Bombay High Court Refuses Metro Brands’ Bid to Combine Trademark Infringement and Passing-Off Claims in Mumbai; Holds Kerala Is Convenient Forum for Entire Dispute
Bombay High Court Rejects Metro Brands’ Clause 14 Leave Petition; Holds Trademark Infringement and Passing-Off Claims Can Both Be Tried Conveniently in Kerala
Facts
Metro Brands Limited filed a Commercial IPR Suit against Met Brands Private Limited, a Kerala-based company, alleging infringement of its registered METRO trademarks. Metro alleged that the defendant was designing, manufacturing and distributing clothing, headgear and footwear under the marks METBRANDS / METBRANDS SHOES & BAGS.
Metro Brands’ registered office is in Mumbai. It claimed that, as of December 2024, it operated 895 stores in 203 cities across 31 States and Union Territories, including 18 METRO stores in Kerala. The defendant was situated and carrying on business in Kerala.
Metro invoked the Bombay High Court’s jurisdiction for the registered trademark infringement claim under Section 134 of the Trade Marks Act, 1999, relying upon its registered address in Mumbai.
However, Metro itself pleaded that the cause of action for passing off had arisen in Kerala. It therefore filed the present Leave Petition under Clause 14 of the Bombay High Court Letters Patent, seeking permission to combine the passing-off cause of action with its trademark infringement action before the Bombay High Court.
Issues
The principal questions were:
- Whether Metro Brands should be granted leave under Clause 14 of the Letters Patent to join its passing-off claim arising in Kerala with its trademark infringement claim before the Bombay High Court.
- Whether Metro’s registered office in Mumbai was sufficient to justify its choice of Bombay as the forum.
- How Section 134(2) of the Trade Marks Act, Section 20 CPC and Clauses 12 and 14 of the Letters Patent interact in such cases.
- Whether avoidance of multiplicity of proceedings justified granting leave when both claims could be pursued together in Kerala.
- Whether convenience and hardship favoured Mumbai or Kerala.
Plaintiff’s Arguments
Metro Brands argued that its registered office was situated within the Bombay High Court’s jurisdiction and that it was therefore entitled to institute its trademark infringement action in Mumbai under Section 134(2) of the Trade Marks Act.
It relied on Food Corporation of India v. Evdomen Corporation to argue that Sections 16, 17 and 20 CPC do not directly govern the Bombay High Court’s Original Civil Jurisdiction, which is determined by Clause 12 of the Letters Patent.
Metro further relied upon Indian Performing Rights Society Ltd. v. Sanjay Dalia, arguing that a company’s registered office is generally its principal place of business because the controlling power of the company is ordinarily exercised there. On that basis, it argued that Mumbai was a legitimate forum notwithstanding the passing-off cause having arisen in Kerala.
Relying on Jagdish Gopal Kamath v. Lime and Chilli Hospitality Services Pvt. Ltd., Metro submitted that the primary purpose of Clause 14 is to avoid multiplicity of litigation and that inconvenience to a defendant ordinarily should not defeat leave unless actual hardship or mala fides are established.
It therefore sought to combine both infringement and passing-off claims in one proceeding in Mumbai.
Defendant’s Arguments
Met Brands opposed the petition, arguing that allowing the Kerala passing-off cause to be brought to Mumbai would encourage forum shopping.
The defendant emphasized that it was a smaller Kerala-based entity and that forcing it to litigate in Mumbai, despite the passing-off tort having occurred in Kerala, would impose serious hardship.
It further pointed out that Metro Brands itself had a substantial presence in Kerala through 18 METRO stores.
The defendant argued that Metro’s mere registered address in Mumbai could not automatically justify bringing the entire dispute before the Bombay High Court, particularly where the plaintiff itself conducted business in Kerala and the relevant cause of action arose there.
Analysis of the Law
Clause 14 Is Discretionary
The High Court held that leave under Clause 14 is not automatic.
Drawing from Jagdish Kamath, the Court identified the governing considerations:
- grant of leave is discretionary;
- avoidance of multiplicity is an important consideration;
- inconvenience to the defendant alone ordinarily does not defeat leave;
- undue hardship may nevertheless justify refusal;
- leave may be refused where the suit constitutes abuse of process; and
- the Court’s inquiry at the leave stage should remain limited and should not effectively determine the merits of the suit.
Section 134 Gives an Additional Forum, Not Unlimited Choice
The Court extensively considered Indian Performing Rights Society Ltd. v. Sanjay Dalia.
It noted that Section 134(2) of the Trade Marks Act gives a trademark proprietor an additional forum based upon where it resides or carries on business. But the statutory privilege was not intended to permit a plaintiff to choose an unrelated or inconvenient forum and drag the defendant there.
Importantly, the Court reiterated that passing-off actions under Section 134(1)(c) continue to be governed by the ordinary jurisdictional principles.
