Mere Delivery or Billing in Mumbai Does Not Confer Jurisdiction: Bombay High Court on Trade Mark Suits, Section 134(2) TM Act and Section 20 CPC

Introduction

This commentary examines the Bombay High Court’s oral judgment dated 11 August 2025 in ARCEE Electronics (through its partner Dev Sharma) v. ARCEEIKA and Ors., a commercial intellectual property suit alleging trade mark infringement and passing off with respect to the registered mark “ARCEE.” The litigation pivoted not on merits of infringement but on the Court’s territorial jurisdiction to entertain the suit on its Ordinary Original Civil side.

The Plaintiff, a partnership firm operating 23 showrooms in Navi Mumbai and Raigad, accused the Defendants of launching competing electronic goods showrooms under the name “ARCEEIKA,” with allegedly similar font, colour, and trade dress. The Defendants invoked Order VII Rule 10 of the Code of Civil Procedure, 1908 (CPC) to seek return of the plaint for want of territorial jurisdiction. The central issues were:

Whether the Plaintiff “carries on business” in Mumbai so as to invoke Section 134(2) of the Trade Marks Act, 1999 (TM Act).
Whether any part of the cause of action arose in Mumbai to sustain jurisdiction under Section 20 CPC.
Whether delivery or billing addresses in Mumbai, reflected in invoices, suffice to establish jurisdiction.
What role Clause XIV of the Letters Patent (Bombay) plays when jurisdiction is otherwise not established.

Summary of the Judgment

Justice Sandeep V. Marne returned the plaint under Order VII Rule 10 CPC holding that the Bombay High Court (Original Side) lacked territorial jurisdiction:

The Plaint contained no averments establishing that the Plaintiff carries on business in Mumbai; rather, it positively showed all business operations in Navi Mumbai and Raigad (paras 8–10).
Invoices showing delivery or billing addresses in Mumbai did not prove that the Plaintiff carries on business in Mumbai; the place of sale and pickup was in Navi Mumbai (paras 14, 21).
For Section 134(2) TM Act, jurisdiction depends on where the Plaintiff resides or carries on business; these preconditions were not met (paras 12–14).
For Section 20 CPC (including passing off), the Plaintiff failed to plead or prove that any part of the cause of action arose in Mumbai (paras 15–16, 21–22).
Following Indian Performing Rights Society Ltd. v. Sanjay Dalia (2015) 10 SCC 161 and Manugraph India Ltd. v. Simarq Technologies Pvt. Ltd., 2016 SCC OnLine Bom 5334, the Court reaffirmed that Section 134(2) TM Act offers an additional forum but does not sanction forum shopping; and Section 20 CPC remains applicable (paras 17–20).

Consequently, the Interim Application seeking return of plaint was allowed, and the suit and connected applications were disposed of (para 23–24).

Analysis

1) Statutory Framework and the Court’s Approach

Section 134(1) TM Act channels suits for infringement/passing off to a “District Court” (which includes the High Court on its original side in jurisdictions like Bombay).
Section 134(2) TM Act provides an additional forum where the plaintiff actually and voluntarily resides, carries on business, or works for gain—“notwithstanding” the CPC.
Section 20 CPC allows suit where defendants reside/carry on business or where the cause of action arises, wholly or in part.

The Court harmonized these provisions per the Supreme Court’s guidance in Sanjay Dalia: Section 134(2) confers an additional plaintiff-centric forum but does not displace Section 20 CPC or permit abuse. Plaintiffs must ground jurisdiction either by their presence (residence/business) under Section 134(2) or by cause of action/defendant’s presence under Section 20 CPC. On facts, neither route was satisfied.

2) Precedents Cited and Their Influence

a) Indian Performing Rights Society Ltd. v. Sanjay Dalia & Another, (2015) 10 SCC 161

The Supreme Court’s decision is the lodestar for jurisdiction in IP suits. Key takeaways the High Court reiterated:

Section 134(2) TM Act (and the analogous Section 62(2) Copyright Act) provides an additional forum where the plaintiff resides or carries on business; it does not exclude Section 20 CPC (para 14, Sanjay Dalia).
Where the plaintiff’s principal place of business is also where the cause of action arises, the plaintiff should sue there; the special forum cannot be used to drag defendants to distant locales (paras 18, 23, 52, Sanjay Dalia).
For passing off (TM Act s.134(1)(c)), Section 20 CPC continues to govern (para 23, Sanjay Dalia).

