Bombay High Court Refuses Metro Brands Leave To Combine Trademark, Passing Off Claims Against Kerala Rival In Mumbai

The Bombay High Court has refused to allow footwear company Metro Brands Limited to combine its passing-off claim with its trademark infringement suit against Kerala-based Met Brands Private Limited in Mumbai.

The court found that the balance of convenience favoured a trial in Kerala. The alleged passing off took place there, and Met Brands carries on business in the State.

Justice Gauri Godse observed that Metro Brands had not pleaded that its principal place of business was only within Mumbai's jurisdiction. It had also not pleaded that it controlled all its business activities from there.

Therefore, the court noted, “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.”

The dispute arose from Metro Brands' suit alleging that Kerala-based Met Brands had infringed its registered 'METRO' trademark. Metro Brands claimed that Met Brands was using 'METBRANDS' and 'METBRANDS SHOES & BAGS' and also sought damages for alleged passing off and unfair competition.

Metro Brands relied on its registered address in Mumbai to bring the trademark infringement claim before the Bombay High Court. The Trade Marks Act gives the owner of a registered trademark an additional option to file certain infringement suits where it resides or carries on business. Metro Brands then sought permission under the Letters Patent governing the Bombay High Court to combine that claim with its passing-off claim. It had itself pleaded that the alleged passing off took place outside Mumbai.

The company pleaded that, as of December 2024, it operated 895 stores across 203 cities in India. Eighteen of those Metro stores were in Kerala.

Referring to the Supreme Court's ruling in Indian Performing Rights Society Limited v. Sanjay Dalia and Another, The court noted that the special rule under trademark law provides an additional forum for certain claims. It allows a trademark owner to sue where it resides or carries on business. That additional option does not displace the ordinary rules governing where a civil dispute may be brought.

The court also noted that the special jurisdiction under the Trade Marks Act does not extend to passing off claims in the same manner. The passing-off claim was therefore governed by the applicable ordinary jurisdictional rules.

For the Bombay High Court's ordinary original civil jurisdiction, the court held that the passing off relief had to satisfy the requirements under Clause 12 of the Letters Patent. It found that the cause of action for passing off had not arisen in Mumbai. Met Brands also did not reside or carry on business within Mumbai's jurisdiction. The Bombay High Court therefore found that it did not have jurisdiction to entertain the passing off relief.

The court further noted that both the trademark infringement and passing off claims fell within Kerala's jurisdiction. The cause of action arose there, and Met Brands carried on business there. Metro Brands itself also operated 18 stores in Kerala.

On the convenience of trial, Justice Godse observed,

“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.”

Metro Brands had relied on avoiding multiple proceedings as the ground for combining the two claims. The court found that there was no question of multiplicity of proceedings in the circumstances.

Both claims fell within Kerala's jurisdiction, and Metro Brands had a choice of forum.

It observed, “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.”

The court also considered the hardship that could result from the chosen forum. Met Brands had claimed that it was a small entity with no connection to Mumbai. Metro Brands, meanwhile, already operated 18 stores in Kerala. The court found that the balance of convenience favoured a trial in Kerala rather than Mumbai.

Finding that Metro Brands' choice of Mumbai was not justified, the court declined to exercise its discretionary power to permit the two causes of action to be joined. The leave petition was accordingly dismissed. Metro Brands was given liberty to take appropriate steps in accordance with law.