The Madras High Court has held that mere presence of penal consequence doesn't exempt Trademark Suits from being referring to pre-institution mediation as manadatorily required under Section 12A of the Commercial Courts Act.
The single-judge bench of Justice M Sundar in this view rejected the petition 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 Senior Counsel for the plaintiff had argued that in Copyright and Trademark statutes, infringement is not just a civil wrong but it has penal consequences also and therefore urgent interim-injuction was needed.
The Court called the argument as non-starter qua Section 12A of CCA and observed:
"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", the Court clarified.
On plaintiff's prayer for post filing of suit mediation under Section 12A of CCA, the Court stated that Section 12A is in the nature of a jurisdictional fact and a jurisdictional fact has to precede the suit and it cannot be post suit.
The Court cited Premier Distilleries wherein it was held that the cause of action is something which has occurred and which gives a right to take action and the cause must precede the action and not follow it.
"This Commercial Division has also held that Section 12A having been held to be mandatory by Hon'ble Supreme Court, any such manoeuvre qua the rigour of Section 12A of CCA either by way of dispensing with or post suit exercise when the law specifically talks about a pre-suit legal drill is impermissible."
The Court rejected the 'urgency' factor as claimed and called it plaintiff's own doing.
"This is a classic case where it is of plaintiff's own doing as inter alia there is no explanation whatsoever as to what prevented the plaintiffs from issuing a cease and desist notice which has been repeatedly held by this Court to be a fair and sound practice and there is nothing to demonstrate that the matter falls in the category of an exception to this."
Noting that plaintiff has failed to show any 'legal injury', remarked that 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.
"Plaintiffs on being unable to explain have given a semblance of explanation for not issuing a pre-suit notice or cease and desist notice much less a notice under Section 12A of CCA and filing the suit at least one and half month later (mean average between one month and two months owing to lack of specificity in the pleadings in paragraph 29 of the plaint in lead case) cannot be said to be on fair ground in urging urgency as an interim measure. Another facet of the test/parameter is actual or apprehended wrong or legal injury should be so imminent that plaintiff cannot be made to stand and suffer the same. The narrative thus far, discussion and dispositive reasoning make it clear that the urgency that is being attempted to be projected in the considered view of this Commercial Division is a mirage as it is all clearly plaintiffs' own making. Therefore, this parameter also becomes a stumble for the plaintiff."
The plaint was rejected with liberty to the plaintiff to approach the court again if pre-institution mediation remains infutile.
CASE TITLE: Mr. AD Padmasingh Issac and others v. Karaikudi Achi Mess and another
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(With input from news agency language)
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