Metro Brands Limited vs Metbrands Pvt Ltd
- Court
- Bombay High Court
CNR No : HCBM020120672025
2026:BHC-OS:19660
1-LP(L)-12067-2025.docx
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
rrpillai
ORDINARY ORIGINAL CIVIL JURISDICTION
LEAVE PETITION (L) NO. 12067 OF 2025
IN
COMMERCIAL IPR SUIT (L) NO. 12028 OF 2025
Metro Brands Limited
A Company incorporated under
the Companies Act, 1956 having
its Registered Office at 401,
th
Kanakia Zillion, 4 floor,
L.B.S. Marg & C.S.T. Road
Junction, Kurla (West)
Mumbai-400 070 … Petitioner/Plaintiff
Versus
Met Brands Private Limited
MSB Mansion, Building No.
TMC-22/406 (TMC-15/119-1)
th
7 Mile, Kuttikol, Kannur
Taliparamba, Kerala
India-670 141 ... Respondent/Defendant
Mr.Rashmin Khandekar a/w. Mr. Prateek Pansare, Mr. Alhan
Kayser, Ms. Varsha Vasave, Ms. Gauri Sansare i/b. Mr. Avesh
Kayser for the Petitioner/Plaintiff.
Mr. Manas Hameed (Through VC) i/b. Ms. Hemali Kurne for the
Respondent/Defendant.
Digitally
signed by
RAJESHWARI
RAMESH
PILLAI
Date:
2026.09.03
13:53:48
+0530
RAJESHWARI
RAMESH
PILLAI
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CORAM : GAURI GODSE J
th
RESERVED ON : 16 JUNE 2026
rd
PRONOUNCED ON : 3 SEPTEMBER 2026
JUDGMENT:
1. This petition is filed by the plaintiff to seek leave under
Clause 14 of The Bombay High Court Letters Patent. The suit is
filed for an injunction restraining and prohibiting the defendant
from infringing the plaintiff's registered trade mark. The
registered trade mark is described as ‘METBRANDS’ as well as
its graphical representation or any other mark identical and/or
deceptively similar to the plaintiff’s registered trade mark
‘METRO’. The plaintiff has also prayed for a decree of damages
alleging trade mark infringement, passing off and unfair
competition.
2. The defendant’s address is in the State of Kerala. The
plaintiff’s registered address is within the jurisdiction of this
court. The plaintiff claims that as of December 2024, it has been
operating 895 stores in 203 cities across 31 Indian states and
union territories, of which 18 Metro stores are in the State of
Kerala. The plaintiff claims to be the registered proprietor of its
house mark, METRO BRAND, and of the mark as described in
the plaint. The defendant is carrying on the business of
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designing, manufacturing, and distributing clothing, headgear,
and footwear in the State of Kerala. It is alleged that the
defendant offers the impugned goods and services under the
name of METBRANDS/METBRANDS SHOES & BAGS. It is
thus alleged that by using the impugned mark which is identical
to the plaintiffs’ registered trade mark, the defendant has
committed infringement of the plaintiffs’ registered trade mark.
3. Since the plaintiffs’ registered address is within the
jurisdiction of this court, the suit is filed in this court in view of
Section 134 of the Trade Marks Act, 1999 (“Trade Marks Act”).
Since there is a prayer for damages on account of infringement,
passing off and unfair competition, the plaintiff seeks leave to
join the cause of action for alleged infringement of trade mark
and passing off as the cause of action for seeking damages on
account of passing off has occurred within the State of Kerala,
i.e. beyond the jurisdiction of this court. The plaintiff therefore
seeks leave to join the cause of action in respect of
infringement of trade mark and passing off as pleaded in the
plaint.
4. Learned counsel for the plaintiff relies upon the Apex
Court’s decision in Food Corporation of India vs. Evdomen
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1
Corporation (“ Food Corporation of India ”) . In the said decision,
the Apex Court held that under Section 120 of the Code of Civil
Procedure, 1908 (“CPC”), Sections 16, 17 and 20 of the CPC
do not apply to the High Court in exercise of its original civil
jurisdiction to entertain the suit in its ordinary original civil
jurisdiction as determined under Clause 12 of the Letters
Patent. It is held that under Clause 12 of the Letters Patent, a
place where the defendant, or each of the defendants where
there are more than one, at the commencement of the suit,
carries on business would be a place where the court would
have jurisdiction. He submits that in the present case, for the
claim for damages arising from the breach of a registered trade
mark and passing off, the cause of action has arisen beyond the
jurisdiction of this court. Hence, in view of Clause 14 of the
Letters Patent, the plaintiff is entitled to join the cause of action
as the prayer for breach of infringement would fall within the
jurisdiction of this court in view of Section 134 of the Trade
Marks Act.
