Clause XII Leave in Trademark Suits at the Bombay High Court

A trademark suit filed on the Original Side of the Bombay High Court requires leave under Clause XII of the Letters Patent whenever only part of the cause of action arises within Greater Mumbai. Section 20 of the Code of Civil Procedure, 1908 lets a plaintiff sue where the defendant resides or the cause of action arose, while Section 134(2) of the Trade Marks Act, 1999 adds a further forum where the registered proprietor resides or carries on business. This post explains when Clause XII leave is required and how it interacts with Section 134(2) jurisdiction and the Sanjay Dalia limit on forum shopping.

Where Can a Trademark Suit Be Filed?

There are two routes to jurisdiction. The ordinary rule in Section 20 of the Code of Civil Procedure lets a plaintiff sue where the defendant resides or carries on business, or where the cause of action arose. Trademark law adds a second route: Section 134(2) of the Trade Marks Act, 1999 allows the proprietor to sue where it resides or carries on business, an additional forum not available in an ordinary civil suit. This extra forum is a real advantage for a brand owner, because it can often sue at its own home court rather than chasing the infringer to wherever it operates.

The Sanjay Dalia Limit on Forum Shopping

That advantage is not unlimited. In Indian Performing Right Society Ltd. v. Sanjay Dalia [(2015) 10 SCC 161], the Supreme Court held that Section 134(2), and the parallel Section 62(2) of the Copyright Act, provide an additional forum but must not become an instrument of forum shopping. Where the plaintiff has its principal place of business at a location, and the cause of action also arose there, it cannot drag the defendant to a different place merely because it happens to keep a subordinate office there. The extra forum is meant to spare a plaintiff inconvenience, not to let it pick the most awkward venue for the defendant.

Clause XII of the Letters Patent: Leave to Sue

On the Original Side of the Bombay High Court there is a further layer. Under Clause XII of the Letters Patent, where only part of the cause of action arises within the court ordinary original civil jurisdiction, which for the Bombay High Court is Greater Mumbai, the suit can be instituted only with the leave of the court. In a trademark case this arises constantly, because infringing goods are often sold both within Mumbai and outside it, so the cause of action is split. The plaintiff must apply for leave under Clause XII of the Letters Patent when it files the suit, and a suit that needed leave but was filed without it is not properly instituted.

Clause XIV: Joining Infringement and Passing Off

A related question is how to bring an infringement claim and a passing off claim together. The registered proprietor can rely on Section 134(2) for the infringement claim, but the passing off claim, resting on common law, may need to be combined under Clause XIV of the Letters Patent, which lets the court join a second cause of action with one it already has jurisdiction to try. The Bombay High Court has held that Section 134(2) of the Trade Marks Act does not bar the applicability of Clause XIV, so a brand owner can bring both claims in one composite suit with the appropriate leave.

Why Does Getting Jurisdiction and Clause XII Leave Right Matter?

Jurisdiction and leave are not dry technicalities; they are among the first weapons a defendant reaches for. A defendant faced with an inconvenient forum will challenge the Section 134(2) basis, invoke Sanjay Dalia to argue forum shopping, or attack the Clause XII leave, and if it succeeds the suit can be returned or dismissed before the merits are ever reached. For the brand owner, choosing the right forum and pleading the jurisdictional basis carefully at the outset is what keeps the case on the rails.

Drafting the Jurisdiction Paragraph in the Plaint

The disciplined approach is to map, before filing, where the cause of action actually arose, where the plaintiff carries on business, and whether the chosen forum is defensible against a Sanjay Dalia challenge, and then to seek Clause XII leave where only part of the cause of action falls within Greater Mumbai. A little care at the drafting stage avoids a jurisdictional detour that can cost months. For a defendant, the same analysis, run in reverse, often reveals the quickest way to unsettle a suit brought in the wrong place.

Section 134(2) and the Convenience of the Brand Owner

Section 134(2) exists because Parliament recognised that a brand owner should not always have to chase an infringer to a distant court. It lets the proprietor sue at its own base, which for a Mumbai company means the Bombay High Court, even where the defendant operates elsewhere. This is a real practical advantage, sparing the plaintiff the cost and inconvenience of litigating far from home, and it is one of the reasons brand owners value a registration.

The advantage is bounded by Sanjay Dalia, which stops the section being stretched into pure forum shopping, but within those bounds it is powerful. A brand owner planning enforcement should map its own places of business against where the infringement is occurring, because the intersection often reveals a convenient and defensible forum that an ordinary civil suit could not reach.

Pleading Cause of Action and Clause XII Leave in the Plaint

The jurisdictional basis has to be pleaded, not assumed. The plaint should set out where the cause of action arose, where the plaintiff carries on business, and, where only part of the cause of action falls within Greater Mumbai, should seek leave under Clause XII in terms. A carefully pleaded jurisdiction paragraph is the first line of defence against the threshold challenge that so often opens a trademark suit.

Frequently Asked Questions

Where can a trademark infringement suit be filed in India?

Under the ordinary rule in Section 20 of the Code of Civil Procedure, where the defendant resides or carries on business or where the cause of action arose, and additionally, under Section 134(2) of the Trade Marks Act, where the plaintiff resides or carries on business. Section 134(2) gives a brand owner an extra forum that ordinary civil suits do not have.

What did Sanjay Dalia decide about jurisdiction?

