Pre-Institution Mediation Not Mandatory In Trademark Suits Seeking Urgent Relief: M.P. High Court

The Madhya Pradesh High Court on 23 October held that pre-institution mediation under Section 12-A of the Commercial Courts Act, 2015, is not mandatory for a commercial suit seeking urgent interim relief, even when the plaint was returned by another court and subsequently refiled before a competent court.

A Division Bench comprising Justices Subodh Abhyankar and Jai Kumar Pillai dismissed Naivedya Associates' petition challenging the maintainability of a trademark infringement suit filed by Kriti Nutrients Private Limited before the Commercial Court in Indore.

The judges held that “the court only has to see whether the plaintiff's suit 'contemplates' or seeks urgent interim relief.”

The dispute concerns the marks “KRITI” and “KIRTI”, over which Kriti Nutrients claims rights, and “NAV KIRTI”, used by Naivedya Associates. Kriti Nutrients initially filed a trademark and copyright infringement suit before a commercial court in Delhi, which granted an ex parte interim injunction on 20 March 2021.

Naivedya Associates subsequently challenged the Delhi court's territorial jurisdiction. On 6 March 2023, the Delhi court allowed the challenge and directed the return of the plaint, granting Kriti Nutrients liberty to file it before a competent court within six weeks.

Kriti Nutrients presented the suit before the Commercial Court in Indore on 13 July 2023 and subsequently sought continuation of interim protection through an application filed on 8 September 2023. Naivedya Associates sought rejection of the plaint under Order VII Rule 11 of the Code of Civil Procedure.

It argued that the Indore proceedings amounted to a fresh suit instituted after the 20 August 2022 cut-off recognised by the Supreme Court in Patil Automation Private Limited v. Rakheja Engineers Private Limited. It contended that pre-institution mediation was mandatory and that the suit could not proceed without it.

On the other hand, Kriti Nutrients countered that Section 12-A expressly exempts suits that contemplate urgent interim relief. It argued that it had sought urgent protection against the alleged trademark infringement from the outset and continued to pursue such relief after filing the suit in Indore.

The Court accepted that the Indore proceedings constituted a fresh institution in law, relying on the Supreme Court's decision in EXL Careers v. Frankfinn Aviation Services Private Limited. It also recognised that Section 12-A mandates pre-institution mediation for commercial suits instituted after the applicable cut-off date, subject to the statutory exception for suits contemplating urgent interim relief.

It held that the filing of an injunction application before the Indore court demonstrated Kriti Nutrients' intention to seek urgent protection. It clarified that the maintainability question did not require the court to determine whether the earlier Delhi injunction remained legally valid.

Further, the Bench observed that the continued use of an allegedly infringing trademark could cause immediate and daily losses to its owner. It held that the Supreme Court's rulings on mandatory mediation did not override the express statutory exception under Section 12-A.

“Since the present case falls squarely within the statutory exception,” the judges held, “the respondent was not legally required to exhaust the remedy of pre-institution mediation before filing the suit at Indore.”

Accordingly, the High Court dismissed Naivedya Associates' petition and upheld the Commercial Court's order rejecting its application for rejection of the plaint.