Bombay High Court limits trademark owners’ ability to bring related claims in preferred forums

The Bombay High Court has refused to allow Metro Brands to combine a passing-off claim arising in Kerala with its trademark infringement action in Mumbai, emphasizing that a plaintiff’s choice of forum under Section 134(2) of India’s Trade Marks Act is not an unrestricted right to bring related claims before its preferred court.

Justice Gauri Godse dismissed a petition by Metro Brands Limited seeking leave under Clause 14 of the Bombay High Court’s Letters Patent to join its passing-off cause of action against Kerala-based Met Brands Private Limited with its trademark infringement proceedings in Mumbai.

The decision in Metro Brands Limited v. Met Brands Private Limited, pronounced September 3, 2026, concerns the interaction between Section 134(2) of the Trade Marks Act, the territorial jurisdiction of the Bombay High Court and the court’s discretionary power under Clause 14 of the Letters Patent.

Dispute over METRO

Metro Brands, whose registered office is in Mumbai, brought a commercial intellectual property suit against Met Brands, a company based in Kannur, Kerala. Metro alleged that Met Brands was designing, manufacturing, and distributing clothing, headgear, and footwear under the marks “METBRANDS” and “METBRANDS SHOES & BAGS,” infringing Metro’s registered METRO trademarks.

Metro relied on Section 134(2) of the Trade Marks Act in bringing its trademark infringement proceedings before the Bombay High Court. The difficulty concerned the passing-off claim. Metro’s own pleadings established that the passing-off cause of action arose in Kerala, where Met Brands was based and carried on business.

Metro therefore sought leave under Clause 14 of the Letters Patent to join that cause of action to the trademark infringement proceedings in Mumbai. The defendant opposed the application, arguing that allowing the passing-off claim to be pursued in Mumbai would effectively require a smaller Kerala-based business to litigate far from its home jurisdiction, despite the absence of a relevant passing-off cause of action in Mumbai.

Section 134 does not provide an unrestricted choice

The court considered the Supreme Court’s decision in Indian Performing Rights Society Ltd. v. Sanjay Dalia, which examined Section 134(2) of the Trade Marks Act alongside the corresponding provision of the Copyright Act.

The Supreme Court held that the special jurisdictional provision gives an intellectual property owner an additional forum; it does not mean that the ordinary territorial jurisdictional principles are simply rendered irrelevant. The Bombay High Court also considered the relationship between those principles and the Bombay High Court’s own original jurisdiction under the Letters Patent.

Importantly, the court did not hold that Section 134(2) prevents a trademark proprietor from suing in Mumbai merely because the defendant is located elsewhere. Rather, the question before it was whether Metro should be granted discretionary leave under Clause 14 to bring its separate passing-off cause of action into the Mumbai proceedings.

The court stressed that such leave is not automatic.

Metro’s Kerala presence

A significant factor was Metro Brands’ own presence in Kerala. The company stated that, as of December 2024, it operated 895 stores across 203 cities and 31 states and union territories, including 18 METRO stores in Kerala.

The court noted that Metro had not pleaded that its principal place of business was exclusively in Mumbai or that its business activities were controlled solely from its Mumbai registered office. The existence of the 18 Kerala stores was therefore relevant to the court’s assessment of the parties’ respective connections with the jurisdiction.

For the passing-off claim, the defendant was based in Kerala, and the cause of action arose there. The court concluded that Kerala provided a forum in which the relevant claims could be pursued together.

Clause 14 leave is discretionary

The court examined earlier Bombay High Court decisions concerning Clause 14 and emphasized that the grant of leave is a discretionary exercise. Avoiding multiple proceedings is an important consideration, but it is not the only consideration. The court can also take account of undue hardship, abuse of process and other circumstances relevant to whether leave should be granted.

Metro’s principal argument for joining the causes of action was the avoidance of multiple proceedings. The court found that this consideration did not justify granting leave in the circumstances because the plaintiff could pursue both claims in Kerala.

As the passing-off cause of action arose in Kerala, the court considered Kerala a convenient location for the trial, with relevant witnesses, documents, transactions and other evidence likely to be available there. The court therefore concluded that Metro had not established sufficient grounds for exercising the discretionary power under Clause 14 in its favor.

Implications for trademark litigation

The decision does not eliminate the additional jurisdictional forum available to trademark proprietors under Section 134(2).

Instead, it provides a warning against assuming that the provision gives a trademark owner an automatic ability to bring every related cause of action before the court of its choice. Where a trademark infringement action is brought in one jurisdiction but a related passing-off claim arises elsewhere, the plaintiff may still need to establish why the additional cause of action should be joined to the proceedings.

In Metro Brands, the fact that the defendant and the passing-off cause of action were located in Kerala, combined with Metro’s own substantial business presence there and the availability of Kerala as a forum for both claims, weighed against granting Clause 14 leave. The ruling therefore highlights the importance of distinguishing between the jurisdiction available for a trademark infringement claim and the court’s discretionary power to permit related causes of action to be joined to that proceeding.

For trademark owners, the decision is a reminder that selecting a forum at the outset of litigation can have consequences for how related claims are subsequently pursued.

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