5. Learned counsel for the plaintiff relies upon the Apex
Court’s decision in Indian Performing Rights Society Limited vs.
1
(1999) 2 SCC 446
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2
Sanjay Dalia and Another (“ Sanjay Dalia ”). He submits that it
takes a view that the intendment of the Explanation to Section
20 of the CPC is that once the corporation has a subordinate
office in the place where the cause of action arises wholly or in
part, it cannot be heard to say that it cannot be sued there or it
does not carry on business in that place. It is held that linking
the place with the cause of action in the Explanation where a
subordinate office of the corporation is situated is reflective of
the intention of the legislature and that such a place has to be
the place of filing of the suit and not the principal place of
business. It is further held that in case where the cause of
action has arisen at a place where the plaintiff is residing or
where there are more than one such persons, any of them
actually or voluntarily resides or carries on business would oust
the jurisdiction of other place where the cause of action has not
arisen though at such a place by virtue of having subordinate
office, the plaintiff instituting a suit or other proceedings might
be carrying on business or personally works for gain.
6. Learned counsel for the plaintiff submitted that in the
present case, the plaintiff’s registered address is in Mumbai,
2
(2015) 10 SCC 161
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and the control of the entire business of the plaintiff is deemed
to have been from its registered address. The Apex Court while
explaining the nature of the corporation in reference to an
Explanation to Section 20 of the CPC held that in the case of
company registered under The Companies Act, 1956 the
controlling power is, as a fact, generally exercised at the
registered office, and that office is therefore not only for the
purposes of the Companies Act, but for other purposes the
principal place of business. Hence, according to the learned
counsel for the plaintiff in the present case, the plaintiffs’
registered address being within the jurisdiction of this court, the
cause of action for passing off, though arising within the
jurisdiction of the State of Kerala, the plaintiff would be entitled
to join the cause of action in view of Clause 14 of the Letters
Patent.
7. Learned counsel for the plaintiff also relied upon the
decision of this court in Jagdish Gopal Kamath and Others vs.
3
Lime and Chilli Hospitality Services P. Ltd. , (“ Jagdish Kamath ”)
which explains the scope of Clause 14 of the Letters Patent Act.
Learned counsel for the plaintiff relies upon the conclusion in
3
2013 (4) Mah. L.J.
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paragraph 16 of the said decision holding that in the absence of
proven mala fides or hardship, the argument that grant of leave
will drag the defendant from a forum where the defendant is
situated to a court from which Clause 14 is sought and that it is
prejudicial or inconvenient to the defendant is fallacious and
misconceived. It is thus held that the primary consideration
while deciding the applications for grant of leave under Clause
14 is to avoid multiplicity of litigation.
8. Learned counsel for the plaintiff also relied upon the
decision of this court in Manugraph India Limited vs. Simarq
4
Technologies Pvt. Ltd. and Others (“ Manugraph ”) . He submits
that, in the said decision, this court has explained the law
governing the issue of joining causes of action, in light of the
legal principles settled in the decision of Sanjay Dalia. He
submits that this court held that a plaintiff can always file a suit
in a court within the local jurisdiction of which its registered
office or principal office is located. Such a filing of suit is a pure
matter under Section 134(2) of the Trade Marks Act for
invocation of jurisdiction. Learned counsel for the plaintiff
therefore submits that in view of the well-settled legal principles,
4
2016 SCC OnLine Bom 5334
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the plaintiff is entitled to grant of leave under Clause 14 for
joining of the cause of action for the claim of damages on
account of passing off and the cause of action for the relief
against infringement of the registered trade mark as
contemplated under Section 134(2) of the Trade Marks Act.
9. Learned counsel for the defendant opposes grant of leave
for joining of the cause of action. He submits that the grant of
leave in the present case would violate the strict application of
Section 20 of the CPC and would enable forum shopping
contrary to the balance of convenience, which favours the
defendant’s location of business. He submits that, in the
affidavit-in-reply on behalf of the defendant, it is specifically
contended that the defendant is a smaller Kerala-based entity
and that forcing litigation in a distant forum without any nexus to
the passing-off tort would cause serious hardship to the
defendant. Hence, leave under Clause 14, which is
discretionary in nature, may not be exercised in favour of the
plaintiff.
