By Lucy Rana & Rima Majumdar
| ANSWER IN BRIEF
Section 12A of the Commercial Courts Act which provides for mandatory pre-institution mediation before a suit is filed, cannot always be bypassed in IP suits. ITC had learned of alleged counterfeiting at Muzaffarpur, Bihar in July 2026, lodged an FIR leading to search and seizure on 22 July 2026 by the police, and then filed a civil suit afterwards. The Court held that a continuing cause of action keeps the right to sue alive, but urgency must be acted on when the right to sue first accrues; reading Novenco as making every IP suit urgent would render Section 12A otiose. The plaint was returned for filing after mediation, with leave to reuse the court fees. |
In India, Section 12A of the Commercial Courts Act, 2015 provides that a pre-institution mediation is a mandatory step to be undertaken, before filing a commercial suit, with the sole exception being when an urgent interim relief is contemplated.
The Supreme Court held this requirement as mandatory in Patil Automation v. Rakheja Engineers, and thereafter again in Yamini Manohar v. T.K.D. Keerthi and allowed courts to examine the plaint to see whether the claim for urgency is genuine. Thereafter in 2025, in the case of Novenco Building & Industry A/S v. Xero Energy Engineering Solutions, the Supreme Court held that continuing infringement of intellectual property is a recurring wrong where urgency lies in the persistence of the harm rather than the age of the cause, with a public-interest element in preventing consumer confusion.
Since Novenco, many IP plaintiffs in India have treated this exemption as close to automatic. However, a Single Judge of the Calcutta High Court in the case of ITC Limited vs. SMM Tobacco Private Limited & Ors.[1] and thereafter the Division Bench in appeal[2] between the same parties reminds that it perhaps may not be.
What happened in ITC v. SMM Tobacco
It was the plaintiff’s case that it learned of the Defendant’s counterfeiting activities sometime in the third week of July 2026, post which ITC first filed a police complaint. In pursuance of this police complaint, a FIR was registered and the police conducted search and seizure at the defendant’s premises on 22 July 2026 and goods were recovered.
Thereafter a civil suit for infringement and passing off was filed in the Calcutta High Court., wherein an ex-parte ad-interim injunction was prayed for along with appointment of local commissioner. However, the Court returned the plaint for non-compliance of pre-institution mediation before filing the civil suit.
The Court’s reasoning: two roads, one chosen
The Court observed that while the Trade Marks Act, 1999 (Sections 103 and 104) and the Copyright Act, 1957 (Section 63) both provide criminal remedies in addition to the civil action, the two can run together.
ITC knew of the counterfeiting activities of the defendant since July 2026, and chose the criminal route first, while holding back filing the civil suit. While the continuation of the counterfeiting activities constitutes a continuing cause of action, the Court held that a suit claiming urgency must be filed when the right to sue first accrues.
The Court further observed that to read Novenco to mean that every IP suit requires urgent interim relief would allow IP plaintiffs to dispense with Section 12A whenever they chose to sue, rendering it otiose in IP matters, which could not have been the legislative intent. It noted that Novenco had been explained by a Division Bench of the same Court in Goodfaith Holding v. Supreme Wood Products[3] and by a Division Bench of the High Court of Bombay in High Point Supply Co. LLC v. Agati Healthcare[4].
For these reasons that Court returned the plaint for being filed after completion of the pre-suit mediation formalities along with Court fees with leave to use the same Court Fees for instituting the suit on selfsame cause.
On appeal
Subsequently the Plaintiff, ITC, filed an appeal challenging this order of the Single Judge before the Division Bench.
The DB vide its order dated October 12, 2026 upheld the Single Judge’s order and did not interfere with the reasoning granted for return of plaint.
Author’s note:
While this decision of the Calcutta High Court tries to distinguish the Supreme Court’s decision of Novenco vs. Xero Energy, it is worth noting that Novenco and the decisions that came before it from the Apex Court, distilled the law on Section 12A as under:
- Section 12A mandatorily requires pre-institution mediation for commercial suits, non-compliance of which would ordinarily render the plaint institutionally defective.
- A plaintiff can be exempted from the requirement of Section 12A only when the plaint and the documents attached with it clearly show a real need for urgent interim intervention. A wholesome reading of the plaint and the material annexed to the plaint ought to disclose the need for urgent relief.
- The court must look at the plaint, pleadings and supporting documents to decide whether urgent interim relief is genuinely contemplated. The court may also look for immediacy of the peril, irreparable harm, risk of losing rights/assets, statutory timelines, perishable subject-matter, or where delay would render eventual relief ineffective.
