Mediation is not a mandatory requirement in a suit alleging continuing infringement, even in a delayed suit  

Novenco Building and Industry vs Xero Energy Engineering Solutions Pvt Ltd & Anr

Factual Background: The Appellant, a Danish company manufacturing industrial fans under the ‘Novenco ZerAx’ brand, sued its former distributor, Xero Energy, and Aeronaut Fans, alleging the manufacture and sale of identical fans under a deceptively similar name, infringing the appellant's patents and design registrations. The appellant sought an ad interiminjunction and exemption from pre-institution mediation.

Lower Court Decisions: The Single Judge and the Division Bench of the High Court of Himachal Pradesh rejected the plaint. They held that pre-institution mediation under Section 12A is mandatory and that the appellant lacked the requisite "genuine urgency" to bypass it, citing a delay of six months between the expert inspection (December 2023) and the filing of the suit (June 2024), and noting that the initial cease-and-desist notice was issued as early as December 20228. The High Court concluded that mere continuous infringement does not override statutory mediation requirements.

Supreme Court Decision and Rationale: The Supreme Court set aside the High Court judgments and restored the suit to be proceeded with on its merits. The Court clarified the proper test for urgency under Section 12A:

1. Continuing Infringement: The subject matter involves continuing infringement of IP, where each act (manufacture, sale) constitutes a fresh wrong and recurring cause of action.

2. Delay Not Fatal: Mere delay in bringing an action does not negate urgency when the infringement is continuing, as it cannot legalize the infringement.

3. Standpoint of the Plaintiff: The lower courts erred by evaluating the appellant's entitlement to relief based on the merits and delay, rather than looking at the urgency from the standpoint of the plaintiff as evidenced in the plaint and supporting documents.

4. Inherent Urgency and Public Interest: Urgency is inherent in the nature of the wrong in continuous IP infringement; the peril lies in its persistence, not the age of the cause. The public interest in preventing consumer confusion and protecting the sanctity of trade further imparts a "colour of immediacy" to the reliefs sought.

5. Purpose of Section 12A: Requiring mandatory mediation in a situation of ongoing infringement would render the plaintiff remediless, allowing the infringer to profit under the protection of a procedural formality, which was not the intent of Section 12A.

The Court concluded that when an action alleges continuing infringement, urgency must be assessed in the context of the ongoing injury and the public interest in preventing deception. The Court noted that mediation between the parties, attempted while the appeal was pending, had already failed on June 23, 2025.

[ Supreme Court of India ( 2025 INSC 1256 decided on 27.10.2025)]