Protection Under Section 35 Trademarks Act Extends To Company: Bombay High Court Rules Statutory Defence Is Not Limited Only To Individuals

The Court observed that since the Act does not specifically define the term "person," it must be interpreted under the General Clauses Act, 1897, which encompasses companies and associations.

Consequently, the Court held that a corporate entity continuing a long-standing family business tradition cannot be "blanketly excluded" from the defence, as the provision itself contains no such embargo against artificial persons.

​The Division Bench of Justice Bharati Dangre and Justice RN Laddha observed, “Since we find that the use of the mark ‘Kataria’ by the appellant is bonafide, continuous and though it involve insurance business, the reasoning adopted by the learned Single Judge restricting the applicability of Section 35 to natural persons is also not approved by us as the Trade Marks Act, does not define the term ‘person’ but as per the General Clauses Act, 1897, a person includes any company or association or body of individuals and peculiar circumstance, as placed before us, the Kataria family joined hands in the partnership firm in 1955, and whether it expanded its business, it on numerous occasions through Private Limited Company or through partnership firms or through LLP, and in the present case, through a corporate entity, as the business was run through different acceptable forums in law, and therefore, there was no question of any choice being exercised by the corporate entity because it is not for the first time that the appellant had made the use of the word ‘Kataria’ which is its family name and therefore, we do not agree with the proposition that Section 35 shall blanketly exclude company/companies and can only be availed by an individual, as in the provision itself, we do not find any such embargo.”

Senior Advocate JP Sen appeared for the Appellant/Defendant, while Senior Advocate Virendra Tulzapurkar appeared for the Respondent/Plaintiff.

The Court was hearing a challenge passed by the Single Judge which restrained the Appellant/Defendant from using the the trade name ‘Kataria’., domain name ‘www.katariainsurance.co.in’ and corporate name ‘Kataria Insurance’, on the ground that it infringes the registered trademark of the plaintiff and is deceptively similar to its mark in respect of the services covered by the plaintiff’s registration.

Factual Background

The Plaintiff claimed to have provided life and general insurance services since 1999. In 2004, he specialized in the "Gems and Jewellery" niche, changing his trading name to ‘Kataria Jewellery Insurance Consultancy’. He said that he held two registered trademarks in Class 36 (Insurance, Financial Affairs, etc.). The Defendant was a company offering insurance brokerage services. It operated under the corporate name ‘Kataria Insurance Brokers Private Limited’.

The Plaintiff filed a suit for trademark infringement and passing off after discovering the Defendant’s corporate name and domain. The Plaintiff alleged that the use of "KATARIA" by the Defendant leads to public confusion and dilutes his established goodwill.

The Single Judge of the High Court granted an interim injunction in favor of the Plaintiff, ruling that the Defendant's name was deceptively similar and that the defence of "bona fide use of surname" does not apply to corporate entities. The present appeal was filed by the Defendant challenging the said judgment.

Contention of the Parties

The Appellant/Defendant contended that "Kataria" is the family name/surname of its promoters. They argued that Section 35 of the Trademarks Act protects the bona fide use of one’s own name or the name of one’s place of business. The Appellant/Defendant claimed to be part of the "Kataria Group," which has used the name "Kataria" since 1955 (starting with Kataria Transport Company). They argued that various group entities (e.g., Kataria Automobiles) have been providing motor insurance services long before the Respondent/Plaintiff’s specific niche emerged.

The Appellant/Defendant asserted that the Respondent/Plaintiff operates in a "niche" market (Jewellery Insurance), whereas the Appellant/Defendant focused on "General Insurance" (specifically Automobile Insurance). They argued that the broad classification of Class 36 should not allow the Respondent/Plaintiff to monopolize the name for all types of insurance.

The Respondent/Plaintiff argued that as the registered proprietor of the word mark "KATARIA" in Class 36, he has the exclusive right to use the mark for all insurance services, not just jewellery insurance. It was contended that the Appellant/Defendant’s mark ("Kataria Insurance") and domain (.co.in) are phonetically and structurally identical to the Respondent/Plaintiff’s mark and domain (.com). This was likely to cause "initial interest confusion" among customers. The Respondent/Plaintiff argued that while a natural person may use their surname, a corporate entity (an artificial person) has a choice in naming itself. Therefore, the adoption of "Kataria" by a company could have not been claimed as a "bonafide surname use." The Respondent/Plaintiff pointed out that the Registrar of Companies (ROC) had previously alerted the Appellant/Defendant to the Respondent/Plaintiff’s trademark, and a Director of the Appellant/Defendant company had even signed an undertaking to change the name if objected to, yet they failed to do so.

Observations of the Court

The main issue for the consideration of the Court was about the protection under Section 35 being applicable to incorporated entities, as the Respondent/Plaintiff claimed that it is not available to a Company, as adoption of the name/mark is by choice, and in the case of natural persons, there is no choice.

In this regard, the Court said that Section 35 postulates that no provision in the Trade Marks Act, authorise the owner or registered user of registered trademark to interfere with any authentic use by individuals of their own names, or that of their site of business, or the name of the site of business or the name of any of their predecessor in business, or the use by any individual of authentic description of the character or qualities of their goods or services.

The Court observed, “As far as the use of the name ‘Kataria’ by the appellant, according to us, is bonafide, as we find that the mark ‘Kataria’ happens to be the surname of the promoters and the predecessors of the appellant, and we find that the defence of Section 35 of the Trade Marks Act, raised by the defendant ought to be appreciated at the interim stage, in absence of other contradictory material showing that its use is malafide or, is an attempt to encash upon the goodwill of ‘Kataria Jewellery Insurance Consultancy’.”

The Court held that the Trade Marks Act does not define "person," and therefore, under the General Clauses Act, 1897, the term must include companies and corporate bodies. The Court ruled that Section 35 contains no "blanket exclusion" or embargo preventing a company from using the family name of its promoters.

“As far as the prior use of the trademark “Kataria” is concerned, the appellant’s mark is not registered, but it is using the mark ‘Kataria’ being its surname with continuity and have encashed upon it by creating a business world by use of the goodwill of their forefathers/predecessors and are banking upon the same, and if the appellant Company which is not an isolated one, but belongs to a group of companies, with the use of surname ‘Kataria, is restrained from conduct of its business, it would cause serious prejudice to it”, the Court said.

The Court concluded, “In any case, whether the use of the mark was ‘bonafide’ or whether or not, it was continuous and prior use, is ultimately a matter of trial and these issues shall be determined at that stage. However, since we find that the learned Single Judge has not taken into consideration some of the important facets of the matter, to which we had referred to above, we quash and set aside the said impugned order.”

Accordingly, the Court allowed the appeal and quashed the order passed by the Single Judge, which restrained the Appellant/Defendant from using the trade name ‘Kataria’.

Cause Title: Kataria Insurance Brokers Pvt Ltd v. Bhavesh Suresh Kataria, Proprietor of and Trading as Kataria Jewellery Insurance Consultancy [Neutral Citation:2026:BHC-OS:5691-DB]

Appearances:

Appellant/Defendant: Senior Advocate J.P. Sen, Advocate Kunal Vaishnav, Advocate Monika Tanna, Advocate Dhara Modi, Advocate Harkirat Kaur

Respondent/Plaintiff: Senior Advocate Virendra Tulzapurkar, Advocate Ashutosh Kane, Advocate Kanak Kadam, Advocate Archita.

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