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Commercial Courts Act | Trademark Infringement Suits Not Exempt From Pre-Institution Mediation Merely Because There Is Penal Consequence: Madras HC
Upasana Sajeev
27 Jan 2023 10:12 AM IST
While rejecting a plea for leave to sue filed by Aachi Spices and Foods in a suit seeking an injunction restraining Karaikudi Achi Mess from using trademark name or similar sounding expression in any media, websites and other platforms, the Madras High Court has held that mere existence of a penal consequence cannot be a ground for a party to not comply with the mandatory requirement...
While rejecting a plea for leave to sue filed by Aachi Spices and Foods in a suit seeking an injunction restraining Karaikudi Achi Mess from using trademark name or similar sounding expression in any media, websites and other platforms, the Madras High Court has held that mere existence of a penal consequence cannot be a ground for a party to not comply with the mandatory requirement of pre-institution mediation under Section 12A of the Commercial Courts Act.
The petitioner Aachi Spices and Foods contended that trademark infringement was not just a civil wrong but had penal consequences also. Thus, there was a need for an urgent interim relief.
Justice M Sundar however, rejected this contention. The court held that when there was a provision for seeking penal remedy for an alleged offence, nothing prevented the parties from proceeding for the same. That, by itself, would not justify non-compliance with the mandatory requirement of Section 12A.
The next argument turns on the Copyright Act, 1957 and the Trademarks Act, 1999 providing for penal consequences and alleged infringement not being just civil wrongs. This argument again is a non-starter qua Section 12A of CCA. If there is a penal consequences and if there is a provision for proceeding for alleged criminal offence, nothing prevents the plaintiffs from resorting to the same. That by itself cannot justify non-compliance with Section 12A which has been held to be mandatory by Hon'ble Supreme Court.
The court also rejected the contention of the plaintiff to direct post-filing of suit mediation by stating that pre-institution mediation was a pre-suit legal drill and cannot be a post suit exercise. The court held that pre-institution mediation being a jurisdictional fact cannot be carried out after the institution of the suit.
The court noted that the plaintiff had failed to fulfil the necessary criteria for urgent interim relief. Even after coming to know of the infringement, the plaintiff had filed the suit after an expriy of a period of one and half month which shows that there was no urgency. The plaintiffs had also failed to show legal injury.
Thus, the court rejected the plaint with liberty to the parties to approach the court again if the exercise of pre-institution mediation does not bring in any results.
Case Title: Mr. AD Padmasingh Issac and others v. Karaikudi Achi Mess and another
