Bombay HC asks Metro Brands to pursue its passing off claim against MetBrands before Kerala court

The Bombay High Court on Wednesday declined to adjudicate footwear retail company Metro Brands Limited's claim of passing off against a Kerala-based company, MetBrands Private Limited [Metro Brands Limited v MetBrands Private Limited].

Justice Gauri Godse observed that Kerala would be the appropriate and convenient forum for adjudicating the dispute since the cause of action arose there and both the brands have business in the State.

“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," the Court observed.

The Court observed the choice of forum available to a trademark owner under Section 134(2) of the Trade Marks Act must be exercised reasonably.

Since 2025, the Court has been hearing Metro Brands' suit accusing MetBrands of using the company's several registered trademarks, including “METRO” and “METRO BRANDS”.

Metro Brand, a footwear and accessories retailer, has stores across India, including 18 outlets in Kerala.

In April 2025, the High Court had granted Metro Brands ad-interim protection after MetBrands failed to appear or file a response in the suit. The Court had opined that the marks used by MetBrands were prima facie, deceptively similar to those of the Metro Brands.

During the pendency of the case, Metro Brands filed a leave petition under clause 14 of the Letters Patent to combine its cause of action for infringement and passing off before the Bombay High Court.

Metro Brands pointed out that the alleged passing off had occurred outside the High Court's territorial jurisdiction and hence sought permission to combine its cause of action before the High Court.

In response, MetBrands argued that it was a smaller Kerala-based entity and pursuing the litigation in a distant forum, without any nexus to the passing-off tort, would cause serious hardship to it.

The Court noted that since Metro Brands had not stated that Mumbai was its only place of business, both the infringement and passing off claims can be pursued in Kerala.

It added that permission under clause 14 of the Bombay High Court Letters Patent to combine different causes of action is not just a formality but a discretionary power of the court.

"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," the Court added.

Accordingly, it dismissed the leave petition.

Advocates Rashmin Khandekar, Alhan Kayser, Prateek Pansare, Hitisha Patel and Varsha Vasave instructed by Avesh Kayser appeared for Metro Brands.

Advocate Manas Hameed, instructed by Hemali Kurne, represented MetBrands.

[Read Judgment]