The order of naming defendants in intellectual property suits is usually determined as a matter of strategy before a suit is filed. Up until now, it has been common practice to name an innocuous defendant as the first defendant in a suit for reasons such as acquiring jurisdiction of a court, evading mention in a cause list or to conceal the filing to ensure that a main defendant does not appear in court. J. Prathiba Singh of the Delhi High Court, in a recent case of Bata India Limited vs Chawla Boot House & Anr, [CS (COMM) 110/2019], has come down heavily on this practice holding that “such a practice having been held to be impermissible by the Division Bench, the same cannot be permitted to continue in any manner”.
The Delhi High Court has, in a circular dated April 5, 2019, directed the court’s Registry that, in each IP suit with multiple defendants, a plaintiff must submit undertakings at the end of the Memo of Parties stating that the defendant no. 1 is the main contesting defendant in the suit.
While the Delhi High Court’s circular is a step in the right direction, it may be prudent to exercise caution in this process as the primary defendant may not always be easily ascertainable in IP suits. More often than not, infringing products are discovered through retailers and/or other third parties involved in the trading channel, and the main manufacturer is not always easily discoverable. In such cases, the main contesting defendant is revealed to the plaintiff only after the initial stages of the suit, and any concealment, may therefore, not be deliberate. Thus, the courts must exercise proper judgment while differentiating between a suit in which the proper party has been made the primary defendant and a suit in which there is an honest lack of knowledge of the primary defendant.