Acer Must Give Prior Notice To MeitY, DoT When Relief Is Sought Against Them In Trademark Suit: Madras High Court

The Madras High Court has rejected Acer Incorporated's attempt to treat the Ministry of Electronics and Information Technology (MeitY) and the Department of Telecommunications (DoT) as mere “formal” or “compliance” parties in its trademark infringement suit.

Justice A.D. Maria Clete observed, "The CPC does not create separate categories of Government defendants described as 'formal', 'pro forma' or 'compliance' defendants for the purpose of Section 80. The applicability of Section 80 must be determined from the substance of the plaint and the nature of the directions sought, and not merely from the description assigned to a defendant by the plaintiff.”

The ruling came in Acer's suit alleging trademark infringement and passing off by sellers trading as “The Laptap Shoppee,” “The Laptop Shoppee” and “Laptop Store.”

Acer had also impleaded MeitY and DoT, seeking directions requiring them to implement or facilitate any interim injunction or blocking order against the sellers.

Acer argued that the two government authorities were only formal or compliance parties and that no substantive relief was claimed against them. It therefore sought leave to institute the suit without first serving the advance notice ordinarily required before suing the government.

The court rejected the argument because Acer was asking MeitY and DoT to act on a possible court order. Justice Clete held that such a direction is “operative relief” against the authorities, even if described as ancillary, consequential, or compliance-oriented.

The notice requirement generally gives the government two months' advance notice before a suit is instituted against it or a public officer concerning an official act.

The law permits a court to allow a suit to be filed without waiting for those two months where urgent or immediate relief is required against the government or public officer.

The court stressed that urgency in the trademark dispute itself was insufficient. Acer had to establish that urgent or immediate relief was required specifically against MeitY or DoT.

The court found no such urgency. There was no allegation that either authority had infringed Acer's trademark, facilitated the alleged infringement, refused to discharge a statutory obligation, disobeyed an earlier judicial direction, or committed any wrongful act against Acer.

Acer had also not shown that it had made a prior representation or demand to either authority which was refused. The court therefore found no basis to conclude that waiting for the statutory notice period would make the relief against them ineffective.

Justice Clete further held that Acer could not argue that MeitY and DoT were necessary to enforce an injunction while simultaneously maintaining that no relief was being sought against them.

“The plaintiff cannot simultaneously contend that implementation is necessary to enforce the order and that no relief is sought against them,” the court observed.

Relying on the Supreme Court's decision in Bihari Chowdhary v. State of Bihar, the court reiterated that the notice requirement is “express, explicit and mandatory” and admits of no exceptions other than those provided by the legislature.

The court ultimately held that Acer had failed to satisfy the requirements for proceeding without notice. It dismissed the application and directed that the plaint be returned for presentation after compliance with the statutory notice requirement..