The Bombay High Court has clarified that the “surname defence” under Section 35 of the Trade Marks Act, 1999 can be invoked even by a company, provided the use of the surname is bona fide and connected to a genuine family business lineage.
The ruling came in the trademark dispute Kataria Insurance Brokers Pvt Ltd v. Bhavesh Suresh Kataria, Proprietor, Kataria Jewellery Insurance Consultancy, where the Court examined whether a corporate entity can rely on the statutory protection allowing the use of one’s own name.
A Division Bench comprising Justice Bharati Dangre and Justice R. N. Laddha set aside the earlier order of a single judge and held that Section 35 does not restrict its protection only to natural persons.
What is Section 35 of the Trade Marks Act?
WSection 35 of the Trade Marks Act, 1999 provides protection for the bona fide use of a person’s own name or place of business, even if that name forms part of a registered trademark.
The provision states that a registered trademark owner cannot prevent another person from using their own name honestly in business, provided the use is not misleading or intended to exploit the trademark owner’s goodwill.
The key legal issue in this case was whether a company can claim this defence, since companies have the ability to choose their corporate names.
Background of the Kataria Trademark Dispute
The dispute arose between two businesses using the surname “Kataria”:
- Kataria Jewellery Insurance Consultancy, run by Bhavesh Suresh Kataria in Mumbai.
- Kataria Insurance Brokers Pvt Ltd, an Ahmedabad-based insurance brokerage company.
Bhavesh Kataria alleged that the brokerage company was infringing his registered trademarks “Kataria” and passing off its services by using the name Kataria in:
- its corporate name
- trading style
- domain name
He approached the Bombay High Court seeking an injunction against the brokerage company.
Single Judge’s Order Restricting Use of “Kataria”
In December 2025, a single judge bench restrained Kataria Insurance Brokers Pvt Ltd from using the word “Kataria” in its corporate name, trading style, and domain.
The Court held that Section 35 applies only to natural persons, reasoning that companies can freely choose their names and therefore should not be able to rely on the statutory protection meant for individuals.
Division Bench Reverses the Single Judge’s View
The decision was challenged before a Division Bench comprising Justice Bharati Dangre and Justice RN Laddha.
The Bench disagreed with the earlier interpretation and observed that Section 35 does not contain any explicit restriction excluding companies from its scope.
The Court stated:
“Merely because Kataria Insurance Brokers Pvt. Ltd is a corporate entity, the Single Judge has erred in excluding the benefit of Section 35.”
The judges further clarified that the law does not impose any blanket prohibition preventing companies from relying on the surname defence.
Court Recognises Legitimate Family Business Lineage
A significant factor in the Court’s decision was the brokerage company’s claim that “Kataria” is the surname of its promoters and has been used in business activities since 1955.
The family had been operating in multiple sectors through different firms and companies, including:
- transport
- automobiles
- real estate
- insurance
The Court concluded that the use of the surname was not an attempt to exploit the goodwill of the plaintiff, but rather a legitimate exercise of the right to use a family name in business.th reality.
No Overlap in Business Activities
Another important aspect of the case was the difference in the business segments of the two parties.
While both operated in the broader insurance sector:
- Kataria Jewellery Insurance Consultancy specialized in insurance for the gems and jewellery industry.
- Kataria Insurance Brokers Pvt Ltd dealt with motor and general insurance services.
The Court observed that there was no direct overlap in their business operations.
However, the brokerage company gave an undertaking that it would not enter the jewellery and gems insurance segment, which helped resolve the conflict.
Legal Representation in the Case
- Senior Advocate JP Sen, along with advocates Kunal Vaishnav, Monika Tanna, Dhara Modi and Harkirat Kaur, appeared for Kataria Insurance Brokers Pvt Ltd.
- Senior Advocate Virendra Tulzapurkar, along with advocates Ashutosh Kane, Kanak Kadam and Archita, represented Kataria Jewellery Insurance Consultancy.
Significance of the Judgment
The ruling of the Bombay High Court clarifies an important aspect of trademark law in India.
Key takeaways include:
- Companies can invoke the surname defence under Section 35.
- The protection applies if the use of the surname is bona fide and linked to genuine business lineage.
- Courts will consider whether the use is intended to mislead consumers or exploit another’s goodwill.
- Distinct business fields and undertakings can play a crucial role in resolving trademark conflicts.
This judgment may have broader implications for family-run businesses and companies using surnames as brand names.
Case Details
Case: Kataria Insurance Brokers Pvt Ltd v. Bhavesh Suresh Kataria
Court: Bombay High Court
Bench: Justice Bharati Dangre and Justice RN Laddha
Law Involved: Section 35, Trade Marks Act, 1999
