Calcutta High Court Holds ‘Groundless Threat’ Suit Cannot Survive Once Trademark Infringement Action Is Filed
Calcutta High Court Holds ‘Groundless Threat’ Suit Cannot Survive Once Trademark Infringement Action Is Filed
Introduction
The Calcutta High Court has held that a suit alleging groundless threats of trademark infringement cannot continue once the trademark proprietor diligently institutes a substantive infringement action. Justice Ravi Krishan Kapur dismissed a suit filed by Neelam Gupta against Esme Consumer Private Limited after the latter filed an infringement suit in a Delhi Court. The Court ruled that once a formal infringement proceeding is instituted, the cause of action under provisions relating to groundless threats automatically ceases to exist.
Factual Background
The dispute arose when Esme Consumer Private Limited, the registered proprietor of the trademark “BLUE HEAVEN”, issued a cease-and-desist notice to Neelam Gupta in September 2025 alleging infringement. Gupta claimed that she was the bona fide owner and user of the registered mark “GRACE HEAVEN”, which she had been using since 2019 for cosmetics. She contended that the notice issued by Esme Consumer constituted an unjustified legal threat, and therefore approached the Calcutta High Court seeking relief against what she described as groundless threats of legal proceedings. While the suit was pending before the Calcutta High Court, Esme Consumer instituted a formal trademark and copyright infringement suit against Gupta before the Commercial Court at Saket, New Delhi.
Procedural Background
Gupta initiated the present proceedings before the Calcutta High Court invoking Section 142 of the Trade Marks Act, 1999 and Section 60 of the Copyright Act, 1957, which provide remedies against unjustified threats of legal action relating to intellectual property rights. During the pendency of the proceedings, Esme Consumer filed a substantive infringement suit in Delhi alleging violation of its trademark rights. The defendant argued that once such proceedings were initiated, the groundless threat suit automatically became unsustainable.
Issues
1. Whether a suit alleging groundless threats of trademark infringement can survive once the proprietor files an infringement action.
2. Whether a claim for damages under the groundless threat provisions can continue independently after the infringement suit is instituted.
Contentions of the Parties
The plaintiff, Neelam Gupta, argued that the cease-and-desist notice issued by Esme Consumer constituted a groundless threat of legal proceedings. She contended that she had legitimate rights over the mark “GRACE HEAVEN” and that the defendant’s threats caused commercial harm and uncertainty. Gupta further maintained that even if an infringement suit had subsequently been filed, her claim for damages under the groundless threats provisions should continue independently.
Esme Consumer Private Limited argued that once an infringement action was instituted before the Delhi court, the statutory remedy for groundless threats ceased to operate. It submitted that the law permits such suits only until the registered proprietor initiates genuine infringement proceedings with due diligence. Therefore, according to the defendant, the present suit had become infructuous and was liable to be dismissed.
Reasoning and Analysis
The Court examined Section 142 of the Trade Marks Act, 1999 and Section 60 of the Copyright Act, 1957, both of which provide remedies to persons aggrieved by unjustified threats of legal action relating to intellectual property rights. Justice Kapur observed that these provisions are designed to protect individuals from harassment through baseless legal threats. However, the protection is temporary and ceases once the proprietor institutes an actual infringement suit with due diligence.
The Court clarified that once a substantive infringement proceeding is filed, the alleged threats cannot be treated as groundless. The legal dispute must then be adjudicated in the infringement proceedings themselves. The Court also rejected the plaintiff’s argument that the claim for damages could survive independently. It held that the claim for damages was intrinsically linked to the principal relief sought against the alleged threats. Once the main cause of action ceased to exist, the ancillary relief automatically became untenable. Justice Kapur further noted that permitting both the threat suit and the infringement action to continue simultaneously would result in unnecessary multiplicity of proceedings. The Court emphasised that courts have the authority to reject a plaint suo motu if the suit becomes barred by law.
Decision
The Calcutta High Court held that once the trademark proprietor instituted a formal infringement suit, the cause of action under the provisions relating to groundless threats automatically extinguished.
Accordingly, the Court dismissed the suit filed by Neelam Gupta along with the accompanying applications, holding that all disputes between the parties must now be resolved in the infringement proceedings pending before the Delhi court.
In this case the appellant was represented by Advocates Subhasish Sengupta, Akash Munshi and Aditya Rattan Tiwary. Meanwhile the defendant was represented by Advocates Soumya Ray Chowdhury, Sarosij Dasgupta, Sumit Biswas, Aakash Mukherjee, Samina Khanum and Rajashree Boowmick.
