Is a trademark dispute arbitrable in India when the brand owner sues a former licensee for infringement? On 28 October 2026 the Delhi High Court said yes, where the dispute turns on the licence. In Utracon Corporation v Ucon PT Structural System, the court referred the whole suit to arbitration under the licence agreement.
The case is Utracon Corporation Pte Ltd v Ucon PT Structural System Private Limited and others, CS(COMM) 661/2024. Justice Purushaindra Kumar Kaurav decided an application under section 8 of the Arbitration and Conciliation Act, 1996. Judgment was reserved on 12 October 2026 and pronounced on 28 October 2026.
- A suit for infringement and passing off against a former licensee was referred to arbitration under the licence.
- The court said a party cannot avoid an arbitration agreement by adding a relief that may not be arbitrable on its own.
- Registration and cancellation of a trade mark remain outside arbitration because they bind everyone.
- Section 134 of the Trade Marks Act, 1999 names the court for infringement suits. It does not exclude arbitration.
- Affiliates and directors who did not sign the licence were sent to arbitration too. The tribunal will decide whether they are bound.
The facts
Utracon Corporation is a Singapore company. It says it adopted the UTRACON mark in 1998 and holds Indian registrations from 14 August 2012. Its former Indian subsidiary was allowed to use the mark under a licence agreement dated 22 March 2012.
The licence ran for ten years from 1 April 2011. It was signed in furtherance of a sale of shares agreement of the same date. Utracon says the licence expired on 31 March 2021. The former subsidiary says it was extended to 31 March 2022.
Utracon alleged that the former licensee kept using the marks after the term. It also alleged that the directors set up affiliated companies with UTRACON in their names. It sued for infringement of trade mark and copyright, passing off, damages and transfer of a domain name. It also asked for a declaration that UTRACON is a well known mark.
Clause 14 of the licence provides for arbitration under the rules of the Singapore International Arbitration Centre, with Singapore as the venue. Separately, the Supreme Court had appointed a sole arbitrator on 30 April 2026 for disputes under the share agreement.
What the court decided
The suit is covered by the licence. The court identified the core questions. Could an ex licensee keep using the marks? Was the licence extended? What survived the term? All are disputes regarding the licence. The expiry of the licence did not end the arbitration clause. Utracon could not rely on the licence for its cause of action and avoid its dispute resolution clause.
The dispute is in personam. The court applied two Supreme Court rulings. These are Booz Allen and Hamilton v SBI Home Finance (2011) 5 SCC 532 and Vidya Drolia v Durga Trading Corporation (2021) 2 SCC 1. Vidya Drolia treats the grant of patents and the registration of trade marks as sovereign functions with effect against everyone. Those are not arbitrable. A claim against an identified party about its right to use a mark is different. The court also relied on the Supreme Court's ruling in K. Mangayarkarasi v N.J. Sundaresan that not all trade mark matters fall outside arbitration.
No exclusive forum. Section 134 of the Trade Marks Act fixes the level of court for an infringement suit. Section 62 of the Copyright Act does the same. They create no special forum and do not bar arbitration. The court followed earlier Delhi rulings in Liberty Footwear and Hero Electric.
Added reliefs do not change the result. The prayer for withdrawal of the defendants' trade mark applications is a relief against them personally. The well known declaration was not the foundation of the suit. In the court's words, "A party cannot avoid an arbitration agreement merely by adding a relief which, by itself, may not be arbitrable." Utracon may still seek well known status from the Registrar under rule 124 of the Trade Marks Rules, 2017.
The whole suit goes. Utracon had pleaded that the defendants were a single economic unit. Clauses 3.5 and 3.6 of the licence also placed obligations on affiliates. So the court treated the other defendants as prima facie claiming through the licensee. Relying on Cox and Kings, it left to the tribunal whether they are bound. Referring everything avoided splitting the suit between two forums.
Section 8 or section 45. The venue is Singapore, so section 45 may be the correct provision. The court held that the outcome would be the same under either. It left the seat and the governing rules to the tribunal.
What the court did not decide
- It did not decide whether the licence was extended or whether the defendants infringe.
- It did not decide the seat of the arbitration or which rules govern it.
- It did not decide whether the affiliates and directors are bound by the arbitration clause.
- It did not decide whether UTRACON is a well known mark.
- Its observations are prima facie and limited to the section 8 application.
What stays with the courts and the Registry
The ruling does not make every trade mark dispute arbitrable. An arbitral tribunal cannot grant, register, rectify or cancel a mark so as to bind the public. Oppositions, rectification and well known status still belong to the Registrar or the court. Infringement claims against strangers with no contract also stay in court.
The line is drawn by the source of the right in dispute. Sometimes the defendant's claim to use the mark comes from a licence, assignment, settlement or family arrangement. If that document has an arbitration clause, the court is likely to refer the dispute.
How the US, Europe and the UK compare
United States. The Federal Arbitration Act, 9 U.S.C. § 2, makes written arbitration agreements in commercial contracts valid and enforceable. Courts regularly send Lanham Act claims between contracting parties to arbitration. For patents, 35 U.S.C. § 294 expressly allows arbitration of validity and infringement under a contract, and an award binds only the parties. The Delhi court noted section 294. Changes to the federal trademark register still go through the USPTO or the courts.
European Union. Under Regulation (EU) 2017/1001, the EUIPO revokes an EU trade mark or declares it invalid. An EU trade mark court can also do so on a counterclaim. Article 124 gives those courts exclusive jurisdiction over infringement actions and counterclaims for revocation or invalidity. An arbitral award cannot revoke or invalidate an EU trade mark. Licence and coexistence disputes between the parties can be arbitrated, for example before the WIPO Arbitration and Mediation Center.
United Kingdom. English law starts from party autonomy under the Arbitration Act 1996. A tribunal can decide a licence or infringement dispute between the parties. Its view on validity is generally accepted to bind only them and does not change the UK register.
Singapore. Section 26B of the International Arbitration Act 1994, added in 2019, declares IP disputes arbitrable between the parties. The Delhi court cited it because the licence chose Singapore as the venue.
Practical steps
- Brand owners should decide whether they want arbitration for licence disputes before they sign. If they want urgent court relief, they should say so in the clause.
- Name the seat. Utracon's clause named only a venue. That left the seat and the applicable provision open. A clear seat avoids a fight over section 8 and section 45.
- Cover affiliates. State whether group companies, successors and directors are bound by the licence and its dispute clause.
- Plan the exit. Set out what happens to the mark, company names and domain names when the licence ends. Post term obligations were at the centre of this case.
- Licensees facing an infringement suit should check the licence, assignment or settlement for an arbitration clause. A section 8 application must be filed not later than the date of submitting the first statement on the substance of the dispute.
- Keep Registry work separate. Oppositions, rectification and well known status must still be pursued before the Registrar.
Our trademark services include licence drafting, enforcement and Registry proceedings in India. For related reading, see our notes on using a registered trademark without permission and well known trademark protection across classes in India.
Frequently asked questions
Is a trademark dispute arbitrable in India?
Disputes between identified parties about the right to use a mark under a contract are arbitrable. Registration, rectification and cancellation of a mark are not, because they bind everyone. Utracon v Ucon applies this line to a former licensee.
Can a brand owner avoid arbitration by suing for infringement?
Not where the defendant's use rests on a licence with an arbitration clause. The Delhi High Court held that adding a relief which may not be arbitrable on its own does not defeat the clause.
Does section 134 of the Trade Marks Act bar arbitration?
No. The court held that section 134 only identifies the court in which an infringement suit is filed. It does not create an exclusive forum.