Groundless Threat Suit Over Trademark Infringement Cannot Continue Once Infringement Case Is Filed: Calcutta High Court

On January 30, 2026, Justice Ravi Krishan Kapur dismissed a 'threat suit' filed by Neelam Gupta against Esme Consumer Private Limited because the company had, subsequent to the filing of the suit, commenced a formal infringement action in a Delhi court.

Under Section 142 of the Trade Marks Act, 1999, and Section 60 of the Copyright Act, 1957, a person aggrieved by "groundless" legal threats can seek an injunction and damages; however, these provisions expressly cease to apply once the registered proprietor diligently prosecutes an actual action for infringement.

The court explained that “once the suit has been instituted with due diligencefor infringement of trademark or copyright by the registered proprietororuser against the person threatened before a Court, the entire cause of actioninsofar as the groundless threats is concerned automatically extinguishes.”

The dispute began after Esme Consumer Private Limited, the registered proprietor of the “BLUE HEAVEN” trademark, issued a cease-and-desist notice to Neelam Gupta in September 2025.

In her pleadings, Gupta contended that she is the bona fide owner of the registered mark “GRACE HEAVEN” and has used it extensively for cosmetics since 2019. She argued that the company's notice constituted a groundless threat of legal proceedings without any basis in law. While Gupta moved the Calcutta High Court for protection, Esme Consumer subsequently filed a suit for trademark and copyright infringement against her before the Commercial Court at Saket, New Delhi.

During the proceedings, Esme Consumer submitted that the Calcutta suit was liable to be dismissed immediately upon the filing of their infringement action in Delhi.

Gupta, however, maintained that her claim for damages should survive independently and argued that the suit could not be dismissed without a formal application for the rejection of the plaint.

Rejecting these contentions, the Court held that the legislative intent behind the law is to provide a remedy only until actual proceedings are initiated.

Justice Kapur remarked that once an infringement suit is filed, “the threats are no longer groundless” and the entire cause of action for the initial threat suit “automatically extinguishes”.

The Court observed that the claim for damages is “intrinsically linked and dependant” on the primary relief against the threats, and once the main relief becomes infructuous, the ancillary relief is rendered “nugatory”.

The court emphasised that allowing both suits to continue simultaneously would lead to a “multiplicity of proceedings”. Justice Kapur stated that a court has a duty to “suo moto reject the plaint” if a suit is barred by law, even without a formal application from the defendant.

Accordingly, the Court concluded that all rights and liabilities of the parties must now be decided in the subsequent infringement proceedings. Consequently, the High Court dismissed the suit and the accompanying applications.

For Neelam Gupta: Advocates Subhasish Sengupta, Akash Munshi and Aditya Rattan Tiwary

For Esme Consumer: Advocates Soumya Ray Chowdhury, Sarosij Dasgupta, Sumit Biswas, Aakash Mukherjee, Samina Khanum and Rajashree Boowmick