Calcutta High Court: Plaintiffs Fabricated Urgency and Suppressed Facts to Evade Pre-Litigation Mediation: Trademark Suit Rejected for Bypassing Mandatory Section 12A Procedure
Sanchayita Lahkar
The High Court at Calcutta, Intellectual Property Rights Division, Single Bench of Justice Ravi Krishan Kapur, issued a detailed judgment on 20 March 2025 revoking the previously granted dispensation under Section 12A of the Commercial Courts Act, 2015. The court found that the plaintiffs had materially suppressed facts in a suit concerning trademark infringement and passing off.
In consequence, the plaint in IP-COM/31/2024 was rejected, all interim orders were vacated, and the applications for vacating the interim order were allowed.
The plaintiffs filed a commercial suit seeking reliefs for trademark infringement and passing off, claiming to be the owners and registered proprietors of the marks "Ralli," "Ralli Engine," "Ralli Sprayer," and "Ralli Agricultural Machines" under classes 7 and 8. The plaintiffs alleged that defendant no.2 had obtained registration of a deceptively similar device mark in class 7, causing confusion and potential dilution of their brand.
The plaintiffs sought urgent interim reliefs and invoked Section 12A of the Commercial Courts Act, 2015 to seek dispensation from the mandatory pre-institution mediation, which the Court granted on 30 September 2024.
Key averments cited by the plaintiffs in the plaint included:
In or about May, 2024, the plaintiffs were informed by the industry sources... that the defendant/respondent no. 1 has adopted the mark as a part of its trade name... by wrongfully and illegally using the registered mark of the petitioners "RALLI."
The instant suit is for infringement of trade mark and passing off, which contemplates urgent reliefs... The Trade Marks Act, 1999 makes it abundantly clear that it is the option of the plaintiffs to seek urgent interim reliefs... The cause of action... is a recurring or continuous one... In such circumstances, there is no possibility of pre-suit mediation.
The defendants challenged this dispensation, submitting that the plaintiffs had prior knowledge of the impugned mark, citing:
- Promotional material from an Industrial Trade Fair (Kisan Mela) held between 12 and 16 December 2018, which both parties attended.
- WhatsApp messages exchanged in March 2022 between an employee of the plaintiffs and Express Agri, an authorised dealer, which referenced spare parts for machines sold by the defendants under the impugned mark.
The defendants contended that the assertion in the plaint about first acquiring knowledge in May 2024 was false and made to fabricate urgency, thereby misleading the Court.
In response, the plaintiffs argued that the exhibition was held in the name of "Karan Enterprises," not the defendants, and that knowledge by an ex-employee could not be imputed to the plaintiffs.
They relied on judgments including:
- Yamini Manohar vs. T.K.D. Keerthi, (2024) 5 SCC 815
- Dr Reddy Laboratories Limited vs Smart Laboratories Pvt. Ltd. (2023) SCCOnline Del 7276
- Ultra Media Entertainment Pvt Ltd. vs Y-Not Films LLP & Anr (2024) SCC Online Bom 3085
Justice Kapur examined the nature and timing of the plaintiffs' knowledge and recorded:
The crucial aspect which needs to be examined is the knowledge of the defendants' adoption and use of the impugned mark.
The Court found that the plaintiffs and defendants were trade rivals engaged in similar businesses. The exhibition held in December 2018 at Moshi, Pune, where both parties participated, featured products under the impugned mark, originally by "Karan Enterprises" before its change to defendant no.1 in July 2020.
The Court held:
This does not mean that the plaintiffs could not have had any knowledge of the existence of the impugned mark... The WhatsApp messages... is conclusive. Accordingly, the plaintiffs are deemed to have had knowledge of the impugned mark long prior to May 2024.
Regarding the plaintiffs' argument that employee knowledge was not attributable to them, the Court stated:
The contention that knowledge of an employee is not attributable to the plaintiffs is unsubstantiated and without basis.
Citing S.J.S. Business Enterprises (P) Ltd. vs. State of Bihar & Ors. (2004) 7 SCC 166, the Court observed:
Suppression of a material fact by a litigant disqualifies such litigant from obtaining any relief.
The Court noted that the plaintiffs failed to disclose the Kisan Mela and the WhatsApp messages, which amounted to suppression of material facts:
Non-mentioning and non-production of the true and correct information pertaining to the Kisan Mela or the WhatsApp messages and the documents in support thereof tantamount to material suppression and in effect playing fraud on the Court.
Quoting from Mayar (H.K.) Ltd. & Ors. vs. Owners & Parties, Vessel M.V. Fortune Express & Ors., (2006) 3 SCC 100, the Court reiterated that a litigant must come to court with clean hands.
On the question of urgency and the five-month delay before filing, the Court observed:
Whether there exists the need for urgent interim reliefs or not is required to be examined in the totality of circumstances... A finding cannot necessarily be based merely on the interval or time gap.
However, the fabricated claim regarding discovery in May 2024 undermined the assertion of urgency:
The dispensation with the requirement of Pre-Institution Mediation and Settlement granted in terms of the order dated 30 September 2024 stands revoked.
The Court ordered:
The plaint filed in IP COM 31 of 2024 stands rejected. Consequently, all interim orders are vacated. GA-COM No.3 of 2024 and GA-COM No.2 of 2024 i.e. for vacating of the interim order stands allowed. IP-Com/31/2024 along with GA-COM No.1 of 2024 seeking interim orders stand dismissed.
A subsequent plea by the plaintiffs for a stay was also rejected:
After pronouncement of the judgment, the plaintiffs pray for stay. The prayer for stay is considered and rejected.
Advocates Representing the Parties:
For the petitioner: Ranjan Bachawat, Senior Advocate, Shuvasish Sengupta, Advocate, B. Garodia, Advocate, Sagnik Basu, Advocate
For the respondents: Debnath Ghosh, Senior Advocate, Nabanita De, Advocate, Biswaroop Mukherjee, Advocate, Kiran Kumari Mahato, Advocate, Sohom Saha, Advocate
Case Title: Unique Entrepreneurs and Finance Limited vs Really Agritech Pvt Ltd. and Anr
Case Number: IP-COM/31/2024
Bench: Justice Ravi Krishan Kapur
[Read/Download order]