In Indian Performing Right Society v. Sanjay Dalia the Supreme Court held that Section 134(2) provides an additional forum but is not a licence for forum shopping. Where the plaintiff has its principal place of business at a location and the cause of action also arose there, it cannot sue at a different place merely because it has a subordinate office there.

What is leave under Clause XII of the Letters Patent?

On the Original Side of the Bombay High Court, where only part of the cause of action arises within the court ordinary original civil jurisdiction, the suit can be instituted only with the leave of the court under Clause XII of the Letters Patent. The leave is sought at the time the suit is filed.

When is Clause XII leave needed in a trademark suit?

When the trademark suit is filed on the Original Side and only part of the cause of action, for example some of the infringing sales, arose within Greater Mumbai while the rest arose elsewhere. In that situation the plaintiff must obtain leave under Clause XII for the suit to proceed.

How does joining passing off with infringement affect leave?

A registered proprietor can invoke Section 134(2) for the infringement claim, but a passing off claim may need to be combined under Clause XIV of the Letters Patent. The Bombay High Court has held that Section 134(2) of the Trade Marks Act does not bar the applicability of Clause XIV, so both claims can be brought together with the appropriate leave.

What happens if leave is not obtained or is refused?

A suit that required leave under Clause XII but was filed without it, or where leave is later revoked, is not properly instituted and can be dismissed or returned. A defendant will often challenge the leave and the jurisdiction at the threshold, so getting it right when the suit is filed is essential.

Vikrant D. Shetty | Leads the Intellectual Property and Commercial Litigation Practice at the law firm Vikrant D. Shetty & Associates, Advocates & Solicitors at Mumbai, which advises and represents brand owners, businesses and defendants before the Bombay High Court in trademark and copyright infringement and passing-off actions, interim injunctions, rectification and registry proceedings, and IP-related commercial disputes.

Can a defendant challenge the forum a trademark plaintiff has chosen?

Yes, and defendants frequently do. A defendant facing an inconvenient forum can dispute the Section 134(2) basis for jurisdiction, invoke the Sanjay Dalia limitation to argue the suit amounts to forum shopping, or challenge whether Clause XII leave was properly obtained. Any of these challenges, if successful, can see the suit returned or dismissed at the threshold before the infringement allegations are ever examined on merits. A plaintiff should anticipate and pre-empt each of these challenges when drafting the plaint rather than treating jurisdiction as a formality.

What is a subordinate office under the Sanjay Dalia principle, and why does it not create a separate forum?

A subordinate office is a branch or secondary place of business the plaintiff maintains apart from its principal place of business. The Supreme Court in Indian Performing Right Society v. Sanjay Dalia held that where the plaintiff's principal place of business and the cause of action both sit at one location, it cannot sue elsewhere merely because it also keeps a subordinate office there. Allowing that would let a plaintiff manufacture jurisdiction anywhere it maintains a token office, defeating the purpose of Section 134(2), which is to spare genuine inconvenience rather than enable forum shopping.

Is Clause XII leave required for every trademark suit filed at the Bombay High Court?

No. Clause XII leave is required only where part of the cause of action arises within Greater Mumbai and part arises outside it. A trademark suit where the entire cause of action, meaning every act of infringement or sale, occurred within Greater Mumbai does not need this leave, since the Bombay High Court's ordinary original civil jurisdiction already covers it without a split. The leave requirement exists specifically to address the split-jurisdiction scenario that trademark infringement, sold across multiple locations, commonly creates.

Does the Clause XII leave requirement apply outside the Bombay High Court?

Clause XII leave is specific to suits filed on the Original Side of the Bombay High Court, which exercises ordinary original civil jurisdiction over Greater Mumbai under its Letters Patent. A trademark suit filed in a district court or a High Court without this chartered Original Side jurisdiction follows the ordinary rules under Section 20 of the Code of Civil Procedure, 1908 and Section 134(2) of the Trade Marks Act, 1999, without the additional Clause XII leave layer that applies specifically to the Bombay High Court's Original Side.

How should a brand owner decide where to sue for trademark infringement?

A brand owner should map its own places of business against where the infringing activity is actually occurring, since the overlap between the two often reveals a forum that is both convenient for the plaintiff and defensible against a Sanjay Dalia challenge. Suing purely at a subordinate office with no genuine connection to the cause of action invites a jurisdictional challenge, while suing at the principal place of business where the infringement is also felt is comparatively secure. This mapping exercise should happen before drafting the plaint, not after a jurisdictional objection is raised.

What should the plaint state to establish jurisdiction under Section 134(2)?

The plaint should set out precisely where the cause of action arose and where the plaintiff resides or carries on business, since Section 134(2) of the Trade Marks Act, 1999 is founded on those facts. Where only part of the cause of action falls within Greater Mumbai, the plaint should also expressly seek leave under Clause XII of the Letters Patent rather than assume the court will grant it without being asked. A carefully drafted jurisdiction paragraph is often the first line of defence against a threshold challenge to the suit.

Does satisfying Section 134(2) jurisdiction remove the need for Clause XII leave?

No. The two operate as separate layers on the Original Side of the Bombay High Court. Section 134(2) of the Trade Marks Act, 1999 establishes that the plaintiff may sue where it resides or carries on business, but if only part of the cause of action actually arose within Greater Mumbai, the plaintiff still needs Clause XII leave before the suit can be instituted. Satisfying one requirement does not excuse compliance with the other, and a plaint should address both separately.

This article is for general informational purposes only and does not constitute legal advice. For advice specific to your situation, please seek direct consultation with an advocate.