Court says urgency under Section 12A of the Commercial Courts Act must be shown from the plaint; intellectual property disputes do not get automatic exemption.
The Calcutta High Court has declined to dispense with the mandatory pre-suit mediation requirement under Section 12A of the Commercial Courts Act, 2015 in a trademark infringement and passing off suit filed by ITC Limited against SMM Tobacco Private Limited and others.
Justice Arindam Mukherjee held that the mere fact that the dispute involved intellectual property rights did not automatically entitle the plaintiff to bypass the mediation process. The Court emphasized that urgency must be apparent from the plaint and supporting documents, and each case must be assessed on its own facts.
ITC had approached the Court seeking permission to institute its suit without first undergoing pre-institution mediation. According to the plaint, the company received information in the third week of July 2026 that counterfeit cigarette manufacturing was allegedly taking place in Muzaffarpur, Bihar. ITC claimed that it immediately alerted the police, resulting in search and seizure operations on 22 July 2026, which allegedly uncovered illegal activities and recovery of infringing goods.
The plaintiff argued that the suit involved continuing infringement and passing off, and therefore qualified for exemption from Section 12A in light of the Supreme Court’s ruling in Novenco Building & Industry A/S v. Xero Energy Engg. Solutions (P) Ltd. ITC also relied on the principle that continuing infringement creates a recurring cause of action.
However, the Court was not persuaded. It noted that while intellectual property disputes may involve continuing wrongs, that by itself does not make every such suit urgent. Justice Mukherjee observed that the plaintiff, after learning of the alleged infringement, chose to proceed first with criminal action by lodging an FIR, while keeping the civil remedy in abeyance. The Court said that both civil and criminal remedies were available simultaneously, and the plaintiff could have approached the civil court at the point when the right to sue first accrued.
The judgment clarified that the Supreme Court’s decision in Novenco does not create a blanket exception for intellectual property matters under Section 12A. The Court said that reading Novenco to mean that all IP suits can bypass mediation would make the statutory mandate otiose, contrary to legislative intent.
Referring to the limited scrutiny permitted at the stage of presentation of plaint under Yamini Manohar v. T.K.D. Keerthi, the Court held that the plaint and annexures did not establish sufficient urgency to justify dispensing with mediation. Since the plaint had only been filed in the Central Filing Department and had not yet been admitted, the Court directed that it be returned so that ITC could complete pre-suit mediation formalities and then refile, if necessary.
The Court also directed that the suit number be de-registered after return of the plaint.
Bottom Line :
Intellectual property disputes and Section 12A of the Commercial Courts Act, 2015 - Dispensation of mandatory pre-suit mediation formalities under Section 12A is not automatically granted in intellectual property matters. Court discretion is based on specific facts of each case, and urgency must be evident from the plaint.
Statutory provision(s): Section 12A, Commercial Courts Act, 2015; Sections 103 and 104, Trade Marks Act, 1999; Section 63, Copyright Act, 1957
ITC Limited v. SMM Tobacoo Private Limited, (Calcutta) : Law Finder Doc id # 2977245
