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2026 Supreme(Online)(Mad) 85978
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Kumaresh Babu, J
Vinbros and Co. – Appellant
Versus
Chamundi Winery and Distillery – Respondent
A No. 2575 of 2026 | C.S(Comm.Div.)SR.No.19644 of 2026
For the Appellants/Petitioners: MS Bharath
For the Respondents: Anirudh Krishnan
The situs of the Trade Mark Registry alone does not constitute a cause of action for filing an infringement suit; jurisdiction under Section 134(2) of the Trade Marks Act requires the plaintiff to reside or carry on business in the jurisdiction where the suit is filed.
Headnote:(A) Jurisdiction - Trademark Infringement - Situs of Registration - The mere fact that the Trade Mark Registry is located within the jurisdiction of a court does not, by itself, constitute a cause of action to institute a suit in that court. (Para 8)
(B) Trade Marks Act, 1999 - Section 134(2) - Interpretation - The provision allowing a plaintiff to sue where they reside or carry on business does not authorize filing a suit in a forum where neither the plaintiff nor the defendant resides or carries on business and no part of the cause of action has arisen. (Para 9)
(C) Letters Patent - Clause 12 - Leave to Sue - Leave cannot be granted when the plaintiff admits that no part of the cause of action arose within the jurisdiction and the only link is the situs of the registry. (Para 11)
Issues: Whether the situs of the Trade Mark Registry in Chennai alone is sufficient to grant leave to sue under Clause 12 of the Letters Patent and Section 134(2) of the Trade Marks Act.
Judge’s Summons filed under Order 14 Rule 8 of O.S. Rules and Order III Rule 1 of the O.S. Rules read with Clause 12 of the Letters Patent, praying to grant leave to file the present suit against the Respondents/Defendants before this Hon’ble Court under Clause 12 of the Letters Patent of the Madras High Court .
ORDER
1. The present application has been filed to grant leave to file the present suit against the Respondents/Defendants before this Hon’ble Court under Clause 12 of the Letters Patent of the Madras High Court .
2. Heard both sides.
3. Mr.MS.Bharath, learned counsel appearing for the applicant would submit that the applicant is a registered trademark holder of various products, including the infringed trademark namely:-
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whereas the trademark used by the respondent is:-
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4. He would further submit that, in view of the registration with the Trademark Office within the jurisdiction of this Court, by application of Section 134(2) of the Trademarks Act, this Court has jurisdiction to entertain the suit. That apart, the opposition application filed by the applicant as against the application for registration of trademark by the respondents would also indicate that the respondents have knowledge of the applicant's registered trademark, but had continued to infringe the same. He would also rely upon judgments in support of his contention that, by interpretation of Section 134, the suit could be laid before this Court, even though there is no cause of action within the jurisdiction of this Court, and therefore, leave is also not required under Clause 12 of the Letters Patent. Hence, he prays this Court to permit the applicant to sue the defendant before this Court.
5. Countering his arguments, Mr.Anirudh Krishnan, learned counsel, for the Caveator, would submit that admittedly, except the situs of registration of the trademark within the jurisdiction of this Court, no cause of action had arisen for the applicant to sue the defendants before this Court. He would submit that the applicant, even in his plaint, had categorically admitted that there is no sale of the infringing products currently within the city of Chennai, and admittedly, the applicant / plaintiff is also not carrying on the business within the jurisdiction of this Court, nor the respondents either reside or carry on business within the jurisdiction of this Court. This itself would indicate that the suit would be hit not only by Section 20 of the C.P.C., but also Clause 12 of the Letters Patent and Section 134(2) of the Trademarks Act. Even though he had also relied upon various judgments on the issue of jurisdiction and maintainability of the suit within the jurisdiction of this Court, he prays this Court to dismiss the application for grant of leave as prayed for by the applicant.
6. I have considered the arguments made by the respective learned counsels.
7. Section 134(2) had been the subject matter of various judgments, and it is to be noted that the Full Bench of this Court had dealt with the issue in the case of Duro Flex Pvt., Ltd., Vs. Duroflex Sittings System reported in 2014 5 LW 673. The Hon'ble Full Bench had framed issues, particularly with relation to the jurisdiction of this Court in a trademark suit brought upon for infringement of the rights of the registered holder.
8. For better appreciation, the relevant issues and the answers to that, as arrived at by the Hon'ble Full Bench, are extracted hereunder:
“(i) Whether the situs of the Trade Mark Registry in Chennai and the name being on its register would itself give rise to cause of action to institute a suit in the Madras High Court?
(ii) Whether the principles of Forum Conveniens or analogous principles apply for consideration of an application for leave to sue under Clause 12 of the Letters Patent in case part of cause of action arises at Chennai? It is the aforesaid two legal questions that have arisen
