This appeal before the Division Bench (two Judge Bench) of the Bombay High Court arose from an order of the Learned Single Judge granting an interim injunction in a trademark dispute. The plaintiff, Bhavesh Suresh Kataria, had instituted a suit against Kataria Insurance Brokers Pvt. Ltd., alleging trademark infringement and passing off, and sought to restrain the defendant from using the mark “Kataria” in relation to its business.

Background of the Dispute

The plaintiff claimed to be engaged in the insurance business since 1999 and to have specialized in jewellery insurance from 2004 under the name “Kataria Jewellery Insurance Consultancy.” According to the plaintiff, continuous and extensive use of the mark “KATARIA” since 2004 had rendered it distinctive of its business, resulting in substantial goodwill and reputation.

The plaintiff further asserted that it is the registered proprietor of the mark “KATARIA” and in Class 36 and has operated the domain name “www.kataria.insurance” since 2007.

In 2014, the plaintiff discovered that the defendant had incorporated a company under the name “Kataria Insurance Brokers Pvt. Ltd.” and raised objections. Despite assurances to change its name, the defendant allegedly failed to comply, leading to the issuance of a cease-and-desist notice. The plaintiff later found that the defendant continued using the impugned name through the domain “katariainsurance.co.in.”

Consequently, the plaintiff filed the present suit seeking a permanent injunction along with interim relief.

Defendant’s Case

The defendant refuted the allegations, contending that “Kataria” is a long-standing family surname used since 1955 across multiple group entities. It was argued that the plaintiff cannot claim exclusivity over a common surname.

The defendant traced its lineage to a partnership firm, Kataria Transport Company (established in 1955), and highlighted the subsequent incorporation of several entities such as Kataria Infrastructure Pvt. Ltd. (1982), Kataria Automobiles Pvt. Ltd. (1990), Kataria Motors Pvt. Ltd. (2002), and Kataria Wheelers (2011), many of which were engaged in automobile and insurance-related services.

It was further contended that:

1. The use of “KATARIA” is bona fide and protected under Section 35 of the Trademarks Act.
2. The parties operate in distinct segments, jewellery insurance versus automobile/general insurance.
3. No likelihood of confusion arises due to this market distinction.
4. The defendant was willing to undertake not to enter the jewellery insurance segment.

Findings of the Single Judge

The Single Judge granted interim relief in favour of the plaintiff, holding that:

1. The plaintiff is the registered proprietor of the mark “Kataria” in Class 36, and the defendant’s use of “Kataria Insurance” and its corporate name was identical or deceptively similar.
2. The defence under Section 35 was unavailable to the defendant, as it applies only to individuals and not corporate entities.
3. The plaintiff was the prior adopter and user of the mark, with established goodwill in the insurance sector.

Appeal Before the Division Bench

Aggrieved by the order, the defendant preferred an appeal before the Division Bench, reiterating its long-standing use of the surname and challenging the interpretation of Section 35.

Analysis and Findings of the Division Bench

The central issue before the Court was whether the protection under Section 35, relating to bona fide use of one’s own name extends to incorporated entities.

Applicability of Section 35 to Companies

The Division Bench disagreed with the Single Judge’s restrictive interpretation. It held that the term “person” under Section 35 includes companies, in light of the General Clauses Act. Accordingly, a corporate entity may also invoke the defence of bona fide use of its own name.

On facts, the Court found that:

1. “Kataria” is a family surname.
2. The name has been continuously used since 1955 across several family-run businesses.
3. The adoption of the name by the defendant was not opportunistic, but a continuation of established business practice.

The Court therefore held that the defendant’s use was bona fide and protected under Section 35.

Scope of Trademark Protection in Class 36

The Court also addressed the argument relating to the breadth of Class 36, noting that it encompasses a wide range of services, including insurance, finance, and real estate.

It clarified that:

• Registration in a class does not confer monopoly over all services within that class.
• Protection is limited to the specific services for which the mark is used and registered.

No Likelihood of Confusion

A key factor in the Court’s reasoning was the distinction between the parties’ businesses:

• The plaintiff operated in the niche segment of jewellery insurance.
• The defendant was engaged in automobile and general insurance.

Given this clear market differentiation, the Court held that there was no likelihood of confusion or deception, and therefore no infringement under Section 29.
Equities and Balance of Convenience

The Court further noted that:

• The defendant had built substantial goodwill over decades of continuous use.
• Restraining the defendant would cause significant prejudice.
• The defendant’s undertaking not to enter the jewellery insurance segment adequately safeguarded the plaintiff’s interests.

Conclusion

In light of the above findings, the Division Bench set aside the interim injunction granted by the Single Judge and allowed the appeal. The defendant was permitted to continue using “Kataria” in its trade name, corporate name, and domain name.

Comment

This decision underscores a balance in trademark law between statutory exclusivity and the legitimate use of personal or family names. By recognizing that Section 35 extends to corporate entities and giving due weight to long-standing, bona fide use, the Division Bench reaffirmed that trademark rights cannot be stretched to monopolize common surnames, especially in the absence of real market overlap or likelihood of confusion.