Delhi High Court Sends Singapore Firm's Trademark Licence Dispute to SIAC Arbitration

By Imaduddin

Photo: Ahmed Subhan Sial / Pexels

Can a trademark owner avoid an arbitration clause by suing for infringement in court? The Delhi High Court has said no, at least where the real fight is about whether a former licensee may keep using the mark. In a judgment of 28 October 2026 (CS(COMM) 661/2024), reported by LiveLaw on 30 October, the court sent a suit by Singapore-based Utracon Corporation to arbitration under the Singapore International Arbitration Centre (SIAC) Rules.

Background

Utracon says it adopted the UTRACON mark in 1998 and has held Indian registrations since August 2012. Its former Indian subsidiary, incorporated in Chennai in 2004, was allowed to use the mark under a licence signed on 22 March 2012, for ten years from 1 April 2011. Utracon says the licence ended on 31 March 2021, when the company should have stopped using the marks and changed its corporate name.

Utracon sued for infringement and passing off. It alleged that the former subsidiary kept using the mark and that its directors set up affiliated companies with UTRACON in their names. The defendants dispute this and say the licence was extended. They also pointed to a share sale agreement signed the same day, for which the Supreme Court of India had appointed a sole arbitrator on 30 April 2026, and warned of parallel proceedings.

The court's reasoning

Justice Purushaindra Kumar Kaurav allowed the application to refer the case to arbitration under Section 8 of the Arbitration and Conciliation Act, 1996. The key points, as reported by LiveLaw and LawLens:

• Use, not registration. The core of the suit was "the post-term use of the marks by an ex-licensee and its affiliates". Utracon was not challenging the validity of any registration or seeking cancellation. Disputes about registration affect rights against the whole world and stay with courts and the registry. A contractual fight over who may use a mark concerns only the parties.
• No escape by drafting. "A party cannot avoid an arbitration agreement merely by adding a relief which, by itself, may not be arbitrable."
• No exclusive forum. The provisions of the Trade Marks Act 1999 and the Copyright Act 1957 on which courts can hear infringement suits do not create an exclusive forum that rules out arbitration.
• Non-signatories. The fact that some defendants never signed the licence did not stop the reference. Utracon itself had described the group as a "single economic unit". Whether those affiliates and directors are bound by the arbitration clause is for the tribunal to decide.

The court said the result would be the same under Section 45, the provision for foreign-seated arbitrations. It left the seat, procedural rules and applicable law to the tribunal. The suit was disposed of, and the court stressed that it had not ruled on the merits.

Why this matters for cross-border licensing

Many ASEAN brand owners license their marks to Indian subsidiaries, joint ventures or distributors under contracts with Singapore arbitration clauses. This decision shows Indian courts will generally hold the parties to that choice when a licence ends badly.

• Drafting: make the arbitration clause expressly cover post-termination use, name changes and affiliates.
• Strategy: framing a claim as infringement or passing off will not, by itself, keep it in court.
• Registry matters remain separate: cancellation or rectification of a registration still goes to the registry or the courts.

Sources

• LawLens, "Delhi HC Sends UTRACON Trademark Suit Over Alleged Post-Licence Use To Arbitration" (judgment of 28 Oct 2026, CS(COMM) 661/2024)
• LiveLaw, "Claim Of Trademark Infringement Cannot Be Used To Avoid Arbitration In Trademark Licensing Dispute: Delhi HC" (30 Oct 2026)