Manugraph Principle
The Court relied upon Manugraph India Ltd. v. Simarq Technologies Pvt. Ltd., which explained Sanjay Dalia.
A trademark plaintiff may sue where its principal or registered office is located under Section 134(2), or invoke the ordinary jurisdictional rules and sue where the defendant resides/carries on business or where the cause of action arises.
However, the statutory privilege cannot be manipulated to select a remote location having no meaningful connection with the defendant or the cause of action.
Metro’s Pleadings Were Important
The Court found that Metro had pleaded its registered address in Mumbai but had not pleaded that Mumbai was its exclusive principal place of business from where all its business activities were controlled.
On the contrary, Metro itself pleaded a nationwide presence comprising 895 stores and expressly admitted operating 18 stores in Kerala.
For the passing-off claim, neither the relevant cause of action nor the defendant’s residence/business was within Bombay.
Accordingly, the Court held that Clause 12 did not independently provide Bombay with jurisdiction over that passing-off cause.
Precedent Analysis
Food Corporation of India v. Evdomen Corporation, (1999) 2 SCC 446
The Supreme Court held that Sections 16, 17 and 20 CPC do not govern the Bombay High Court’s Ordinary Original Civil Jurisdiction in the usual manner because Section 120 CPC excludes their application. Original Side jurisdiction is determined by Clause 12 of the Letters Patent.
Indian Performing Rights Society Ltd. v. Sanjay Dalia, (2015) 10 SCC 161
This was central to the Court’s reasoning.
The decision recognizes the additional forum given to intellectual-property plaintiffs while preventing abuse of that statutory privilege. It also establishes that a passing-off action continues to be governed by ordinary jurisdictional principles rather than the special forum under Section 134(2).
Manugraph India Ltd. v. Simarq Technologies Pvt. Ltd., 2016 SCC OnLine Bom 5334
The judgment explains that a plaintiff may legitimately sue at its principal/registered office or at a forum available under the ordinary CPC rules. What Sanjay Dalia prevents is abandonment of those natural forums in favour of an unrelated satellite-office jurisdiction.
Jagdish Gopal Kamath v. Lime and Chilli Hospitality Services Pvt. Ltd.
This precedent establishes that avoiding multiplicity of litigation is a primary consideration under Clause 14, while simultaneously preserving judicial discretion to refuse leave in cases involving hardship, abuse or other compelling considerations.
Shree Sai Plast Pvt. Ltd. v. Prince Pipes & Fittings Ltd.
The Court noted that a company’s registered office need not invariably be its principal place of business. The relevant consideration may be the place from which the company actually controls its business activities.
Court’s Reasoning
The decisive consideration was that Kerala provided one natural and convenient forum for the entire dispute.
The defendant carried on business there. The passing-off cause of action admittedly arose there. Metro itself operated 18 stores there. Consequently, both infringement and passing-off claims could be pursued in Kerala.
The Court observed that the place where the cause of action arose would ordinarily also be convenient for trial because the relevant witnesses, documents, transactions and evidence would likely be located there.
It therefore held that a plaintiff’s choice under Section 134(2) “must be exercised reasonably and must be justified.” Clause 14 leave was not an empty formality but a discretionary judicial power.
Metro principally relied upon avoidance of multiplicity. But that concern did not arise because it could pursue both causes of action together in Kerala.
The balance of convenience therefore favoured Kerala. The defendant was a smaller Kerala entity with no substantial nexus to Bombay, whereas Metro itself had 18 stores in Kerala. The Court consequently found Metro’s choice of Mumbai insufficiently justified for exercising Clause 14 discretion in its favour.
Conclusion
The Bombay High Court dismissed Metro Brands Limited’s Leave Petition under Clause 14 of the Letters Patent.
The Court held, in substance, that although Section 134(2) of the Trade Marks Act provides an additional jurisdictional forum to a trademark proprietor, the plaintiff’s choice is not absolute when it seeks discretionary leave to combine another cause of action.
Since:
- Met Brands was based in Kerala;
- the passing-off cause arose in Kerala;
- Metro itself operated 18 stores in Kerala;
- both infringement and passing-off claims could be pursued there; and
- witnesses, documents and evidence were likely to be available there,
Kerala was the more convenient and appropriate forum for the entire dispute.
The Leave Petition was therefore dismissed, with liberty to Metro Brands to take appropriate steps in accordance with law.
Case Details
Case: Metro Brands Limited v. Met Brands Private Limited
Citation: 2026:BHC-OS:19660
Court: Bombay High Court, Ordinary Original Civil Jurisdiction
Case Number: Leave Petition (L) No. 12067 of 2025 in Commercial IPR Suit (L) No. 12028 of 2025
Judge: Justice Gauri Godse
Reserved on: 16 June 2026
Pronounced on: 3 September 2026
Result: Leave Petition dismissed; Court declined to permit joinder of the Kerala passing-off cause of action in Mumbai and left Metro Brands free to take appropriate proceedings in accordance with law.
