitration Agreements under the A&C Act and the Indian Stamp Act*, (2024) 6 SCC 1).

For a foreign-seated arbitration, Section 45 requires referral unless the agreement is prima facie null and void, inoperative or incapable of being performed.

Although the grant or registration of intellectual property rights, with erga omnes effect, is non-arbitrable, disputes between identified parties concerning subordinate rights in personam—such as contractual rights to use a mark—may be arbitrated (*Booz Allen & Hamilton Inc. v. SBI Home Finance Ltd.*, (2011) 5 SCC 532; *Vidya Drolia*; *K. Mangayarkarasi v. N.J. Sundaresan*, (2025) 8 SCC 299).

Under *Cox and Kings Ltd. v. SAP India (P) Ltd.*, (2024) 4 SCC 1, whether a non-signatory is bound may be left to the arbitral tribunal where the pleadings and transaction indicate a composite arrangement.

The plaintiff’s claims against defendant no. 1 relied on the Licence Agreement’s post-termination obligations, making the dispute one “regarding” that agreement and within Clause 14’s scope.

Expiry of the licence did not extinguish its arbitration clause, and disputed questions about extension, breach and limitation were not manifestly determinable at the referral stage.

The foreign venue meant Section 45, rather than Section 8, was the applicable provision for the Licence Agreement arbitration; the court found no prima facie basis to invalidate or displace the clause.

The suit did not seek registration, rectification or cancellation of a mark; it concerned the parties’ competing claims to use the marks and would result in relief binding the defendants, not the world at large.

The plaintiff’s own case described defendants nos. 1–7 as a single economic unit, and its pleaded claims against defendants nos. 2–7 derived from or were connected with defendant no. 1’s alleged use.

Whether those non-signatories were bound was for the tribunal to decide.

The Supreme Court’s appointment under the SOS Agreement and the Madras High Court’s Section 9 orders did not decide whether Clause 14 covered this suit.

It allowed I.A. 41705/2024 and referred the parties to arbitration under Clause 14.

The suit and all pending applications were consequently disposed of, without expressing an opinion on the merits.