Background
Novenco Building and Industry A/S filed a patent and design infringement suit against Xero Energy Engineering Solutions before the Himachal Pradesh High Court. The Single Judge rejected the suit in August 2024 for non-compliance with Section 12A's mandatory mediation requirement, reasoning that a six-month gap between Novenco's discovery of the alleged infringement and the filing of suit negated any claim of "urgency." The Division Bench affirmed on appeal.
The Supreme Court's Five-Point Test
Drawing on Patil Automation Pvt. Ltd. v. Rakheja Engineers, Yamini Manohar v. T.K.D. Keerthi, and Dhanbad Fuels (P) Ltd. v. Union of India, the Court (Justices Sanjay Kumar and Alok Aradhe) laid down a five-point framework for the Section 12A urgency exception: (i) pre-institution mediation is mandatory by default; (ii) exemption applies only where the plaint and annexed documents clearly demonstrate genuine need for urgent interim intervention; (iii) courts assess urgency from factors like immediacy of peril, irreparable harm, and whether delay would render eventual relief ineffective; (iv) a proforma urgency prayer used merely to sidestep mediation will be disregarded; and (v) the assessment is made from the plaintiff's standpoint on the pleadings — not by adjudicating the underlying merits.
The Court's Holding
The Court found both lower courts erred by assessing Novenco's entitlement to urgent relief on the merits of the infringement claim, rather than from the plaintiff's standpoint as disclosed in the pleadings. Critically, it held: "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." Because IP infringement is typically continuing in nature, urgency should be assessed against the cumulative, ongoing injury — not against how much time elapsed since the plaintiff first discovered it.
Practical Implications
- Plaintiffs in continuing IP infringement matters should plead the ongoing nature of the injury explicitly and specifically, rather than relying on generic urgency language, to withstand a Section 12A objection.
- A gap between discovery of infringement and filing suit is not, on its own, fatal to the urgency exemption — but the plaint should still address why the delay occurred.
- Defendants should expect this five-point framework to be applied narrowly against attempts to use Section 12A as a delaying tactic in genuine ongoing-infringement disputes.