Calcutta High Court
Itc Limited vs Interstellar Testing Centre Pvt. Ltd on 21 August, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
(Intellectual Property Rights Division)
BEFORE:
The Hon'ble Justice Ravi Krishan Kapur
IP-COM/42/2024
[OLD NO CS/159/2022]
IA NO: GA/1/2022, GA/2/2022
ITC LIMITED
Vs
INTERSTELLAR TESTING CENTRE PVT. LTD.
For the petitioner/defendant : Mr. Tilak Kumar Bose, Senior Advocate
Mr. S. Dasgupta, Advocate
For the respondent/plaintiff : Mr. S. N. Mookherjee, Senior Advocate
Mr. Ranjan Bachawat, Senior Advocate
Mr. Ratnanko Baenrjee, Senior Advocate
Mr. Manosij Mukherjee, Advocate
Mr. Mitul Dasgupta, Advocate
Mr. Yash Singhi, Advocate
Mr. Joydeep Roy, Advocate
Mr. Teesham Das, Advocate
Mr. Bhavesh Garodia, Advocate
Mr. Dipto Ghosh, Advocate
Judgment on : 21.08.2025
Ravi Krishan Kapur, J.:
1. This is an application seeking revocation of dispensation granted under
Section 12A of the Commercial Courts Act, 2015. The suit is for
infringement and passing off.
2. Briefly, the suit has been filed challenging the defendant’s use of the mark
ITC LABS as well as their domain name www.itclabs.com.
3. Upon the filing of this suit, the plaintiff had filed an interim application,
inter alia, seeking restraint orders on the defendant from using the mark
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“ITC” or any other deceptively similar mark. Initially, by an order dated 6
July, 2022, an ad interim order of restraint was passed in favour of the
petitioner. Subsequently, the said order was vacated on the ground that
the plaintiff had not disclosed the previous dealings between the parties.
4. In this application, the defendant seeks revocation on the ground that the
plaintiff had falsely obtained dispensation under section 12A by artificially
creating urgency. It is contended that there has been suppression of
material facts in the filing of the suit and the plaintiff has made false
averments insofar as knowledge of the impugned mark is concerned.
5. The admitted documents on record suggest that ITC LABS
was being used by the defendant much prior to 2022 and the
plaintiff had innumerable prior dealings directly with the plaintiff. In fact,
the defendant has been using ITC LABS for more than 30 years. The
defendant also relies on diverse documentary evidence including posts on
Facebook, Linkedin in support of above fact. The defendant also asserts
that the domain name www.itclabs.com of the defendant is a prior domain
name. The plaintiff in entering into the laboratory business is trying to
coerce the defendant to change its name which has been in open,
continuous and uninterrupted use for a long period of time.
6. The defendant relies on the interim order which was passed in this
proceeding to contend that by an order dated 31 August, 2022, this Court
had held that the ex parte order dated 6 July 2022 had been obtained by
suppressing the true and correct facts of the case and the averment of the
plaintiff that they only had knowledge of the impugned mark and the
infringing activities in January, 2022 is intentionally false. In such
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circumstances, in view of the decision in Dhanbad Fuels vs. Union of India
2025 SCC OnLine SC 11, this suit is liable to be stayed and the parties be
directed to exhaust the mandatory mechanism of mediation as
contemplated under the section.
7. On behalf of the plaintiff, it is contended that leave under section 12A of
the Act was justifiably granted since the present suit contemplates urgent
interim reliefs. The suit was instituted immediately upon the plaintiff
becoming aware of actual confusion thereby giving rise to the cause of
action necessitating urgent interim reliefs. It was only in January, 2022 for
the first time that after a former Member of Parliament had forwarded an e-
mail to a senior official of the plaintiff which prompted the cease and desist
notice dated 1 February, 2022 followed by filing of this suit. The
subsequent conduct of the defendant in filing the trademark application in
respect of the mark ITC LABS on a proposed to be used basis
demonstrates the ill intent of the defendant. The section contemplates suits
being filed in cases where urgent interim reliefs are sought. The exception
carved out requires the Court to consider the plaint holistically. In any
event, the suit being one for protection of intellectual property rights of the
plaintiff, there can be no question of Pre-Institution Mediation.
8. It is further contended that non-grant of interim relief cannot be a
justification for revocation of dispensation under section 12A of the Act.
