Bombay HC: Metro Brands MetBrands Kerala Jurisdiction for Trademark Dispute

• The Bombay High Court declined to adjudicate a trademark passing off claim by Metro Brands Limited against MetBrands Private Limited.
• Justice Gauri Godse ruled that Kerala is the appropriate and convenient forum, as the cause of action arose there and both companies have business operations in the state.
• The court emphasized that the choice of forum available to a trademark owner under Section 134(2) of the Trade Marks Act must be exercised reasonably.
• Metro Brands had filed the suit in 2025, alleging use of its "METRO" and "METRO BRANDS" trademarks, and had previously secured ad-interim protection due to MetBrands' non-appearance.
• This decision clarifies the 'appropriate forum' principle for multi-state trademark disputes, impacting litigation strategy for infringement and passing off claims.

Lawyers advising on trademark disputes should carefully note this judgment, as it directly impacts litigation strategy for multi-state trademark infringement and passing off claims.

The Bombay High Court has declined to hear a trademark passing off claim brought by footwear retail giant Metro Brands Limited against MetBrands Private Limited, a company based in Kerala. In a significant ruling, Justice Gauri Godse directed that the dispute, which also involves allegations of trademark infringement, should be pursued before a court in Kerala. This decision underscores the principle of an "appropriate and convenient forum" for adjudicating such matters.

The court determined that Kerala represented the most suitable jurisdiction because the primary cause of action originated there. Furthermore, both Metro Brands and MetBrands maintain substantial business operations within the state. The plaintiff, Metro Brands, itself operates 18 retail outlets in Kerala, a fact noted by the court in its assessment of the geographic nexus of the dispute. Consequently, the Bombay HC concluded that both the trademark infringement and passing off claims would appropriately fall under the jurisdiction of a Kerala court.

Central to the Bombay High Court's decision was its interpretation of Section 134(2) of the Trade Marks Act, India. Justice Godse emphasized that while this provision grants a trademark owner a choice of forum, this choice must be exercised reasonably. The court's ruling clarifies that even with the statutory flexibility offered by Section 134(2), the judiciary retains the power to direct a case to a forum where the cause of action predominantly arises and where the parties primarily operate.

This interpretation provides crucial guidance on the application of the 'appropriate forum' principle in trademark litigation. It suggests that courts will scrutinize the practical realities of a dispute, such as the location of the alleged infringement and the business presence of both parties, rather than solely relying on the plaintiff's initial choice of jurisdiction. The ruling in *Metro Brands Limited v MetBrands Private Limited* thus reinforces the notion that convenience and the predominant situs of the dispute are key factors in determining the proper venue for a trademark passing off Kerala court case.

The legal battle began in 2025 when Metro Brands Limited initiated its suit, accusing MetBrands Private Limited of unauthorized use of its registered trademarks, including prominent marks such as “METRO” and “METRO BRANDS.” Metro Brands, a well-established footwear and accessories retailer, operates numerous stores across India, with a significant presence in Kerala.

Earlier in April 2025, the Bombay High Court had granted ad-interim protection to Metro Brands. This interim relief was issued after MetBrands failed to appear or submit a response to the allegations. At that time, the court had made a preliminary observation, finding that the marks utilized by MetBrands were, prima facie, deceptively similar to those belonging to Metro Brands. Despite this initial finding and the grant of interim relief, the court has now opted to transfer the substantive adjudication of the jurisdiction trademark infringement India dispute to a more geographically relevant forum.

This ruling by the Bombay HC regarding Bombay HC Metro Brands MetBrands Kerala jurisdiction holds significant implications for businesses and legal practitioners navigating trademark disputes across India. It serves as a vital clarification of the 'appropriate forum' principle under Section 134(2) of the Trade Marks Act, emphasizing that courts may direct cases to where the cause of action predominantly arises and parties operate, even if a statutory choice of forum exists.

Lawyers advising on trademark disputes should carefully note this judgment, as it directly impacts litigation strategy for multi-state trademark infringement and passing off claims. The decision highlights that simply having a presence in a particular state may not be sufficient to establish it as the appropriate forum if the core of the dispute lies elsewhere. This judicial guidance encourages a more strategic assessment of jurisdiction, moving beyond mere convenience for the plaintiff to consider the overall nexus of the case.

Lawyers advising on trademark disputes should note this ruling as it clarifies the 'appropriate forum' principle under Section 134(2) of the Trade Marks Act, emphasizing that courts may direct cases to where the cause of action predominantly arises and parties operate, even if a choice of forum exists. This impacts litigation strategy for multi-state trademark infringement and passing off claims.

Source: Original reporting via Live Law