10. He submitted that the plaintiff’s presence in the State of
Kerala is undisputed, as they are running 18 METRO stores in
the State of Kerala. Hence, a composite suit combining both
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causes of action would not be maintainable only on the ground
that the plaintiff’s registered address is within the jurisdiction of
this court. To support his submissions, learned counsel for the
defendant relied upon the decision of this court in Shree Sai
Plast Pvt. Ltd. IN Prince Pipes & Fittings Ltd. vs. Shree Sai
5
Plast Pvt. Ltd (“ Shree Sai Plast” ). Learned counsel for the
defendant submitted that this court in the said decision has
referred to the case of Sanjay Dalia and Manugraph and held
that when the entire business activity was carried out from
Mumbai, only having a registered office beyond the jurisdiction
of Mumbai cannot be considered as a place where from the
company controls its business activities or where the centre of
power of the corporate body is located. It is thus held that it is
quite possible that the principal place of business is also its
registered office, but this may not be true in every scenario. He
submits that, in the present case, it is undisputed that the
plaintiff has been operating the METRO stores in the State of
Kerala. Hence, having only a registered address within the
jurisdiction of this court would not entitle the plaintiff to file the
suit within this court’s jurisdiction by joinder of cause of action.
5
2024:BHC-OS:4767
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11. To consider the rival submissions made on behalf of the
parties, it is necessary to refer to the well-settled legal
principles. In Food Corporation of India , the Apex Court held
that under Section 120 of the CPC, Sections 16, 17, and 20 do
not apply to the Bombay High Court in the exercise of its
original civil jurisdiction. It is held that the jurisdiction of the
Bombay High Court to entertain a suit under its ordinary original
civil jurisdiction is determined by clause 12 of the Letters Patent
of the Bombay High Court. Under clause 12, a place where the
defendant, or each of the defendants where there are more
than one, at the commencement of the suit, carries on business
would be a place where the court would have jurisdiction.
12. In Jagdish Kamath , this court discussed the provisions
of law and the decisions governing the application for leave
under Clause 14 of the Letters Patent, and summarised the
legal principles. It is held that (i) the grant of leave under
Clause 14 of the Letters Patent is a discretionary exercise,
(ii) the primary consideration, while deciding applications for
grant of leave under Clause 14 of the Letters Patent, is
‘avoiding multiplicity of litigation’; (iii) in the absence of
proven mala fides/hardship, the argument that grant of leave
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will drag the defendant from a forum where the defendant is
situated, to the Court from which Clause 14 is sought and
that this is prejudicial/inconvenient to the defendant, is
fallacious and misconceived; (iv) leave may be declined
considering undue hardship to the defendant or such other
similar grounds; (v) leave may be declined if the suit as filed
is on the face of it not maintainable and the same is nothing
but an abuse of law/Court; (vi) the inquiry whether on facts,
the plaintiff is entitled to grant of leave has to be minimal, so
as to ensure that observations made do not adversely affect
the parties while considering the prayers for grant of interim
relief or while deciding the suit. It is thus held that the Court
has to use its judicial discretion and arrest any abuse of the
process of a Court without going into the merits of the case
to the extent of virtually obliterating the distinction between
grant of leave and grant of interim relief.
13. In Sanjay Dalia , the question before the Apex Court
was the interpretation of Section 62 of the Copyright Act,
1957, and Section 134(2) of the Trade Marks Act, 1999,
regarding the place where a suit may be instituted by the
plaintiff. It is held that (i) the expression “notwithstanding
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anything contained in the CPC does not oust the applicability
of the provisions of Section 20 of the CPC, and it is clear
that an additional remedy has been provided to the plaintiff
so as to file a suit where he is residing or carrying on
business, as the case may be. (ii) “Corporation” in the
Explanation to Section 20 of the CPC would mean not only
the statutory corporation but companies registered under the
Companies Act. In the case of companies registered under
the Companies Act, the controlling power is, as a fact,
generally exercised at the registered office, and that office is
therefore not only for the purposes of the Act, but for other
purposes, the principal place of business. A company may
have subordinate or branch offices in fifty different
jurisdictions, and it may be sued in any one of such
jurisdictions in respect of a cause of action arising there. (iii)
The very intendment of the insertion of the provision in the
Copyright Act and the Trade Marks Act is the convenience of
the plaintiff. There is no doubt about it that the words used in
Section 62 of the Copyright Act and Section 134 of the
Trade Marks Act, “notwithstanding anything contained in
CPC or any other law for the time being in force”, emphasise
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that the requirement of Section 20 CPC would not have to
be complied with by the plaintiff if he resides or carries on
business in the local limits of the court where he has filed the
suit but, at the same time, as the provision providing for an
additional forum, cannot be interpreted in the manner that it
has authorised the plaintiff to institute a suit at a different
place other than the place where he is ordinarily residing or
having principal office and incidentally where the cause of
action wholly or in part has also arisen, (iv) Section 134(2) of
the Trade Marks Act is applicable to clauses ( a ) and ( b ) of
Section 134(1) of the Trade Marks Act. Thus, a procedure to
institute suit with respect to Section 134(1)( c ) in respect of
“passing off” continues to be governed by Section 20 of the
CPC.
