No Urgent Relief, No Section 12A Exemption: Calcutta HC Upholds Revocation of Leave in Trademark Suit
Introduction
The Calcutta High Court has dismissed an appeal in a trademark infringement and passing off dispute between Unique Entrepreneurs and Finance Ltd. and Really Agritech Pvt. Ltd., upholding the revocation of leave granted under Section 12A of the Commercial Courts Act, 2015. The Division Bench of Justice Debangsu Basak and Justice Md. Shabbar Rashidi held that the plaintiff failed to establish a genuine need for urgent interim relief, reiterating that Section 12A is mandatory and cannot be bypassed through a mere assertion of urgency.
Factual Background
The appellant (plaintiff) claimed to be manufacturing and marketing goods under the mark “RALLI”, alleging that the defendants were using a deceptively similar mark “Really”, amounting to infringement and passing off. The plaintiff asserted that it became aware of such use only in 2024 and sought urgent interim relief without resorting to pre-institution mediation under Section 12A.
However, the defendants contended that they had been using the mark “Really” since at least 2018, including participation in a trade fair in Pune where both parties were present. They further relied on WhatsApp communications from 2022 between employees of both sides to demonstrate prior knowledge of the plaintiff regarding the defendant’s product and branding.
Procedural Background
The plaintiff had instituted a commercial suit and obtained leave under Section 12A along with an interim injunction. Subsequently, the defendants filed applications seeking revocation of leave and vacation of the interim order. By the impugned order, the Single Judge revoked the leave granted under Section 12A, vacated the interim injunction, and dismissed the injunction application. Aggrieved, the plaintiff preferred an appeal before the Division Bench.
Issues
1. Whether the plaintiff had established a genuine need for urgent interim relief to bypass mandatory pre-institution mediation under Section 12A?
2. Whether suppression of material facts regarding prior knowledge disentitles the plaintiff from relief?
3. Whether leave granted under Section 12A can be revoked upon showing deception or absence of urgency?
4. Whether the Single Judge’s findings warranted interference in appeal?
Contentions of Parties
The appellant contended that the infringement was a continuing wrong, justifying urgent interim relief, and argued that the Single Judge had misapplied the principles governing Section 12A. It relied on judicial precedents to submit that courts should only examine whether the relief sought is plausibly urgent from the plaintiff’s standpoint.
The respondent argued that the plaintiff had prior knowledge of the defendant’s use of the mark since at least 2018 and certainly by 2022, as evidenced by trade fair participation and WhatsApp exchanges. It was contended that the plea of urgency was merely a device to bypass mandatory mediation, and that the leave was rightly revoked.
Reasoning and Analysis
The Court reiterated that Section 12A of the Commercial Courts Act is mandatory, and exemption from pre-institution mediation is permissible only where the plaint and accompanying documents demonstrate a real and genuine need for urgent interim relief. Relying on principles laid down in judicial precedents, the Court emphasised that a mere assertion of urgency cannot be used as a camouflage to bypass statutory requirements.
Examining the record, the Court found that the plaintiff’s claim of first knowledge in 2024 was untenable, as material on record established that the defendant’s product was in the market since 2018 and that the plaintiff had knowledge at least by 2022 through internal communications. The Court held that such facts indicated absence of immediacy or urgency, thereby disentitling the plaintiff from bypassing Section 12A.
The Bench further observed that where leave under Section 12A is obtained by suppression, misrepresentation, or lack of genuine urgency, the Court retains the power to revoke such leave. It agreed with the Single Judge that the plaintiff’s conduct and delay undermined its claim for urgent intervention.
Decision
The Calcutta High Court dismissed the appeal and upheld the impugned order revoking leave under Section 12A, vacating the interim injunction, and dismissing the injunction application.
In this case the appellant was represented by Mr. Ranjan Bachawat, Sr Adv, Mr. Subhasis Sengupta, Mr. Sagnik Basu, Mr. Bhavesh Garodia, Mr. Soupayan S. Roy, Advocates.