The Bombay High Court faithfully applied these rules, scrutinizing whether the Plaintiff’s business presence or the cause of action connected to Mumbai existed in fact and in pleadings.

b) Manugraph India Ltd. v. Simarq Technologies Pvt. Ltd., 2016 SCC OnLine Bom 5334

Manugraph distilled post–Sanjay Dalia principles for the Bombay High Court:

A plaintiff can sue where it resides/carries on business or, alternatively, rely on Section 20 CPC (para 36(a)–(b), Manugraph).
But a plaintiff cannot ignore the principal office/Section 20 options and choose a remote branch with no connection to cause of action or defendant—preventing forum shopping (para 36(c)–(d), Manugraph).

Echoing Manugraph, the Court found that Mumbai could not be chosen when the Plaintiff’s showrooms and sales (hence business and alleged infringement impact) were centered in Navi Mumbai/Raigad, and no Mumbai cause of action was demonstrated.

3) The Court’s Legal Reasoning Applied to the Facts

a) The pleading deficit is fatal

The Court underscored that jurisdictional facts must be specifically pleaded. The plaint:

Affirmatively stated the Plaintiff’s showrooms/head office/warehouse are in Navi Mumbai and Raigad (paras 8–10; quoting paras 3.1–3.2 of the plaint).
Contained no averment of carrying on business in Mumbai or of any part of the cause of action arising in Mumbai (paras 10–11, 21–22).

This silence made it impossible to sustain jurisdiction on either Section 134(2) TM Act or Section 20 CPC.

b) “Place of sale” governs; delivery/billing addresses do not

The Plaintiff attempted to rely on invoices evidencing delivery/billing addresses in Mumbai. The Court rejected this as a basis for “carrying on business” in Mumbai or for a Mumbai cause of action:

Invoice showing sale at Plaintiff’s Panvel showroom with delivery to Vile Parle: the business is sale of goods, not delivery; thus, the place of sale determines business location, not the delivery destination (para 14).
Invoice referencing a “Mulund Check Naka” branch was unhelpful: the plaint did not plead a Mumbai showroom, and the case consistently said all locations were in Navi Mumbai/Raigad (para 14).
Defendants’ invoices relied on by Plaintiff likewise did not show infringing acts in Mumbai: one lacked delivery details; another reflected customer pickup at Kamothe, Navi Mumbai, rendering the Mumbai address irrelevant (paras 21).

This is a notable refinement: in brick-and-mortar sales with optional delivery, jurisdiction does not track delivery addresses. The determinative anchor is where the sale contract is concluded/acted upon (here, the showroom in Navi Mumbai).

c) Section 134(2) TM Act not satisfied

Because the Plaintiff neither resides nor carries on business in Mumbai (as pleaded on record), the special plaintiff-centric forum was unavailable (paras 13–14, 22).

d) Section 20 CPC not satisfied

No pleading or proof of a Mumbai-situated part of the cause of action was made out. The mere residence of customers in Mumbai or billing to Mumbai addresses did not translate to a Mumbai cause of action, especially where purchase and pickup occurred in Navi Mumbai (paras 15–16, 21–22).

e) Letters Patent Clause XIV leave cannot cure absence of jurisdiction

Although the Plaintiff had filed a Clause XIV leave petition, the Court proceeded on jurisdiction first principles. Clause XIV is a procedural device enabling joinder of causes of action on the Original Side; it does not create territorial jurisdiction absent statutory foundation under Section 134(2) TM Act or Section 20 CPC. The plaint had to be returned for presentation to the competent court (paras 3, 23–24).