14. In Manugraph , this Court discussed the legal principles
settled in Sanjay Dalia and concluded as under:
“ What emerges from this discussion is this:
(a) a plaintiff suing under the Trade Marks Act or Copyright
Act can always file the suit in the jurisdiction where he
lives, works for gain or carries on business. In the context
of a company, given the view in Sanjay Dalia, this would
mean where the company has its principal or registered
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office. All issues of cause of action and situs or location of
the defendant or the cause of action are inconsequential.
It makes no difference where the defendant resides. It
makes no difference where the cause of action arose. It
certainly makes no difference that the plaintiff also
happens to have a branch office in another location where
the cause of action may have arisen or where the
defendant may reside or carries on business.
(b) Where the plaintiff has only one office, it presents no
difficulty. Where the plaintiff has multiple offices, however,
he has a limited choice. He may either bring a Suit under
Section 134(2) or Section 62(2), i.e., within the jurisdiction
where he resides; or he may invoke Section 20 and file a
suit where the Defendants reside or work for gain or
where the cause of action arose wholly or in part. The fact
that the Plaintiff has the choice of bringing a suit based on
Section 20 of the CPC does not mean that his rights
under Section 134(2) or Section 62(2) are in any way
eroded, curtailed or restricted.
(c) However, where the plaintiff chooses not to file a Suit at
his or its principal business or where his registered office
is located, and also chooses not to file a suit in a
jurisdiction covered by Section 20 of the CPC but instead
attempts to file the suit at some other location where the
plaintiff happens to have a subsidiary or satellite office,
but where there is absolutely nothing else (neither cause
of action nor any of the defendants) the Plaintiff cannot
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invoke Section 134(2) or Section 62(2) to drag the
Defendant to that distant location. That, following the
decision of the Supreme Court, is the abuse that is
required to be prevented. That is in fact the only abuse
that is required to be prevented.
(d) The Section 134(2) and Section 62(2) privilege or
advantage attaches to the registered office or principal
place of work. It is a privilege not to be used by
abandoning the registered office situs, abandoning the
Section 20 situs options, and travelling to some remote
location where there is neither defendant nor cause of
action. That is the mischief addressed in Sanjay Dalia. To
illustrate : the plaintiff has its registered office in Mumbai.
The defendant is in Delhi. The cause of action arose in
Delhi. The plaintiff also has another branch office in Port
Blair. A plaintiff can sue in Mumbai or in Delhi, but not in
Port Blair.”
15. In Shree Sai Plast , this Court dismissed the
defendant’s application for return of plaint filed on the ground
that this Court would have no jurisdiction. The suit was filed
for infringement of trademark and copyright, and for passing
off. The defendant contended that the plaintiff's registered
office is in Goa, which would be the principal place of
business. This Court relied upon the decision in Sanjay
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Dalia and Manugraph . It is held that the principal place of
business need not be equated every time with the registered
office, as the principal place of business of the company is
the place from which the company controls its business
activities. In that case, the plaintiff’s registered office was in
Goa, but the business activities were in Mumbai; hence, it
was held that this Court had jurisdiction and the defendant’s
application was dismissed.
16. In the present case, the plaintiff, in paragraph 23 of the
plaint, has pleaded that, since the plaintiff’s registered
address is in Mumbai, this Court has jurisdiction with respect
to infringement of a trade mark under Section 134 of the
Trade Marks Act. It is further pleaded that the defendant
carries on business outside the territorial jurisdiction of this
Court, but the impugned goods of the defendant are
available within the jurisdiction of this Court. It is further
pleaded that the tort of passing off is taking place outside the
territorial jurisdiction of this Court. Hence, the petitioner has
prayed for leave under Clause 14 of the Letters Patent to
join the cause of action with respect to passing off. While
relying upon such pleadings for joining of cause of action on
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the ground of passing off, the plaintiff in paragraph 1.1 of the
plaint has pleaded that since 1955 the plaintiff has been a
one-stop shop for all footwear needs and has a strong
business/presence in all categories, i.e. premium, affordable
luxury and value line as also fashion, lifestyle, casuals and
sports. It is also pleaded that as of December 2024, the
plaintiff has been operating in 895 stores in 203 cities across
the States and Union territories of India, including the State
of Kerala. It is further pleaded that out of the total stores, 18
METRO stores are in the State of Kerala, i.e. the State of the
defendant.
