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2025 Supreme(Online)(Mad) 31837
IN THE HIGH COURT OF JUDICATURE AT MADRAS
R.KALAIMATHI, J
M/s.Sakthi Sai Safety Glass India – Appellant
Versus
Compagnie De Saint-Gobain – Respondent
OSA (CAD) Nos.15 to 19 of 2025
For the Appellants/Petitioners: Mr.G.Ramesh
For the Respondents: Mr.P.S.Raman, Mr. M.S.Bharath
Trademark infringement involving rights in rem and public interest is non-arbitrable; interim injunctions can be granted despite procedural non-compliance where urgency exists and balance of convenience favors trademark owner.
Headnote:(A) Commercial Courts Act, 2015 - Section 12A - Pre-suit mediation requirement - Interim relief granted despite non-compliance due to urgency; Arbitration and Conciliation Act, 1996 - Section 8 - Arbitration clause not invoked timely - Trademark Law - Infringement and passing off - Trade mark rights as rights in rem - Non-arbitrability of trademark infringement disputes affecting public rights. (Paras 5, 9-13, 14-17)
(B) Interim injunction - Purpose and conditions - Balance of convenience favors the trademark owner due to likelihood of consumer confusion; Contract expiration ends licence to use trade mark. (Paras 2-4, 16-17)
Facts of the case:
Plaintiffs (respondents) entered into a contract with defendants (appellants) permitting use of the trademark "Saint-Gobain" during the contract period. Upon expiry and non-renewal of the contract, defendants continued to use the trademark, including branding suggestive of association with plaintiffs despite sourcing products from other manufacturers. Plaintiffs filed for interim injunction restraining defendants from use of the trademark post-contract expiry. Defendants contested on grounds including non-compliance with statutory pre-suit mediation, the suit's maintainability given arbitration clause, and denial of infringement.
Findings of Court:
The Court held that the pre-suit mediation requirement under Section 12A was dispensed with due to urgency and conduct of parties. It found the trademark infringement dispute to be in rem affecting the public, thus non-arbitrable under the fourfold test from Vidya Drolia v Durga Trading. The balance of convenience tilted in favor of plaintiffs due to potential consumer confusion. The defendants’ refusal to comply with cease and desist and breach of undertaking supported prima facie case for interim injunction. No suppression of material facts found.
Issues: Whether the interim injunction should be granted despite non-compliance with Section 12A; Whether the arbitration clause bars the suit or referral to arbitration; Whether the defendants’ use of the trademark post-contract expiry constitutes infringement and passing off; Whether the dispute is arbitrable given public rights involved.
Ratio Decidendi: The Court ruled that trademark infringement disputes involving rights in rem affecting public interest are not arbitrable and must be adjudicated by courts. The interim injunction was warranted to prevent consumer deception and protect the trademark owner's rights post-contract expiry. Pre-suit mediation may be bypassed in urgent cases. Conduct of parties waives arbitration defense when court assumes jurisdiction and parties contest merits.
Result: Appeals dismissed; interim injunction upheld; costs imposed on appellants; procedural directions given for suit progression.
| Table of Content |
|---|
| 1. background of contract and trademark infringement allegations (Para 1 , 2 , 3 , 4) |
| 2. issues relating to pre-suit mediation and non-compliance (Para 5 , 6 , 8) |
| 3. arbitrability and rights in rem doctrine under arbitration law (Para 9 , 10 , 11 , 12 , 13) |
| 4. court's factual findings on suppression and trademark infringement (Para 14 , 15 , 16) |
| 5. balance of convenience and final injunction order (Para 17 , 18 , 19) |
(Judgment of the Court was delivered by the Hon'ble Chief Justice)
The appeals have been filed impugning a common order dated 09.12.2024 passed by the learned Single Judge by which an interim injunction was given in favour of plaintiffs, that is respondents herein, in respect of the contract entered into between plaintiffs and first defendant, who is the first appellant.
2. The interim injunction granted, in effect, is restraining defendants, that is appellants from directly or indirectly dealing with any products or rendering any services under the Trade Mark or any other mark which is identical / similar to plaintiffs' Trade Mark "Saint-Gobain" and committing infringement, passing off, copyright in the plaintiffs' original artistic work, domain name and dilution of plaintiffs' Trade Mark "Saint-Gobain".
3. Plaintiffs are stated to be a reputed player in the glass manufacturing industry and have been using the Trade Mark "Saint- Gobain" for many years. The details of the credentials are disclosed in the plaint. It is recorded in the impugned order that these facts have not been disputed by defendants.
4. Respondents (hereinafter referred to as 'plaintiffs') had appointed appellants (hereinafter referred to as 'defendants') as their glass processor and under a contract, defendants were permitted to use the plaintiffs' Trade Mark "Saint-Gobain". It is stated that the period of contract had expired by efflux of time and was not renewed. It is plaintiffs' case that the agreement having expired, the relationship with defendants has come to an end. Therefore, defendants were no longer permitted to use the plaintiffs' Trade Mark "Saint-Gobain". Despite issuing Cease and Desist notice, defendants continued to use the plaintiffs' Trade Mark "Saint-Gobain" for sale and distribution of toughened glass. The glass was manufactured by some other party/parties. It is plaintiffs' case that defendants had even given an undertaking to stop using the Trade Mark "Saint-Gobain", which undertaking was breached.
5. Once plaintiffs' came to know that defendants have re-commenced the use of plaintiffs' Trade Mark "SAINT-GOBAIN", plaintiffs filed the interim injunction applications without going for pre-suit mediation as prescribed under Section 12A of the Commercial Courts Act, 2015. Plaintiffs have filed an affidavit stating that as urgent reliefs were required, it became a necessity for plaintiffs to approach the Court without exhausting the statutory requirement of Section 12A of the Commercial Courts Act, 2015, by going for pre-suit mediation.
6. Defendants filed a counter denying the allegations and raised the defence of - a) plaintiffs not having complied with the mandatory requirement of Section 12A of the Commercial Courts Act, 2015, the relief sought should not be granted; b) as the claim arises out of a contract entered into between the parties, Trademark Infringement Suit is not maintainable; c) the contracts provide for arbitration and therefore, the matter should be referred to arbitration; d) there has been suppression of material facts by plaintiffs; e) despite defendants were ready and willing to go for an amicable settlement and there were exchange of correspondences to that effect, present suit has been filed without complying with the requirement of Section 12A of the Commercial Courts Act, 2015 and hence, the suit is not maintainable.
7. It is plaintiffs' case, which of course not disputed by defendants, is that plaintiffs' Trade Mark "SAINT-GOBAIN" has attained a distinctive identity by long usage. According to p
