The court ruled that Section 12-A of the Commercial Courts Act applies to intellectual property suits, emphasizing that delay in filing does not negate urgency for interim relief.

ORDER :

R.I. Chagla J.

1. By this Interim Application, the Applicant / Original Defendant Nos.1 and 2 have sought rejection of the Plaint under Order VII Rule 11 read with Section 151 of the Code of Civil Procedure, 1908 on the ground that the Plaintiff has not exhausted the mandatory recourse of pre-lititation mediation stipulated under Section 12-A of the Commercial Courts Act, 2015 (“the C C Act”).

2. The Defendant Nos.1 and 2 have in their Interim Application sought invocation of Section 151 read with Order VII Rule 11(d) of Code of Civil Procedure, 1908 for rejection of Plaint. The Defendant Nos.1 and 2 have raised certain issues during their arguments and written submissions filed before this Court which read thus:-

(i) Whether in a Suit seeking protection of an intellectual property filed under the Commercial Courts Act, 2015 (“the CC Act”) in which the Plaintiff bases its claim on an alleged continuing wrong, whether the provisions of Section 12-A of the CC Act will have no application? Or Whether the Court will take into account the delay in approaching the Court as a relevant factor and the pleaded cause of action/s and relegate the parties to mediation under Section 12-A of the Act if it concludes no such urgency exists?

(ii) Whether a Court merely on the basis of correspondence exchanged between the parties, prior to the institution of a lis, can conclude that mediation is not viable and hence give a go-by to Section 12-A of the CC Act, which is mandatory?

3. It is pertinent to note certain relevant dates for the purpose of this Application, which are as under:

(i) The subject movie – Vikram Vedha (“movie”) was theatrically released on 30th September, 2022;

(ii) The movie was released on Jio Cinema (OTT Platform) on 12th May, 2023;

(iii) It is the Plaintiff’s case that it learnt of the alleged infringement in May, 2023 (para 23/pg.28 of the Plaint);

(iv) Plaintiff addressed its first cease and desist notice on 2nd June, 2023;

(v) Parties exchanged correspondence inter se resting with the last letter addressed by Plaintiff to Defendant No.3 on 9th August, 2023;

(vi) The present Suit was filed on 15th April, 2024; and

(vii) Present Suit moved for ad-interim reliefs on 9th August, 2024.

4. The case of the Defendant Nos.1 and 2 is that upon a bare reading of the Plaint, the documents filed along with Plaint and Plaintiff’s Interim Application filed under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 seeking interim / ad-interim reliefs against the Defendants, it is evident that the same contemplate no urgency.

5. The Defendant Nos.1 and 2 have in their Interim Application stated that in view of the Plaintiff having become aware of alleged infringement in May, 2023 no steps were taken to institute any proceedings to protect its alleged copyright for a period of 11 months. Further and more importantly, apart from claiming that the alleged infringement of copyright of the Plaintiff is continuing, there is no explanation forthcoming as to why the Plaintiff waited for a period of 11 months to institute the present Suit.

6. Mr. Mohit Khanna appearing for the Defendant Nos.1 and 2 has submitted that while adjudicating whether the parties ought to be relegated to mediation under Section 12-A, the test to be applied and considered is:-

(i) delay (as one of the factors);

(ii) position of the parties;

(iii) developments in the intervening period; and

(iv) conduct of the parties.

7. Mr Khanna has submitted that from the factual background it becomes plain and apparent that the reason why the Plaintiff has preferred the Interim Application under Order XXXIX Rule 1 and 2 under guise of contemplating a relief is only to paralyze the application of Section 12-A of the C.C. Act. This is so because the Plaintiff became aware of the alleged infringement in May 2023 when the first cause of action arose. However, the Plaintiff has not been able to give any reasons and / or explanation for its inaction in instituting the present Suit after the