Court Rules Situs of Trademark Registration Alone Insufficient for Jurisdiction; Cause of Action Must Be Pleaded and Established in Trademark Dispute Between Vinbros and Chamundi Winery
In a significant ruling on trademark jurisdiction, the Madras High Court on August 28, 2026, dismissed the application of M/s. Vinbros and Co. seeking leave to file a trademark infringement suit against M/s. Chamundi Winery and Distillery. The Court emphasized that the mere situs of trademark registration within its territorial limits does not confer jurisdiction unless a cause of action is clearly pleaded and arises within the Court's jurisdiction.
The dispute arose when M/s. Vinbros, the registered proprietor of various trademarks including the allegedly infringed mark, filed for leave under Clause 12 of the Madras High Court Letters Patent to initiate proceedings against M/s. Chamundi. The applicant based their claim on the registration of their trademark with the Trademark Office located in Chennai, urging the Court to accept jurisdiction under Section 134(2) of the Trade Marks Act, 1999.
However, the respondents contended that apart from the registration situs, no cause of action had arisen in Chennai. They argued that neither party conducted business nor had sales of the infringing products within the Madras High Court jurisdiction. The respondent's counsel submitted that the suit was barred by Section 20 of the Civil Procedure Code and Clause 12 of the Letters Patent, as no part of the cause of action occurred within Chennai.
Justice K. Kumaresh Babu, presiding over the matter, referred to the authoritative Full Bench judgment of this Court in Duro Flex Pvt. Ltd. v. Duroflex Sitting System (2014 5 LW 673), which clarified that the registration situs alone does not constitute a cause of action sufficient for jurisdiction. The Court also cited the Supreme Court decision in Indian Performing Rights Society Ltd. v. Sanjay Dalia (2015) 10 SCC 161, emphasizing that while Section 134(2) and similar provisions remove some jurisdictional barriers, the suit must still be filed where the plaintiff ordinarily resides or carries on business and where the cause of action arises wholly or partly.
The Court noted that the plaint itself admitted no sales or business activities related to the alleged infringement within Chennai and hence no part of the cause of action accrued there. The Court held that this deficiency was fatal to jurisdiction and rejected the application for leave to sue, directing the plaint to be returned for filing in the appropriate court.
This ruling reinforces the principle that trademark infringement suits must be filed where the cause of action arises or where the plaintiff or defendant conducts business, rather than relying solely on the location of trademark registration. It underscores the need for careful jurisdictional pleading in intellectual property litigation.
Bottom Line:
Trademark jurisdiction - Situs of trademark registration alone does not confer jurisdiction to institute a suit in the Madras High Court - Cause of action must be pleaded and established.
Statutory provision(s):
Trade Marks Act, 1999 Section 134(2), Civil Procedure Code, 1908 Section 20, Clause 12 of Letters Patent of Madras High Court
M/s. Vinbros and Co. v. M/s. Chamundi Winery and Distillery, (Madras) : Law Finder Doc Id # 2971293