- A proforma or anticipatory prayer for urgent relief used as a device to skip mediation will be ignored and the court can require the parties to comply with Section 12A of the Act.
- The court is not concerned with the merits of the urgent relief, but if the relief sought seems to be plausibly urgent from the standpoint of the plaintiff the court can dispense with the requirement under Section 12A of the Act.
While exhausting the remedy of a pre-suit mediation does have its benefits, given the facts of the ITC case concerns counterfeit goods, by returning the plaint and mandating the plaintiff to mediation with a counterfeiter first, may eventually lead to irreparable loss to the plaintiff, especially since the defendant chose to continue with its infringing acts despite a police raid.
What it means for IP enforcement in India
- Plan criminal and civil action together. the criminal remedies under Sections 103 and 104 of the Trade Marks Act, 1999 and Section 63 of the Copyright Act, 1957 are independent of the civil suit and may run simultaneously.
- Show urgency from the first day. where exemption from Section 12A is sought, the record should show the civil remedy being pursued from the moment the infringement is known or explain why it could not be.
- Mediation is not always a loss. a short, well-run mediation may cost less than a returned plaint.
Sources: ITC Limited v. SMM Tobacco Private Limited & Ors., IP (COM) No. 10 of 2026, High Court at Calcutta, judgment dated 08.09.2026, 2026:CHC-OS:388.; Patil Automation Private Ltd. v. Rakheja Engineers Private Ltd., (2022) 10 SCC 1.; Yamini Manohar v. T.K.D. Keerthi, (2024) 5 SCC 815.; Novenco Building & Industry A/S v. Xero Energy Engg. Solutions (P) Ltd., cited in the Calcutta judgment as 2026(4) SCC 815 : AIR 2026 SC 5158 (cited elsewhere as 2025 SCC OnLine SC 2278; verify the reported citation).; Goodfaith Holding (P) Ltd. v. Supreme Wood Products (P) Ltd., 2026 SCC OnLine Cal 12021 (DB).; High Point Supply Co. LLC v. Agati Healthcare (P) Ltd., 2026 SCC OnLine Bom 9115 (DB).; Chandra Kishore Chaurasia v. R.A. Perfumery Works Private Ltd., 2022 SCC OnLine Del 3529 (DB).. Statutory framework: Commercial Courts Act, 2015 — Section 12A (pre-institution mediation and settlement). Trade Marks Act, 1999 — Sections 103 and 104 (penalties for applying false trade marks and selling goods so marked); Section 29 (infringement); Section 27(2) (passing off). Copyright Act, 1957 — Section 63 (offence of infringement). Bharatiya Nagarik Suraksha Sanhita, 2023 (in force from 1 July 2024; replacing the Code of Criminal Procedure, 1973) — registration of FIRs and search procedure. The ruling is a single-judge decision at the presentation stage; the article compares it with Delhi orders while noting the factual differences.
Disclaimer: This article is published for general information and educational purposes only. It does not constitute legal advice and is not intended as an advertisement or solicitation of work. Readers should obtain specific professional advice before acting on any matter discussed here.
For more information on Trademark Searches, Trademark Clearance, Trademark Watch, Trademark Selection, Trademark Filing, Trademark Registration, Trademark Examination, Trademark Objection Reply, Trademark Hearing, Trademark Opposition, Trademark Publication, Trademark Renewal, Trademark Cancellation, Trademark Rectification, Trademark Infringement, Trademark Passing Off, Trademark Litigation, Trademark Licensing, Trademark Assignment, Section 12A Pre-Institution Mediation in IP Suits, Novenco Continuing Infringement Urgency, Counterfeiting FIR and Civil Suit Strategy, Calcutta High Court IP Division, ITC v SMM Tobacco, Section 12A Pre-institution Mediation, Novenco, IP Suit, Continuing Infringement, FIR, Calcutta High Court, and Commercial Courts Act in India write to us at info@ssrana.com
[1] IP (Com) No. 10/2026
[2] APDT/24/2026
[3] 2026 SCC Online Cal 12021
[4] 2026 SCC Online Bombay 9115
For your reference, please find the links below
Pre-Institution Mediation – An Inescapable Mandate or just a Volition
The Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015- Highlights
Commercial Counterclaims And The Mandate Of Mediation: The Jurisprudential Expansion Of Section 12a
Government notifies changes to rules on Input Tax Credit
India: GST in the Publishing Industry