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2022 Supreme(Del) 1988
IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
Vishal Pipes Limited - Appellant
Versus
Bhavya Pipe Industry - Respondent
FAO-IPD 1 of 2022 & CM Appls. 12-14 of 2022
Decided On : 03-06-2022
Subject
Intellectual Property Law - Trademark Disputes
Act Referred
COMMERCIAL COURTS ACT: S.2, S.12
CONSTITUTION OF INDIA: Art.236
COPYRIGHT ACT: S.62
COURT FEES ACT: S.7
DESIGNS ACT: S.22
PATENTS ACT: S.104
PROTECTION OF PLANT VARIETIES AND FARMERS' RIGHTS ACT: S.65
SUITS VALUATION ACT: S.8, S.9
TRADE MARKS ACT: S.134
Headnote
Facts of the case:
The appellant, Vishal Pipes Limited, challenged an order that denied an injunction against Bhavya Pipe Industry regarding trademark infringement of 'BPI' compared to its own 'VPL INDIA', declining an ex parte order and local commissioner appointment due to jurisdictional confusion over the value of the dispute. (Paras 1-3)
Findings of Court:
The ruling reinforced that IPR suits, regardless of valuation, must be adjudicated in Commercial Courts for alignment with statutory mandates, and the practice of undervaluation to avoid requisite legal standards was denounced. (Paras 42-43)
Issues: The court explored the jurisdictional implications of IPR suits below the pecuniary threshold of Rs.3 lakh and the potential for misapplication of valuational discretion. (Paras 3, 63)
Ratio Decidendi: The Court concluded that IPR cases valued below specified amounts could undermine the objectives of the Commercial Courts Act and encouraged judicial scrutiny to prevent abusive litigation practices such as forum shopping. (Paras 62-66)
Result: The suit must be instituted before a designated Commercial Court with a valuation of at least Rs.3 lakh; directives issued regarding pending cases. (Para 68)
S.K. Bansal, Rishi Bansal, Ajay Amitabh Suman and Pankaj Kumar, Advocates, for the Plaintiff.
Akhil Sibal, Senior Advocate with Nikhil Chawla, Ms. Asavari Jain, Advocates assisting the court.
Ms. Swathi Sukumar, Amicus Curiae Naveen Nagarjuna and Ms
JUDGMENT
Prathiba M. Singh, J.
I. BACKGROUND
1. The present is an appeal challenging the order dated 28th January, 2022 passed by the ld. ADJ-03, Patiala House Courts, New Delhi in the suit bearing TM 1/2022 titled Vishal Pipes Limited v. Bhavya Pipe Industry, which is a suit seeking permanent injunction against infringement of registered trademark and copyright as also reliefs for passing off, delivery up, rendition of accounts, etc. for usage of the trademark `BPI', which is stated to be similar to the Appellant's/Plaintiff's (hereinafter "Plaintiff") trademark `VPL INDIA'. The grievance of the Plaintiff was that the ld. ADJ had refused to grant an ex parte order of injunction and had also failed to appoint a Local Commissioner for seizure of the alleged infringing goods.
2. When the matter was listed on 2nd March, 2022, the Court had noticed that while trademark disputes are being adjudicated at the District Level by Commercial Courts, the present order had been passed by the ld. ADJ who was not designated as a Commercial Court. Upon enquiring the reason for the same, the Court was informed that the suit is valued below Rs.3,00,000/- and thus, in view of the pecuniary provisions in the COMMERCIAL COURTS ACT , 2015 (hereinafter "CCA"), where the `specified value' for `commercial disputes' is 3,00,000/-, read with Section 134 the TRADE MARKS ACT , 1999 (hereinafter " TRADE MARKS ACT ") where a suit relating to trademarks is to be filed and heard only by a District Court, the suit was marked to a District Judge, not designated as a Commercial Court. The logical corollary of this is that the provisions of the CCA also are not made applicable to such a suit. The Court found this situation to be quite peculiar and, accordingly, passed the following order on 2nd March, 2022:
"10. Another peculiar question has also arisen in this suit. It is noticed that the matter arises out of an order passed by the ld. ADJ-03 in the Patiala House Courts Complex, Delhi, who is not designated as a "commercial court". On the previous date being 28th February, 2021, this Court raised a query as to whether a District Court which is not designated as a "commercial court" can hear IPR matters in view of the provisions of the COMMERCIAL COURTS ACT , 2015 and the Trademarks Act, 1999.
11. Today, Mr. Bansal, ld. Counsel, has made his submissions in this regard. Mr. Sidharth Chopra, ld. counsel who is present in Court, has also made his submissions. Ms. Swathi Sukumar, ld. Counsel, who was appointed as Amicus Curiae on the previous date, has also partly made her submissions.
12. Considering the importance of the matter, Mr. Akhil Sibal, ld. Senior Counsel who is present in Court, has also been requested to examine this issue and assist the Court on the next date. Other counsels, who wish to make submissions, are also permitted to make submissions in this regard."
3. The question that arises for consideration in this matter is as to whether IPR suits filed before District Courts, valued below Rs.3 lakhs, ought to be listed before and adjudicated upon by the District Judges (Commercial) under the provisions of the CCA or by District Judges (non-Commercial), as normal civil suits.
4. Owing to the importance of the issue that has arisen before the Court for consideration, various counsels as also the Amicus Curiae have made their submissions and filed written notes of arguments.
II. SUBMISSIONS OF THE LD. COUNSEL FOR THE PLAINTIFF
5. On behalf of the Plaintiff, submissions were made by Mr. S.K. Bansal, ld. counsel who represented the Plaintiff even before the District Court. The same are as under:
