Companies Can Claim Section 35 Protection For Family Name: Bombay HC

In a pivotal ruling on corporate trade name protection, the Bombay High Court has declared that the statutory protection under Section 35 of the Trade Marks Act, 1999 for bona fide use of a family surname extends to incorporated entities and cannot be monopolized across an entire class by a trademark registrant.

A Single Judge Bench of Justice Somasekhar Sundaresan issued this precedent-setting ruling while adjudicating an application under Order XXXIX Rule 4 read with Section 151 of the Code of Civil Procedure, 1908, seeking the vacation of a previous temporary injunction that had completely restrained a registered insurance broker from using its corporate name.

Court's Rationale on Section 35 and Corporate Identity

The High Court held that Section 35 overrides other provisions of the Trade Marks Act, 1999 to safeguard bona fide adoption of personal names. Addressing the distinction between natural persons and corporate entities, the Court, in its reasoning, observed:

"...if that choice for a body corporate is made by a human being by adopting the family surname as the corporate name is bona fide, such use cannot be lightly interfered with – certainly not on the basis that someone else having the same family surname has registered that very surname as a trade mark. Section 35 of the TM Act is evidently designed to protect against such an anomaly."

The Court noted that the promoters of the Defendant company had consistently used the 'Kataria' family name across all group businesses since 1955. Grounding its approach on the Supreme Court's ruling in Precious Jewels & Anr. v. Varun Gems ( "(2015) 1 SCC 160": 2014 CaseBase(SC) 359) as well as jurisprudence in M/s Chandra Engineers v. M/s Multifrig Marketing Co. Pvt. Ltd. & Anr ( "RFA(COMM) 352/2025 & CM Appl. 36957/2025 Division Bench Delhi High Court Judgment dated December 9, 2025": 2025 CaseBase(DEL) 7008), Jindal Industries Private Limited v. Suncity Sheets Private Limited and Another, and Vasundhra Jewellers Pvt. Ltd. v. M/s Vasundhara Fashion Jewellery LLP & Anr ( "FAO(OS) (COMM) 232/2023 & CM APPL. 55117/2023 Division Bench Delhi High Court Judgement dated August 18, 2025": 2023 CaseBase(DEL) 1814), the Court affirmed that the form of a business organization does not truncate an individual's substantive right to use an inherited surname.

Evaluating the scope of Class 36 services, the Court distinguished precedents such as Seamons Seeds Pvt. Ltd. vs. Mahyco Pvt. Ltd. and Mauj Mobile (P) Ltd, v. Mohalla Tech (P) Ltd., applying the principle in Vishnudas Trading vs. Vazir Sultan Tobacco Co. Ltd. to hold that a niche market player cannot claim a monopoly over the generic sphere of insurance.

Directions Issued to the Parties

In substitution of the absolute blanket injunction granted earlier, the Court issued specific directions to recalibrate the interlocutory arrangement. The Court has following directions:

"(a) The Defendant shall not engage in any manner whatsoever in playing the role of any market intermediary in the field of insuring any activity in the gems and jewellery sector;
(b) The Defendant shall be free to continue to use its corporate name without any alteration in it. The Defendant would not be required to change its name in its insurance broking license issued by the IRDAI or in the certificate of incorporation issued by the ROC;
(c) As a counterbalancing measure, also taking on board the Defendant’s commitment made to Court that Defendant will steer clear of all insurance-related activity in the gems and jewellery sector, the Defendant is also directed to keep safe distance in the formulation of a new domain name on the internet and in its social media accounts, so as to not cause any confusion even if such confusion may be regarded only as initial confusion that may get resolved as and when the user of the respective websites discovers that the two channels are different;
(d) Towards this end, the smooth usage of the Plaintiff’s website www.katariainsurance.com shall not be interfered with, and the Defendant shall not revive, transfer or otherwise deal with the domain name www.katariainsurance.co.in, which shall be kept dormant pending the hearing and final disposal of the Suit. Instead, the Defendant shall set up a website with a domain name that distinctly differentiates itself from the phrase “Kataria Insurance”, which is the only phrase used in the Plaintiff’s domain name, namely, www.katariainsurance.com It is clarified for the avoidance of doubt that the other website with domain name www.policyleader.co.in may revive without any interference, subject to compliance with this judgement;
(e) The Defendant shall make it clear in its new domain name that it is an insurance broker and has nothing to do with the field of insurance in the gems and jewellery sector, and adopt a reasonable and discernible communication approach to make this clear to the world at large. Consistent with its commitment to steer clear of any facet of insurance relating to the gems and jewellery sector, although the role of the Defendant is different from the role of the Plaintiff in the field of insurance, the Defendant shall prominently display on its website that it has nothing to do with the Plaintiff or its proprietor and the business activities of the Plaintiff;
(f) The Defendant shall maintain true and faithful accounts of the revenue earned by it in the conduct of its insurance broking business under its corporate name, pending the hearing and final disposal of the Suit, and shall file in this Court a statement of such accounts, certified by its statutory auditor, once in every six months;
(g) Liberty is granted to either party to apply in the event of any difficulty in operationalising this arrangement."

Background

The dispute arose when Plaintiff Bhavesh Suresh Kataria, operating as 'Kataria Jewellery Insurance Consultancy', filed a suit alleging trademark infringement and passing off against Defendant Kataria Insurance Brokers Pvt. Ltd. The Plaintiff had registered the word mark 'KATARIA' and a label mark in Class 36, primarily serving the gems and jewellery insurance sector. On December 8, 2025, an ex-parte interim injunction was granted restraining the Defendant from using 'Kataria' in its trading, domain, or corporate name.

Although a Division Bench had previously set aside the order on merits, the Supreme Court remanded the matter to the Single Judge to permit the Defendant to seek vacation under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908. The Defendant established that as an IRDAI-registered insurance broker carrying on a family business legacy, an absolute ban caused undue hardship. Accepting the maintainability of the application under Section 151 of the Code of Civil Procedure, 1908 and Order XXXIX Rule 4, the High Court varied the interim order, allowing the Defendant to retain its corporate name subject to structural safeguards.

Case Details:
Case No.: Commercial IP Suit No. 215 of 2021
Case Title: Bhavesh Suresh Kataria v. Kataria Insurance Brokers Pvt. Ltd.
Appearances:
For the Petitioner(s): Dr. Birendra Saraf, Senior Advocate a/w Hiren Kamod, Deeksha Jani, Jinay Jain, i/b Jani & Parikh
For the Respondent(s): Mr. J. P. Sen, Senior Advocate a/w Kunal Vaishnav, Monika Tanna, Dhara Modi, Nandita Dethe, Harkiratkaur Ahluwalia, Ameya Gaurd, i/b Singhania Legal Services

Source: 2026 CaseBase(BOM) 3910