Calcutta High Court Sends ITC Trademark Suit To Mediation, Says FIR First Weakened Urgency To Claim Waiver
The Calcutta High Court has refused to dispense with pre-suit mediation for ITC Limited's proposed trademark infringement and passing off suit against SMM Tobacco Private Limited.
The court found that ITC had chosen to pursue the criminal remedy first while keeping its civil remedy in abeyance, even though both remedies could have been pursued simultaneously.
Justice Arindam Mukherjee on September 8 directed that the plaint be returned for being filed after completion of pre-suit mediation under Section 12A of the Commercial Courts Act.
ITC's plaint stated that in the third week of July 2026, its field investigators received specific and credible intelligence that unauthorised and illicit counterfeiting operations were being carried out in parts of Muzaffarpur, Bihar, with SMM Tobacco allegedly carrying out the activities using mechanised cigarette-making, packing, and allied machinery.
ITC thereafter lodged an FIR, pursuant to which search and seizure operations were conducted on July 22, 2026. The order records that the plaintiff subsequently provided details of the goods and articles recovered during the operation.
ITC then sought to institute the civil suit without completing pre-suit mediation, arguing that the alleged continuing infringement entitled it to dispensation from the Section 12A requirement under the Supreme Court's ruling in Novenco Building & Industry A/S v. Xero Energy Engg. Solutions.
ITC's counsel relied heavily on the Supreme Court's recent ruling in Novenco Building & Industry A/S v. Xero Energy Engg. Solutions, which held that in cases of continuing IP infringement, each fresh act constitutes a renewed cause of action, and that courts must judge urgency from the plaintiff's own perspective as reflected in the plaint, rather than penalising delay.
The court accepted that Section 12A mediation is mandatory as a rule, per the Supreme Court's ruling in Patil Automation v. Rakheja Engineers, but that courts retain discretion to waive it where genuine urgency is shown, per Novenco.
It found ITC's case did not meet that bar.
The court pointed out that both the Trade Marks Act and the Copyright Act give a rights holder criminal remedies, such as an FIR, in addition to the civil remedy of a suit, and that these two avenues are independent of each other and could have been pursued simultaneously.
Instead, the court said, ITC "chose one of the remedies available to it by lodging an FIR with the police authorities... by keeping the other remedy in abeyance though the same was available," even though its right to sue had first accrued back in July 2026.
The court was unwilling to stretch Novenco's logic to cover every IP dispute regardless of how the plaintiff actually responded when the cause of action first arose, warning that doing so would render Section 12A's mediation requirement "otiose" in IP matters, against the legislature's clear intent in bringing such disputes within the Commercial Courts Act's fold.
It noted this reading was consistent with how other courts had also declined to read Novenco expansively.
Having found that ITC had already made its choice by pursuing the criminal route first, the court declined the waiver.
Since the plaint had only been allotted a number and not yet formally admitted, it directed that the plaint be returned, to be re-filed after pre-suit mediation is completed, with liberty to use the same court fees for the suit later if mediation fails.
The registry was directed to de-register the allotted suit number in the meantime.
For ITC: Senior Advocate Rudraman Bhattacharya with Advocates Sarathi Dasgupta, K.K. Pandey, Manosij Mukherjee, Aayush Sinha, Naman Chowdhury and Bhavesh Garodia