There has been no suppression nor concealment nor distortion of any kind
whatsoever. The actual confusion occurred only upon receipt of the letter
from a Member of Parliament and any knowledge prior thereto is
inconsequential and irrelevant. In any event, the employees of the plaintiff
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company who had previous dealings with the defendant cannot be
considered to be the “directing minds and will” of the plaintiff and hence no
credence can be given to their knowledge. It is further contended that the
plaintiff has never acquiesced to the defendant’s use of ITC LABS. This is a
case of progressive encroachment of the plaintiff’s intellectual property
rights by the defendant. It is only upon occurrence of the actual confusion
in the market when the alleged illegal activities of the defendant had been
discovered that in view of the change of circumstances, the likelihood of
confusion has ripened into a fresh cause of action for infringement and
passing off on account of actual confusion. In support of such contention,
the plaintiff relies on the decisions in Kellogg vs. Exxon Corp, 54 U.S.P.Q.2D
(BNA) 1413, Assam Roofing Ltd. & Anr. vs. JSB Cement LLP & Anr. 2015
SCC OnLine Cal 6581, Chemco Plastic Industries Pvt. Ltd. vs. Chemco Plast
2024 SCC OnLine Bom 1607, Bengal Waterproof Ltd. v. Bombay Waterproof
Mfg. Co., (1997) 1 SCC 99 (1997) 1 SCC 99, Patil Automation (P) Ltd. v.
Rakheja Engineers (P) Ltd., (2022) 10 SCC 1 and Dhanbad Fuels Private
Limited vs. Union of India and Another 2025 SCC OnLine SC 1129.
9. Section 12A of the Commercial Courts Act, 2015 provides as follows:
“12A. Pre-Institution Mediation and Settlement.-(1) A suit, which
does not contemplate any urgent interim relief under this Act, shall not
be instituted unless the plaintiff exhausts the remedy of pre-institution
mediation in accordance with such manner and procedure as may be
prescribed by rules made by the Central Government.
(2) The Central Government may, by notification, authorise the
Authorities constituted under the Legal Services Authorities Act, 1987
(39 of 1987), for the purposes of pre-institution mediation.
(3) Notwithstanding anything contained in the Legal Services
Authorities Act, 1987 (39 of 1987), the Authority authorised by the
Central Government under sub-section (2) shall complete the process of
mediation within a period of three months from the date of application
made by the plaintiff under sub-section (1):
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Provided that the period of mediation may be extended for a further
period of two months with the consent of the parties:
Provided further that, the period during which the parties remained
occupied with the pre-institution mediation, such period shall not be
computed for the purpose of limitation under the Limitation Act, 1963
(36 of 1963).
(4) If the parties to the commercial dispute arrive at a settlement, the
same shall be reduced into writing and shall be signed by the parties
to the dispute and the mediator.
(5) The settlement arrived at under this section shall have the same
status and effect as if it is an arbitral award on agreed terms under
sub-section (4) of section 30 of the Arbitration and Conciliation Act,
1996 (26 of 1996).]”
10. The above requirement of the Pre Institution Mediation and Settlement is
mandatory. The section permits suits to be filed in cases where the plaintiff
contemplates urgent interim reliefs. However, there is no exception in case of
intellectual property matters. The limits of the Court in assessing urgency have
also been outlined. [Yamini Manohar v. T.K.D. Keerthi, (2024) 5 SCC 815 @ paras
10-12; Chemco Plastic Industries Pvt. Ltd. vs. Chemco Plast (2024) SCC
OnLine Bom 1607 @ paras 24, 31-33 and Dhanbad Fuels Private Limited vs.
Union of India and Anr. (2025) SCC OnLine SC 1129 @ para 42].
