ITC’s trademark suit sent for pre-suit mediation as Calcutta HC refuses waiver after company first pursued police action

The plaintiff presented a plaint alleging infringement of intellectual property rights and passing off and sought dispensation of the pre-institution mediation requirement under Section 12A of the Commercial Courts Act, 2015.

The plaintiff pleaded that, in or around the third week of July 2026, it received information regarding alleged counterfeit cigarette-manufacturing activities by Defendant No. 1 at Muzaffarpur, Bihar.

Following an FIR, search and seizure operations were conducted on 22 July 2026, during which allegedly infringing goods, machinery and related articles were recovered.

The plaintiff relied on the continuing nature of the alleged infringement and sought urgent interim relief without first completing pre-institution mediation.

The plaint had been allotted a suit number in the Central Filing Department but had not yet been presented and admitted for institution.

1. Whether the plaintiff was entitled to dispense with the mandatory pre-institution mediation requirement under Section 12A of the Commercial Courts Act, 2015 on the basis that the suit contemplated urgent interim relief.

2. Whether the principle that intellectual-property infringement constitutes a continuing wrong, and that each fresh act of infringement gives rise to a recurring cause of action, automatically justified dispensing with Section 12A despite the plaintiff’s prior knowledge of the alleged infringement.

3. Whether the plaint should be returned for completion of pre-institution mediation formalities rather than being admitted and instituted.

Section 12A of the Commercial Courts Act, 2015 was treated as mandatory in accordance with Patil Automation Private Ltd. v. Rakheja Engineers Private Ltd., (2022) 10 SCC 1, subject to judicial dispensation where, on the plaint and accompanying documents, the plaintiff genuinely contemplated urgent interim relief.

Under Yamini Manohar v. T.K.D. Keerthi, 2024 5 SCC 815, the court may conduct limited scrutiny of the plaint at the presentation stage to determine whether urgency is made out.

Under Novenco Building & Industry A/S v. Xero Energy Engg. Solutions (P) Ltd., 2026 4 SCC 815; AIR 2026 SC 5158, continuing intellectual-property infringement may constitute a fresh and recurring wrong; urgency is assessed from the persistence of the peril rather than merely the age of the cause of action, and the court must examine urgency from the plaintiff’s standpoint without deciding the merits at the threshold.

The court also noted that criminal remedies under Sections 103 and 104 of the Trade Marks Act, 1999 and Section 63 of the Copyright Act, 1957 are independent of civil remedies for infringement and passing off.

The Court accepted that the alleged infringement could constitute a continuing wrong, but held that this principle did not automatically establish urgency for the purpose of Section 12A.

The plaintiff became specifically aware of the alleged counterfeiting activities in July 2026 and immediately invoked the criminal process, resulting in search and seizure on 22 July 2026.

Since the plaintiff could have simultaneously instituted a civil action while pursuing criminal remedies, its decision to defer the civil suit was a voluntary choice to keep that remedy in abeyance.

The Court distinguished Novenco, observing that the continuing nature of an infringement keeps the cause of action alive but does not dispense with the requirement to institute a suit where urgent relief is contemplated when the right to sue first arises.

A contrary interpretation would effectively make Section 12A inapplicable to intellectual-property suits whenever filed, rendering the statutory requirement otiose.

On the facts pleaded, the Court therefore found that the urgency contemplated by Section 12A had not been established.

The plaint was directed to be returned for completion of the pre-suit mediation formalities, with leave to use the court fees already paid for instituting a suit on the same cause of action, subject to applicable law.

As the plaint had not yet been presented and admitted, the Court directed the department to de-register the allotted suit number so that the matter would not appear as pending.