Does citing your trade mark registrations in a plaint automatically turn a disparagement suit into a “commercial dispute”? The Calcutta High Court answered no in Sun Pharmaceutical Industries Limited v Emami Limited1 (judgment dated 17 August 2026), setting aside a trial court’s ad interim injunction that had restrained Sun Pharma from airing an advertisement referencing Emami’s “Zandu Balm,” “Mentho Plus Balm,” and “Zandu Ultra Power Balm” products. A Division Bench of Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya held that a suit for disparagement simpliciter does not fall within Section 2(1)(c)(xvii)2 of the Commercial Courts Act, 2015 merely because the plaint makes incidental reference to IP registrations, and separately held that mere market leadership cannot convert a generic word into an exclusive brand identifier. For litigators handling comparative-advertising disputes, the order is useful on both a jurisdictional point and a substantive one.
Emami sued Sun Pharma before an ordinary civil court, alleging that an advertisement disparaged its Ayurvedic pain-relief products, commonly referred to as “Balm”, by portraying balms generally as ineffective, sticky, and unpleasant. Emami sought a permanent injunction, a corrigendum and apology, destruction of the offending video’s master tape, and damages, valuing the suit at Rs 50 crore. A trial court granted an ex parte ad interim injunction. Sun Pharma appealed, arguing the suit was actually a “commercial dispute” under the Commercial Courts Act. The plaint referred to Emami’s trade mark, copyright, and design registrations and ought to have been filed before a Commercial Court, not an ordinary civil court. Emami countered that the suit was one of disparagement, a tort akin to defamation, and that its references to IP registrations were merely incidental, offered to establish its business history and the 57% market share underlying its case.
Issue One: Was This a “Commercial Dispute”?
The Court framed two issues, deciding both against Emami’s opponent, that is, in Emami’s favour on maintainability, before ruling against Emami on the merits. On whether the suit qualified as a commercial dispute, the Court held that the items listed in Section 2(1)(c)3 The Commercial Courts Act are exhaustive, relying on Bharat Coop. Bank v Coop. Bank Employees Union4, Everstrong Sales v Binod Kumar Mahipal5, and Ambalal Sarabhai Enterprises v K.S. Infraspace6, the last of which the Court noted “highlighted the fact that the object of the CC Act was speedy remedy, thus calling for a strict interpretation of the provisions.” While acknowledging that the phrases “arising out of” and “relating to” in Clause (xvii) give the provision a “wider perspective,” the Court held that the dispute’s cause of action must still be traceable to intellectual property rights, not merely mention them in passing.
Applying this, the Court drew what it called “a fundamental distinction between disparagement of a product and infringement/passing off of trademark,” reasoning that while disparagement “denigrates” a product, infringement or passing off instead “acknowledges and recognized” the trade mark’s worth by seeking to emulate it “mimicry is the best form of appreciation.” The Court found Emami’s own plaint bore this out: the plaint expressly sought leave under Order II Rule 27 CPC to sue separately for infringement, copyright violation, and passing off which the Court read as Emami itself drawing “a clear line of distinction” between the present suit and any IP claim. On Section 29(8)8 of the Trade Marks Act, which requires the registered mark itself to feature in the offending advertisement, the Court found this precondition unmet: “the offending commercial does not refer to or show and/or even allude to any trademark or copyright of the plaintiff but merely seeks to refer to balms in general.” The suit was therefore held maintainable before the ordinary civil court.
Issue Two: Was There a Prima Facie Case?
Having cleared the jurisdictional hurdle, Emami still lost on the merits. The Court noted that Emami had argued for “generic disparagement” that the advertisement denigrated balms as a category but found “despite a thorough scrutiny of the plaint, we fail to find any pleading as to generic disparagement.” Instead, the plaint’s own case was that, given Emami’s 57% market share, any reference to “Balm” necessarily meant Emami a claim of direct, not generic, disparagement, which the advertisement’s content did not support. The Court described “Balm” as “a generic term, referring more to the consistency and texture of a product than a particular species of products,” and held that “merely due to the plaintiff/respondent no.1 holding 57% of share in the segment, it is to be presumed that the term ‘Balm’ is inextricably and exclusively linked with the products of the plaintiff and none else” could not be sustained. Finding no direct correlation between the generic container shown in the advertisement and Emami’s actual product consistent with the Court’s own earlier ruling in Emami v Dabur India9. The Bench held no prima facie case of disparagement was made out at all, and allowed the appeal.
Significance of the Ruling
The Court was careful to cabin its own ruling. It expressly recorded that its “observations… are tentative in nature, arrived at only for the purpose of deciding the present appeal, arising from an ex parte ad interim injunction, and shall not have any binding effect at further stages of the injunction application or the suit pending in the Trial Court.” The trial court was directed to dispose of the injunction application afresh, “preferably within 6 weeks.” Read together, the two holdings send a clear signal on drafting and pleading strategy: a plaintiff cannot rely on IP registrations to anchor jurisdiction while simultaneously reserving those very claims for a separate suit, and a plaintiff relying on generic disparagement must plead it as such market dominance pleaded as direct disparagement will not be read generously to cover an unpleaded generic theory.
Citations
Expositor(s): Adv. Pratistha Dahiya
