Introduction

The law of trademark jurisdiction often presents a deceptively simple question: where can a proprietor institute proceedings against an alleged infringer?

Section 134 of the Trade Marks Act, 1999 provides trademark proprietors with an important jurisdictional advantage. Yet, that statutory advantage does not operate in isolation, particularly when a suit combines trademark infringement with passing off.

The Bombay High Court’s decision in Metro Brands Limited v. Met Brands Private Limited, pronounced on 3 September 2026, provides an important clarification on this distinction. The Court refused to permit Metro Brands Limited to use its Mumbai registered office and the jurisdictional benefit under Section 134 of the Trade Marks Act to bring a passing-off claim arising in Kerala before the Bombay High Court.

The judgment is significant not because it determines the merits of the competing marks, but because it examines the limits of forum selection in composite intellectual property litigation.

The Dispute Before the Court

Metro Brands Limited approached the Bombay High Court against Met Brands Private Limited, a Kerala-based entity engaged in designing, manufacturing and distributing clothing, headgear and footwear under the names “METBRANDS” and “METBRANDS SHOES & BAGS.” Metro Brands alleged infringement of its registered “METRO” mark and also pleaded passing off and unfair competition.
The defendant carried on business in Kerala, while Metro Brands had its registered office in Mumbai. Importantly, Metro Brands itself operated 18 stores in Kerala and acknowledged that the alleged passing-off cause of action had arisen there.
The suit was instituted in Bombay under Section 134 of the Trade Marks Act. Since the passing-off component arose outside Bombay, Metro Brands sought leave under Clause 14 of the Bombay High Court Letters Patent to join that cause of action with its infringement claim.

The question, therefore, was not simply whether Metro Brands could sue in Bombay for trademark infringement. The more difficult question was whether the Court should exercise its discretionary power to allow the passing-off claim arising in Kerala to travel with the infringement claim.

Section 134 and Passing Off: Two Different Jurisdictional Routes

The Court’s reasoning rests substantially on the distinction drawn by the Supreme Court in Indian Performing Rights Society Ltd. v. Sanjay Dalia.

Section 134(2) of the Trade Marks Act creates an additional forum for suits concerning the matters covered by Section 134(1)(a) and (b), including infringement proceedings. However, the statutory provision does not displace the ordinary territorial principles applicable to a passing-off claim under Section 134(1)(c).

The Bombay High Court specifically relied upon Sanjay Dalia for the proposition that the special jurisdictional provision cannot be interpreted as giving a plaintiff unrestricted freedom to institute proceedings at any location merely because it maintains some corporate presence there. The passing-off component continues to be governed by the applicable principles under Section 20 of the CPC and, in the Bombay High Court’s original jurisdiction, the Letters Patent.

This distinction is critical. A plaintiff cannot automatically transform a jurisdiction available for infringement into jurisdiction for every other cause of action pleaded in the same suit.

Clause 14 Is Discretionary, Not Automatic

The second important aspect of the judgment concerns Clause 14 of the Letters Patent.

The Court reiterated from Jagdish Gopal Kamath v. Lime and Chilli Hospitality Services Pvt. Ltd. that grant of leave under Clause 14 is discretionary. Its primary consideration is the avoidance of multiplicity of litigation. At the same time, leave can be refused where the suit is not maintainable, where undue hardship would result, or where the exercise of jurisdiction would amount to an abuse of process.

The Court therefore rejected any suggestion that Clause 14 operates as a procedural formality once one component of a composite suit falls within Bombay’s jurisdiction.

The discretion must be judicially exercised.

The Registered Office Is Not the End of the Inquiry

Metro Brands principally relied upon the fact that its registered office was situated in Mumbai. The Court, however, found this insufficient.

Significantly, the plaintiff had not pleaded that Mumbai was its exclusive principal place of business or the location from which it controlled its entire business. This omission assumed importance because Sanjay Dalia and subsequent Bombay High Court decisions recognise that the registered office and principal place of business are not necessarily synonymous in every factual situation.

The Court referred to Shree Sai Plast to reiterate that the principal place of business depends upon where the company’s business activities are actually controlled. A registered office cannot, by itself, become a universal jurisdictional anchor irrespective of the factual circumstances.

This is particularly relevant for large companies having extensive branch networks across India.

Why Kerala Was the Appropriate Forum

The Court’s conclusion was reinforced by the factual nexus with Kerala.

The defendant carried on business in Kerala. The passing-off cause of action, according to the plaintiff’s own pleadings, arose in Kerala. Metro Brands itself operated 18 stores there. Relevant witnesses, documents, transactions and evidence were consequently more likely to be available in that jurisdiction.

The Court therefore found that the balance of convenience favoured Kerala.

Equally significant was the Court’s rejection of the argument that Clause 14 should be exercised merely to avoid separate proceedings. Since both claims could be pursued in Kerala, there was no meaningful multiplicity of litigation that required the Bombay High Court to retain the passing-off claim.

The defendant’s position also carried weight. The Court noted that the defendant was a smaller Kerala-based entity with no demonstrated nexus to Bombay, whereas the plaintiff itself had substantial business presence in Kerala.

The Broader Principle: Jurisdiction Must Follow Legal Nexus

The judgment ultimately reinforces a broader principle: statutory jurisdictional privileges must be exercised within their intended boundaries.

Section 134 of the Trade Marks Act is designed to provide convenience to trademark proprietors. It is not intended to create an unrestricted mechanism for selecting a forum having little or no connection with the particular cause of action.

The decision also demonstrates why pleadings concerning territorial jurisdiction cannot be treated as boilerplate. A plaintiff seeking to rely upon its registered office or principal place of business must establish the relevant jurisdictional foundation with precision.

For businesses with pan-India operations, this becomes especially important. Merely maintaining stores, branches or subordinate offices across multiple States does not necessarily mean that every dispute arising in those locations can be consolidated before the court where the registered office happens to be situated.

Implications for Trademark Owners

The judgment carries several practical lessons.

First, infringement and passing-off claims should be analysed independently from a jurisdictional perspective, even where they arise from the same factual dispute.

Second, plaintiffs should plead clearly why the chosen forum constitutes their principal or registered place of business and, where relevant, where actual business control is exercised.

Third, Section 134 should not be treated as an unrestricted jurisdictional advantage. The special statutory forum must operate consistently with the principles recognised in Sanjay Dalia.

Fourth, Clause 14 applications require a genuine jurisdictional and procedural justification. Avoidance of multiplicity is important, but it cannot be invoked where the plaintiff already has an appropriate common forum available.

Conclusion

Metro Brands v. Met Brands is a useful reminder that jurisdiction is not merely a procedural gateway; it is a substantive aspect of litigation strategy.

The Bombay High Court refused to allow the statutory forum available for trademark infringement to automatically carry along a passing-off claim whose territorial foundation lay elsewhere. By focusing on the actual cause of action, the defendant’s location, trial convenience, the plaintiff’s business presence and the absence of genuine multiplicity, the Court preserved the distinction between a statutory jurisdictional privilege and an unfettered choice of forum.

For trademark owners, the message is clear: Section 134 may expand the available forum for infringement proceedings, but it does not eliminate the territorial discipline governing passing off.

In an era of nationwide brands and geographically dispersed commercial activity, the decision underscores the importance of getting jurisdiction right at the very inception of an intellectual property dispute.