[Commercial Courts Act] IPR Suits Involving Infringement Can Be Ordinarily Instituted Without Exhausting Mediation U/S 12-A: Bombay HC

A single judge bench of Justice R.I. Chagla was considering the applicants/original defendants no.1 and 2 sought rejection of the plaint under Order VII Rule 11 of CPC on the ground that the plaintiff did not exhaust the mandatory recourse of pre-litigation mediation under Section 12-A of the Commercial Courts Act /

In the copyright infringement suit filed by the plaintiff, it was alleged that defendants no. 1 and 2 have used the clips of the television series 'Shaktiman' without any authorization in their movie 'Vikram Vedha'. The plaintiff claimed that it has the copyright of Shaktiman series was exclusively assigned to it by the owner of the copyright.

The High Court referred to the Supreme Court judgment of Yamini Manohar vs. T.K. D. Keerthi (2024), where it was observed that the plea for urgent interim relief must be genuine and bonafide and courts must determine that the plea was not filed by practising 'deception', 'falsehood' or ''clever drafting' as to make it appear that relief was necessary.

Referring to this case, the High Court noted that the primary consideration is whether the prayer for urgent interim relief is a disguise or mask for escaping the rigors of Section 12-A of C.C. Act.

The Court stated that there is only a small window to reject the plaint and refer the dispute to mediation under Section 12A, which includes the case of deception or falsity. This can be determined by taking into consideration the nature and subject matter of the suit, cause of action and nature of interim relief sought by the plaintiff.

“Thus, from a reading of the decision of the Supreme Court in Yamini Manohar (Supra) it is apparent that there is a small window to reject the Plaint under Order VII Rule 11 and the parties to the mediation under Section 12 A of the C.C. Act, and this would be only in the case of (i) deception and (ii) falsity which is apparent or established and that too from the Plaint itself. In doing so, the Court is required to take into consideration the nature and subject matter of the Suit; cause of action involved in the Suit and nature of interim relief sought by the Plaintiff.”

The Court further stated that the case needs to be considered holistically from the standpoint of the plaintiff alone and it is irrelevant whether the plaintiff would actually be able to make out a case for interim relief.

In the present case, the Court noted that the plaintiff did not resort to any deception and falsity while presenting its case for urgent relief. It thus stated that the case does not fit the small window of rejecting the plaint and referring the parties to mediation.

The Court agreed with the plaintiff's contention that cases of intellectual property rights suits involving infringement or passing off can ordinarily be instituted without exhausting pre-litigation mediation under Section 12-A.

It said “Further, the Courts will not place its findings on the parameter of interval of time between date of infringement and date of filing of the Suit.”

It observed that courts must be cautious in rejecting a plaint in IPR suits as it involves the economic interest of the plaintiff as well as public interest of safeguarding the public from deception.

“Further, in intellectual property rights matters not only the Plaintiff's economic interest but also public interest of safeguarding the members of the public from deception and confusion are required to be considered.”

The Court thus dismissed the interim application for rejection of the plaint. It imposed a cost of Rs. 50,000 on the defendant nos.1 and 2, to be paid to the plaintiff for “delaying the hearing of the Interim Application for urgent relief.”

Case title: Y-Not Films LLP and Anr. vs. Ultra Media and Entertainment Pvt. Ltd. (INTERIM APPLICATION (L) NO.26065 OF 2024 IN COM IPR SUIT (L) NO.10862 OF 2024)