The Madras High Court has clarified that a plaint alleging both trademark infringement and passing off cannot be rejected under Order VII Rule 11 CPC merely because leave to sue was not obtained under Section 134(2) of the Trade Marks Act, 1999, provided the plaint discloses a cause of action within the court’s territorial jurisdiction.
Background & Facts
The Dispute
The plaintiff, Lifestyle International Private Limited, filed a suit in the Commercial Division of the Madras High Court alleging that the defendant, Bibin John trading as Melange Designing Studio, infringed its registered trademark "MELANGE" and committed passing off by using a similar device mark containing the word "MELANGE" on apparel. The plaintiff claimed exclusive rights to the mark through registration and continuous use since 2017.
Key Facts
- The plaintiff holds Trade Mark No. 3587424 registered in Class 40 with effect from 08.07.2017.
- The plaintiff operates a branch office in Chennai at Express Avenue, Triplicane, within the territorial jurisdiction of the Madras High Court.
- The defendant, based in Ernakulam, Kerala, sells products bearing the contested mark through online platforms accessible in Chennai.
- The plaintiff filed the suit on 02.01.2024 as a composite suit under Section 134(2) of the Trade Marks Act, 1999, without seeking prior leave from the court.
- An application for joinder of causes of action (infringement and passing off) was filed along with the plaint and was granted by the court.
- The defendant filed a written statement and subsequently moved an application under Order XIV Rule 8 read with Order VII Rule 11 CPC seeking rejection of the plaint.
Procedural History
- 02.01.2024: Plaint filed in C.S.(Comm.Div) No.2 of 2024 before the Madras High Court.
- 05.02.2024: Application for joinder of causes of action allowed by the court.
- 15.03.2024: Written statement filed by the defendant.
- 10.04.2024: Defendant filed Application No.2893 of 2025 seeking rejection of plaint under Order VII Rule 11 CPC.
- 08.04.2026: Hearing concluded and order passed by Justice Senthilkumar Ramamoorthy.
The Parties' Positions
- Plaintiff: Argued that the plaint discloses a cause of action for both infringement and passing off within the court’s jurisdiction due to the defendant’s online sales in Chennai and the plaintiff’s branch office presence.
- Defendant: Contended that the suit was improperly framed as a composite suit to circumvent the requirement of obtaining leave under Section 134(2) TM Act, and that no cause of action for passing off exists within Chennai.
Relief Sought
The defendant sought rejection of the plaint as non-maintainable under Order VII Rule 11 CPC on the grounds that:
- The suit was a disguised attempt to avoid obtaining leave to sue;
- The cause of action for passing off was not established within the territorial jurisdiction;
- The failure to obtain leave rendered the suit barred by law.
The Legal Issue
The central question was whether a plaint alleging both trademark infringement and passing off can be rejected under Order VII Rule 11 CPC solely on the ground that the plaintiff did not obtain leave under Section 134(2) of the Trade Marks Act, 1999, and whether the averments in the plaint, if accepted as true, disclose a cause of action within the court’s jurisdiction.
Arguments Presented
For the Appellant/Petitioner
The defendant’s counsel relied on Harman Overseas v. Dongguan Tr Bearing Company Limited (2017 SCC OnLine Bom 7327) to argue that jurisdictional defects cannot be cured by mere joinder of causes of action. He contended that since the plaintiff was aware of the registered trademark in Class 40, the composite suit was a procedural ruse to bypass the statutory requirement of leave. He further argued that the absence of any physical presence or sales activity by the defendant in Chennai negated a cause of action for passing off within the jurisdiction.
For the Respondent/State
The plaintiff’s counsel countered that the application for joinder had already been granted, and rejection under Order VII Rule 11 CPC requires a clear legal bar or absence of cause of action - not procedural irregularities. He emphasized that the plaint explicitly stated the plaintiff’s Chennai branch office and the defendant’s online sales accessible in Chennai, which, if accepted as true, satisfy the threshold for territorial jurisdiction and cause of action.
The Court's Analysis
The Court examined the scope of Order VII Rule 11 CPC, which permits rejection of a plaint only if it fails to disclose a cause of action or if the suit is barred by law. The Court held that the mere failure to obtain leave under Section 134(2) TM Act does not render the suit "barred by law" within the meaning of Clause (d) of Order VII Rule 11. Such a defect, if any, is procedural and curable, not jurisdictional or fatal.
"The test to be applied is whether such averments disclose a cause of action and not whether the plaintiff is in a position to establish all elements of such cause of action so as to succeed."
The Court noted that paragraph 21 of the plaint alleged continuous use of the impugned mark by the defendant, constituting both infringement and passing off. Paragraph 22 specifically averred the existence of the plaintiff’s branch office in Chennai and the availability of the defendant’s products through online platforms accessible in the city. The Court held that these averments, if taken as true, are sufficient to establish a cause of action within the territorial jurisdiction.
The Court distinguished Harman Overseas, noting that the case dealt with a different factual matrix involving foreign defendants and forum shopping, and did not address the sufficiency of online sales as a basis for jurisdiction in India. The Court further observed that the grant of joinder of causes of action by the court itself negated any claim of procedural fraud.
The Verdict
The application for rejection of the plaint was dismissed. The Court held that the plaint discloses a cause of action for both infringement and passing off within its jurisdiction, and the failure to obtain leave under Section 134(2) TM Act does not render the suit non-maintainable under Order VII Rule 11 CPC. No order as to costs was made.
What This Means For Similar Cases
Cause of Action for Passing Off Can Be Established Through Online Sales
- Practitioners may now rely on online sales accessible within a jurisdiction to establish territorial jurisdiction for passing off claims, even without physical presence.
- Evidence of website accessibility, delivery to customers in the forum state, and digital advertising targeted at the region suffices at the pleading stage.
Joinder of Causes of Action Does Not Cure Jurisdictional Defects, But Does Not Create One Either
- Courts will not reject a plaint under Order VII Rule 11 merely because leave under Section 134(2) was not obtained - this is a procedural irregularity, not a substantive bar.
- Plaintiffs may proceed with composite suits alleging infringement and passing off, provided the jurisdictional link is plausibly pleaded.
Pleading Standard Under Order VII Rule 11 Is Low at Threshold Stage
- At the rejection stage, courts must assume all averments in the plaint are true.
- The burden to disprove the cause of action arises only at trial, not at the pleading stage.