4) Impact and Prospective Significance

Sharper pleading standards: Plaintiffs must include a dedicated “jurisdiction” paragraph clearly stating how Section 134(2) TM Act or Section 20 CPC is attracted and attach cogent documents proving business presence or cause-of-action nexus within the chosen forum.
Place-of-sale rule for brick-and-mortar contexts: Deliveries into a forum territory do not, by themselves, establish “carrying on business” there or a “part cause of action.” Plaintiffs should expect close scrutiny of where the sale was concluded and where the impugned acts occurred.
Forum discipline in Greater Mumbai: Businesses operating primarily from Navi Mumbai/Raigad cannot assume access to the Bombay High Court’s Original Side based merely on deliveries into Mumbai. The proper forum would be the Commercial Division/Commercial Courts within the local District Court’s jurisdiction (e.g., Thane/Raigad), unless independent Mumbai-centric jurisdictional facts exist.
Passing off claims remain under Section 20 CPC: Even where infringement claims might potentially leverage Section 134(2), passing off must independently satisfy Section 20 CPC. Plaintiffs should plead both planks distinctly.
Digital/e-commerce nuance: Although not decided here, the judgment signals that in online sales, plaintiffs must demonstrate where the contract is concluded/accepted, where servers/orders are processed, and whether the offending sales were targeted to and consummated within the forum. Mere shipment into a city may be insufficient without more.
Anti–forum shopping message reaffirmed: Consistent with Sanjay Dalia and Manugraph, litigants cannot leverage scattered or incidental connections (like a customer’s address) to choose a plaintiff-friendly but legally unconnected forum.

Complex Concepts Simplified

“Carries on business” (TM Act s.134(2) / CPC s.20): For entities selling goods through physical stores, this typically refers to locations of their showrooms/head office/warehouse where sales are concluded and business operations occur, not destinations of deliveries. For companies, the Explanation to Section 20 CPC recognizes principal office and, where cause arises, subordinate offices.
“Cause of action”: The bundle of facts necessary to prove a claim. For infringement/passing off, this includes the defendant’s acts of use/sale/offer in the forum. A customer’s residence alone is not an “act” of the defendant in the forum.
Order VII Rule 10 CPC (Return of plaint): When a court lacks territorial, pecuniary, or subject-matter jurisdiction, it must return the plaint for presentation to the proper court. This is not a dismissal on merits; the suit can be refiled where competent.
Section 134(2) TM Act’s “notwithstanding” clause: It adds a plaintiff-centric forum without displacing Section 20 CPC. It cannot be used to contrive jurisdiction at a place that has no real connection with the plaintiff’s business or the cause of action.
Letters Patent Clause XIV (Bombay): A procedural mechanism to combine causes of action on the Original Side once territorial jurisdiction is otherwise established. It is not a source of territorial jurisdiction by itself.

Practice Pointers

Plead with precision: Insert a separate jurisdiction section in the plaint identifying the statutory basis (s.134(2) TM Act and/or s.20 CPC), and articulate specific facts tying the dispute to the forum.
Substantiate business presence: If relying on “carries on business,” annex documentary proof of a showroom/office/warehouse in the forum, trade licenses, GST registrations, rental agreements, and sales concluded there.
Prove cause of action in the forum: For Section 20 CPC, attach sales invoices showing sales concluded in the forum, delivery cum payment completion in the forum, or evidence of offers, advertisements, or infringing acts targeted at the forum.
For online sales: Show where orders are accepted, payments processed, and the locus of breach/infringement (e.g., geo-targeted ads, user interface accessible in forum, completed checkouts to forum addresses with acceptance occurring in the forum).
Avoid overreliance on delivery slips: Billing/delivery addresses without proof of sale completion in the forum are unlikely to suffice.
Consider the appropriate forum early: If operations and impugned acts are centered in Navi Mumbai/Raigad, plan for suit in the relevant District Commercial Court to avoid return of plaint delays.

Conclusion

The Bombay High Court has reinforced a disciplined, fact-driven approach to territorial jurisdiction in IP suits:

Jurisdiction is not a matter of convenience but of statutory connection. Plaintiffs must establish a genuine business presence or a real cause-of-action nexus with the forum.
For brick-and-mortar sales, the place of sale—not the delivery or billing address—anchors jurisdiction.
Section 134(2) TM Act is an additional forum, not a license to forum shop; Section 20 CPC remains fully operational.
Letters Patent leave cannot salvage a suit when foundational territorial jurisdiction is missing.

By returning the plaint, the Court sends a clear message: pleadings must squarely and specifically allege jurisdictional facts, and documentary support must match those averments. The ruling will shape forum selection strategies in trade mark litigation across the Mumbai metropolitan region and beyond, particularly for hybrid business models involving physical stores and last-mile deliveries.