17. The plaintiff, except for pleading that its registered
address is within the jurisdiction of this Court, has nowhere
pleaded that its principal place of business is only within the
jurisdiction of this Court from where it controls all its
business activities. As held by the Apex Court in Sanjay
Dalia and explained by this Court in Manugraph , where the
plaintiff has multiple offices, he may either bring a suit under
Section 134(2), i.e. within the jurisdiction where he resides
or carries on business; or he may invoke Section 20 and file
a suit where the defendant reside or work for gain or where
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the cause of action arose wholly or in part. Thus, the plaintiff
has the option to bring a suit under Section 20 of the CPC
seeking an injunction against trademark infringement.
However, this court’s jurisdiction to maintain the prayer for
passing off would be governed in the present case by
Clause 12 of the Letters Patent. Clause 12 grants jurisdiction
to this Court if the cause of action has arisen within the
jurisdiction of this Court or the defendant resides or carries
on business. Neither of the two contingencies has arisen in
the present case.
18. As per the plaintiff’s pleadings, the plaintiff has been
operating 895 stores in 203 cities across the States and
Union Territories of India, of which 18 are in the State of
Kerala. Even according to the plaintiff, the cause of action
for passing off has arisen in Kerala. As held by the Apex
Court in Sanjay Dalia , under Section 134(2) of the Trade
Marks Act the expression “notwithstanding anything
contained in the CPC” does not oust the applicability of the
provisions of Section 20, and that an additional remedy has
been provided to the plaintiff so as to file a suit where he is
residing or carrying on business, as the case may be.
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Therefore, in the present case, both prayers, i.e.,
infringement of trademark and passing off, would fall within
the jurisdiction of the State of Kerala, where the cause of
action has arisen, and the defendant carries on business. As
pleaded in the plaint, even the plaintiff operates 18 Metro
stores in the State of Kerala.
19. The place where the cause of action arises is
convenient for conducting a trial as relevant witnesses,
documents, transactions and other evidence are likely to be
available within that jurisdiction. Hence, a choice available to
the plaintiff under Section 134 (2) of the Trade Marks Act
must be exercised reasonably and must be justified.
Whether hardship is caused or not to the defendant cannot
be the only criterion to grant or refuse leave under Clause
14. Leave under Clause 14 of the Letters Patent is not an
empty formality. It is a discretionary power to be exercised
after an opportunity of hearing to the defendant.
20. This Court in Jagdish Kamath held that the grant of
leave under Clause 14 of the Letters Patent is a
discretionary exercise and the primary consideration, while
deciding an application for grant of leave under Clause 14 of
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the Letters Patent, is ‘avoiding multiplicity of litigation’. In the
present case, except the ground of avoidance of multiplicity
of proceedings, no other ground is pleaded by the plaintiff to
join the cause of action for the prayer of passing off. When
both prayers fall within the jurisdiction of the State of Kerala,
there is no question of multiplicity of proceedings, as the
plaintiff has a choice of forum. Since the cause of action has
arisen within the State of Kerala, it would be convenient to
conduct a trial within the State of Kerala. The balance of
convenience lies in favour of conducting a trial within the
Court’s jurisdiction in the State of Kerala and not within this
Court’s jurisdiction. Therefore, in the present case, the court
where the cause of action has arisen would be a convenient
forum in all respects. So far as hardship is concerned,
although it is not the sole criterion, the defendant claims to
be a small entity without any nexus within this Court’s
jurisdiction, whereas the plaintiff operates 18 stores in the
State of Kerala. Therefore, hardship, if any, may be caused
to the defendant. The optional forum chosen by the plaintiff
in the present case is not found to be justifiable for
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exercising the discretionary power under Clause 14 in favour
of the plaintiff.
21. The Leave Petition is therefore dismissed. The plaintiff
is therefore at liberty to take appropriate steps in accordance
with law.
[GAURI GODSE, J.]
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