IPR · Vakil Help Desk

Act Promptly and Choose the Right Forum: Calcutta High Court on a Delayed Counterfeit-Trademark Action

Vakil Help Desk News: the Calcutta High Court has declined interim relief in a counterfeit-cigarettes trademark dispute, faulting the brand owner's unexplained delay and its decision to approach the police instead of promptly moving the commercial court.

Vakil Help Desk News, IPR. A brand owner who wants urgent protection must act quickly and in the right forum. The Calcutta High Court underlined this while dismissing an appeal in ITC Limited v. SMM Tobacco & Ors.

The dispute

The brand owner alleged that counterfeit cigarettes were being sold under its registered marks. It sought urgent interim relief and an exemption from pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.

What the Court held

  • There was an unexplained delay in approaching the civil court, which weakened the claim of urgency needed to bypass pre-institution mediation.
  • Having first taken the matter to the police rather than promptly seeking civil remedies told against the plea for urgent interim relief.
  • The appeal was dismissed, leaving the brand owner to pursue the suit through the regular route.

Why it matters

Urgency is judged by conduct. Sitting on a known infringement, or choosing the wrong forum first, can cost a rights-holder the very interim relief it needs — and can mean completing mediation before the suit can go ahead.

What this means for you

If you discover counterfeiting or infringement, move fast and through the right door: a prompt civil action supports a plea for urgent interim relief and exemption from Section 12A mediation, while delay undercuts it. A criminal complaint and a civil suit serve different purposes — plan both together from the start. We assess the right strategy and act quickly to protect your brand.

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