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of <h1>Continuing patent and design infringement claims with interim injunction-Section 12A urgency assessed from plaint, delay not decisive; orders set aside.</h1> Section 12A of the Commercial Courts Act, 2015 was interpreted to determine whether a commercial suit alleging continuing infringement of patent and ... Continuing infringement of intellectual property - Allegation of infringement of petitioner's patent and design by the respondent. - Determination of the expression ‘contemplates any urgent interim relief’ in Section 12A of the Commercial Courts Act, 2015 in its application to an action for infringement of intellectual property rights - whether a suit alleging continuing infringement of patent and design rights, accompanied by a prayer for interim injunction, can be said to contemplate urgent relief within the meaning of Section 12A of the Act, notwithstanding certain delay in its institution? HELD THAT:- The subject matter of the present action is continuing infringement of intellectual property. Each act of manufacture, sale, or offer for sale of the infringing product constitutes a fresh wrong and recurring cause of action. It is well settled in law that mere delay in bringing an action does not legalise an infringement and the same cannot defeat the right of the proprietor to seek injunctive relief against the dishonest user-Midas Hygiene Industries Private Ltd. & Anr. (supra). The appellant has pleaded that Xero Energy, its former distributor, has dishonestly appropriated its proprietary designs and patents to manufacture and market identical fans under deceptively similar name. The accompanying material demonstrates that such infringing activity is continuing and causing immediate and irreparable harm to the appellant’s business reputation, goodwill and proprietary rights. The appellant’s prayer for injunction cannot be characterised as mere camouflage to evade mediation. It is a real grievance founded on the continuing nature of infringement and irreparable prejudice likely to be caused by the delay. The court must look beyond time lag and evaluate the substance of the plea for interim protection. The insistence of pre-institution mediation in a situation of ongoing infringement, in effect, would render the plaintiff remediless allowing the infringer to continue to profit under the protection of procedural formality. Section 12A of the Act was not intended to achieve such kind of anomalous result. The learned Single Judge as well as the Division Bench of the High Court erred in construing the test for urgent relief enumerated in Section 12A of the Act, in as much as the courts have proceeded to examine the entitlement of the appellant to urgent relief based on the merits of the case rather than looking at the urgency as is evident from the plaint and the documents annexed thereto from the standpoint of the plaintiff. The High Court has proceeded on the premise that lapse of time between the appellant’s discovery of infringement and filing of suit negated the element of urgency. Such an approach is contrary to the principles laid down by the decisions of this Court. The High Court has also failed to take into account that the present action is one of the continuous infringement of intellectual property. In actions alleging continuing infringement of intellectual property rights, urgency must be assessed in the context of the ongoing injury and the public interest in preventing deception - Mere delay in institution of a suit by itself, does not negate urgency when the infringement is continuing. The impugned judgment dated 28.08.2024 of the learned Single Judge in Commercial Suit No. 13 of 2024 and the judgment dated 13.11.2024 of the Division Bench of the High Court in Commercial Appeal No.1 of 2024 are quashed and set aside - Appeal allowed. 1. ISSUES PRESENTED AND CONSIDERED (i) Whether a commercial suit alleging continuing infringement of patent and design rights, accompanied by a prayer for interim injunction, 'contemplates any urgent interim relief' within the meaning of Section 12A of the Commercial Courts Act, 2015, so as to be exempt from mandatory pre-institution mediation. (ii) Whether delay in instituting an intellectual property infringement action (despite earlier notice/discovery) can, by itself, negate 'urgency' for the purposes of Section 12A and justify rejection of the plaint for non-compliance with pre-institution mediation. (iii) Whether, while applying Section 12A, the court must assess urgency from the standpoint of the plaintiff based on the plaint and annexed documents, rather than examining entitlement to interim relief on merits at that stage. 2. ISSUE-WISE DETAILED ANALYSIS Issue (i) & (iii): Meaning and application of 'contemplates any urgent interim relief' under Section 12A in an intellectual property infringement suit Legal framework (as discussed by the Court): Section 12A introduces compulsory pre-institution mediation for commercial suits, except where the suit 'contemplates any urgent interim relief'. The Court treated the exemption as turning on whether the plaint and supporting materials disclose a genuine need for urgent interim intervention, assessed on a wholesome reading and from the plaintiff's standpoint; courts are to conduct a limited inquiry into plausibility of urgency rather than merits of interim relief. Interpretation and reasoning: The Court held that in an action complaining of continuing infringement of intellectual property, urgency is inherently tied to the persistence of the alleged wrongful acts and the ongoing injury. The plaint and annexed material were treated as demonstrating continuing infringing manufacture/marketing and the likelihood of immediate and irreparable harm to business reputation, goodwill, and proprietary rights. The Court additionally treated public interest-preventing consumer deception and market confusion-as reinforcing immediacy. It rejected the view that the injunction prayer was a mere device to bypass mediation, reasoning that forcing pre-institution mediation in the face of ongoing infringement could, in effect, leave the right-holder without meaningful protection while infringement continues, an outcome Section 12A was not intended to produce. Conclusions: A suit alleging continuing infringement of intellectual property rights, supported by pleadings/material showing ongoing harm and accompanied by a prayer for interim injunction, can 'contemplate urgent interim relief' under Section 12A. Urgency must be assessed from the plaintiff's standpoint on the basis of the plaint and documents, not by testing the merits of interim relief at the threshold. Issue (ii): Effect of delay on 'urgency' for purposes of Section 12A in continuing infringement cases Legal framework (as discussed by the Court): The Court proceeded on the premise that continuing infringement constitutes a recurring wrong, and that delay does not legalise infringement. For Section 12A, the relevant inquiry is whether urgency is indicated by the nature of the wrong and ongoing peril, rather than solely by elapsed time between discovery/notice and filing. Interpretation and reasoning: The Court reasoned that each act of manufacture, sale, or offer for sale of an infringing product constitutes a fresh wrong and recurring cause of action; therefore, the 'age' of the initial cause is not determinative where the peril persists. It held the High Court erred by treating time lag as negating urgency and by effectively evaluating entitlement on merits rather than assessing whether urgent interim intervention was genuinely contemplated. The Court emphasised that ongoing infringement aggravates injury daily and erodes market standing, and that the public interest in preventing deception gives 'immediacy' to the relief sought. Conclusions: Mere delay in institution of the suit, by itself, does not negate urgency under Section 12A when infringement is continuing. The High Court's approach-treating delay as fatal to urgency and rejecting the plaint for non-compliance with Section 12A-was incorrect. Final dispositive outcome (material to decision): The Court quashed the orders rejecting the plaint for non-compliance with Section 12A, held the suit did contemplate urgent interim relief in the context of continuing intellectual property infringement, and restored the suit to be decided on merits in accordance with law.
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