The Bombay High Court has clarified that where both trademark infringement and passing off causes of action arise in Kerala, Metro Brands (plaintiff) cannot invoke Section 134(2) of the Trade Marks Act to club the claims and force a small Kerala-based defendant to litigate in Mumbai, particularly when the plaintiff itself operates 18 Metro stores in the defendant’s home State. The Court held that under Section 134(2) of the Trade Marks Act, the expression ‘notwithstanding anything contained in the CPC’ does not oust the applicability of Section 20 CPC, and it merely provides an additional remedy to the plaintiff to file a suit where it resides or carries on business.
Where a plaintiff has multiple offices, it has a limited choice, i.e., it may either bring a suit under Section 134(2) within the jurisdiction of its registered/principal office, or invoke Section 20 CPC where the defendant resides or where the cause of action arose wholly or in part. A plaintiff cannot invoke Section 134(2) to drag the defendant to a distant location where there is neither cause of action nor any defendant, added the Court.
The Court further held that leave under Clause 14 of the Letters Patent is a discretionary power, and the primary consideration for its exercise is avoiding multiplicity of litigation. Where both causes of action fall within the same jurisdiction (here, Kerala), there is no question of multiplicity of proceedings, and the plaintiff has a clear choice of forum. The balance of convenience lies in conducting the trial where the cause of action arose, since relevant witnesses, documents, transactions, and evidence are likely to be available there. The defendant, being a small entity without any nexus to Mumbai, would face genuine hardship if forced to litigate in a distant forum, while the plaintiff itself operates 18 stores in Kerala.
A Single Judge Bench of Justice Gauri Godse observed that the principal place of business is the place from which the company actually controls its business activities. A plaintiff with multiple offices cannot mechanically invoke Section 134(2) at its registered office if the cause of action and the defendant are located elsewhere. Thus, the primary consideration is avoiding multiplicity of litigation. Where both causes of action fall within the same forum (here, Kerala), there is no multiplicity to avoid, and the plaintiff has a clear choice of forum.
The Court further observed that a plaintiff with widespread operations cannot use its Mumbai (or any other) registered office as a default launchpad to drag distant defendants into a preferred forum. The plaintiff must either sue at its registered/principal office under Section 134(2) or at the defendant’s location/cause of action under Section 20 CPC but cannot combine both to create jurisdiction where none exists.
Briefly, Metro Brands Limited, the well-known footwear retailer with its registered office in Mumbai, filed a commercial IPR suit in the Bombay High Court against Met Brands Private Limited, a Kerala-based entity that designs, manufactures, and distributes clothing, headgear, and footwear under the mark ‘METBRANDS/METBRANDS SHOES & BAGS’. Metro Brands claimed to be the registered proprietor of the house mark ‘METRO’ and its graphical representation, and alleged that the defendant’s use of an identical/deceptively similar mark constituted infringement of its registered trademark, passing off, and unfair competition. As of December 2024, the plaintiff was operating 895 stores across 203 cities in 31 Indian states and union territories, including 18 Metro stores in the State of Kerala, where the defendant carries on business.
Since the plaintiff’s registered address is within Mumbai, the suit was filed in the Bombay High Court under Section 134 of the Trade Marks Act, 1999, which permits a plaintiff to institute a suit for infringement where it resides or carries on business. However, the cause of action for passing off arose in Kerala, beyond the territorial jurisdiction of the Bombay High Court. The plaintiff therefore sought leave under Clause 14 of the Letters Patent to join the cause of action for passing off with the cause of action for trademark infringement.