11. The case made out in the plaint is that the plaintiff only came to learn of
the impugned mark in the year 2022. It is asserted that the plaintiff was
informed of the existence of the defendant’s use of the impugned mark
when actual confusion for the first time had taken place which gave rise to
the cause of action for the plaintiff to institute this proceeding. The
admitted documents which have been disclosed in this proceeding would
suggest that the defendant has been in existence for more than 30 years
using the domain name www.itclab.com. This is admittedly a prior domain
name which belongs to and has been openly, continuously and
uninterruptedly been used by the defendant. There are sufficient materials
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by way of posts on Facebook (2019) Linkedin (1988) to demonstrate that
the defendant has been using the impugned name. Significantly, the
plaintiff and the defendant have also had direct business dealings prior to
2022 i.e. as far back as in 2011, 2013, 2015 and 2021 and the plaintiff is
deemed to have had knowledge of the existence of the impugned mark and
trade name. This fact is well documented. As a consequence, on the basis
of the documents on record, it would appear that the defendant had been
using the impugned name and mark long prior to the year 2022. These
facts have not been disclosed in the plaint. To this extent, there has been
suppression and distortion. There is no merit in the contention that the
non disclosure of past dealings were on account of a bona fide error. The
indisputable facts would suggest that there were prior business dealings
between the parties and there is no whisper of the same in the plaint. The
explanation put forward to justify the omission to refer to the past dealings
is unconvincing and no credence can be given to same. The knowledge of
the impugned mark and trade name as pleaded is camouflaged, misleading
and distorted and warrants revocation of dispensation granted under
section 12A of the Act.
12. ITC LABS was in use by the defendant much prior to 2022 and the
plaintiff itself had placed orders on the defendant knowing fully well that
the defendant was carrying on business as ITC LABS. In such
circumstances, there is direct knowledge attributable to the plaintiff and
the entire case of urgency has been camouflaged. It is true that by an ad
interim order dated 31 August 2022, this Court had vacated the ex parte
order dated 6 July 2022 but this is not relevant in the adjudication of the
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present application. Similarly, the question of acquiescence relates to the
merits of the case and need not be gone into at this stage of the proceeding.
13. Insofar as the case of the progressive encroachment is sought to be made
out, the same is of little assistance to the plaintiff. In this context, the
decision relied on in Kellogg vs. Exxon Corp (Supra) is distinguishable. In
that decision, the defendant was initially not in direct competition and had
only encroached on the business of Kelloggs by moving into the same or
similar category of goods and thereby becoming a competitor. Similarly,
reliance on the decision in Assam Roofing vs. JSB Cement AIR 2016
Calcutta 41 is also misplaced. In that decision, the plaintiff had been
manufacturing since 1997 and the defendant commenced manufacturing
in April, 2015. The entire case of the respondent of having conceived of the
impugned mark and commenced business operates on the very same day
was on facts found to be unbelievable.
14. In Dhanbad Fuels (Supra) it has been held as follows:
“41. At this juncture, we would like to point out that the Trial Court in the
instant case, while refusing to allow the application of the appellant
under Order VII Rule 11, observed that the application, having been filed
at a belated stage of more than an year after the filing of the written
statement, was liable to be rejected. However, the decision in Patil
Automation (supra) does not leave any scope for a similar approach to be
adopted by courts anymore in cases where Section 12A has not been
duly complied with. The Court in the said decision has also observed that
even if a plea of rejection of plaint is not taken by the defendant, the
courts must suo motu take note of the non- compliance with Section 12A
and reject the plaint, and the stage of the suit proceedings is not a valid
consideration to be looked into while rejecting a plaint. However, as we
shall discuss in more detail in the subsequent paragraphs, the decision
in Patil Automation (supra) makes the consequence of rejection of plaint
for non- compliance prospectively applicable for suits instituted post
20.08.2022.
62(j). In suits instituted without complying with Section 12A of the 2015
Act prior to 20.08.2022 which are pending adjudication before the Trial
Court, the court shall keep the suit in abeyance and refer the parties to
8time-bound mediation in accordance with Section 12A of the 2015 Act if
an objection is raised by the defendant by filing an application under
Order VII Rule 11, or in cases where any of the parties expresses an
intent to resolve the dispute by mediation.”
15. This suit was filed and admitted on 22nd June, 2022 i.e. prior to 20th
August, 2022. In view of the directions in Dhanbad Fuels vs. Union of India
(Supra), there shall be a stay of this suit i.e. IP-COM/42/2024. The parties
are directed to exhaust the mandatory mechanism as provided under the
Act and undergo compulsory mediation as contemplated under section 12A
of the Act within a period of three months from the date of this order. The
fact that during the hearing of the interlocutory application, the parties had
attempted mediation which failed is no substitute to circumvent the
mandatory requirement of the Act. The legislative policy cannot be
circumvented in such manner. Liberty is granted to both the parties to take
appropriate steps upon conclusion of Mediation or earlier if the
circumstances so warrant. With the above directions, GA/2/2022 stands
allowed.
(Ravi Krishan Kapur, J.)