Court emphasizes discretionary nature of Clause 14 of Letters Patent, balancing convenience, avoidance of multiplicity of litigation, and forum justification in trademark infringement and passing off case
In a significant judgment dated September 3, 2026, the Bombay High Court, presided over by Justice Gauri Godse, dismissed the leave petition filed by Metro Brands Limited seeking to join causes of action arising beyond the court's territorial jurisdiction in a trademark infringement and passing off suit against Met Brands Private Limited.
The dispute arose from Metro Brands Limited's claim that the respondent, Met Brands Private Limited, infringed its registered trademark "METRO" by using a deceptively similar mark "METBRANDS" in Kerala, where the defendant is based and conducts business. Metro Brands operates extensively across India, including 18 stores in Kerala, while its registered office is in Mumbai, within the jurisdiction of the Bombay High Court.
Metro Brands filed the suit for injunction and damages in Mumbai under Section 134 of the Trade Marks Act, 1999, relying on the provision allowing suit where the plaintiff's registered office is located. However, because the cause of action for passing off and damages arose in Kerala, outside Mumbai's jurisdiction, the plaintiff sought leave under Clause 14 of the Bombay High Court Letters Patent to join the out-of-jurisdiction cause of action with the infringement suit.
The Court carefully examined the competing submissions. The plaintiff relied on Supreme Court precedents such as Food Corporation of India v. Evdomen Corporation and Indian Performing Rights Society Ltd. v. Sanjay Dalia, which recognize the plaintiff's right to sue at its principal or registered office for trademark infringement. Metro Brands also cited Bombay High Court decisions elaborating the scope of Clause 14, emphasizing that the primary consideration is to avoid multiplicity of litigation.
Conversely, the defendant argued that the cause of action arose wholly in Kerala where it carries on business and that forcing litigation in Mumbai would cause undue hardship and encourage forum shopping. The defense highlighted that the plaintiff itself operates stores in Kerala and that the suit could be conveniently tried there.
Justice Godse reiterated the settled legal position that Clause 14 jurisdiction is discretionary and must be exercised after considering the balance of convenience, avoidance of multiplicity of litigation, and justifiable choice of forum by the plaintiff. The Court noted that under Section 134(2) of the Trade Marks Act, the plaintiff can sue at its registered office or where the cause of action arises. However, the cause of action for passing off must be tried where it arose, governed by Section 20 of the Code of Civil Procedure.
The Court observed that the plaintiff failed to sufficiently demonstrate that its registered office in Mumbai was the principal place of business controlling all activities. Since the cause of action arose in Kerala and both parties conduct business there, the Kerala courts are the appropriate forum. The balance of convenience favored trial in Kerala to access relevant evidence and witnesses, and there was no risk of multiplicity of litigation.
Consequently, the Court refused to grant leave under Clause 14, emphasizing that this discretionary power is not a mere formality and requires justification of the chosen forum. The plaintiff was advised to pursue remedies in Kerala where the cause of action arose.
This ruling highlights the Bombay High Court's cautious approach in applying Clause 14 of the Letters Patent to prevent forum shopping and unnecessary litigation, reinforcing that jurisdictional choices must be reasonable, justified, and convenient to all parties.
Bottom Line:
Discretionary exercise of jurisdiction under Clause 14 of the Letters Patent requires consideration of balance of convenience, avoidance of multiplicity of litigation, and justifiable choice of forum by the plaintiff.
Statutory provision(s):
Trade Marks Act, 1999 Section 134(2), Code of Civil Procedure, 1908 Section 20, Bombay High Court Letters Patent Clause 14
Metro Brands Limited v. Met Brands Private Limited, (Bombay) : Law Finder Doc Id # 2972297
