The Bombay High Court has set aside an interim injunction granted against Kataria Insurance Brokers Pvt. Ltd., holding that the defence under Section 35 of the Trade Marks Act relating to bona fide use of one’s own name cannot be restricted only to natural persons and may extend to corporate entities using a family surname.
Division Bench of Justice Bharati Dangre and Justice R.N. Laddha held that:
“The appellant’s use of surname ‘Kataria’ is not an attempt to ride on the respondents goodwill, but according to us, it is a legitimate exercise of the right to use the surname or a family name in its trading and business activity. Merely because Kataria Insurance Brokers Pvt. Ltd is a corporate entity, we find that the learned Single Judge has erred in excluding that the benefit of Section 35, by holding that it is not available to a Company, but it is only available to an individual, as the Company may chose its own name.”
The dispute arose from a trademark infringement and passing off suit filed by Plaintiff, proprietor of “Kataria Jewellery Insurance Consultancy”, who claimed exclusive rights over the mark “KATARIA” in Class 36 for insurance services. The Single Judge had granted an injunction restraining the defendant company from using “Kataria Insurance” or similar marks, holding that the surname defence under Section 35 was unavailable to a company. The defendant company challenged this order before the Division Bench.
Allowing the appeal, the Division Bench disagreed with that interpretation and held that the statute does not impose any such limitation. The Court observed:
“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.”
The Court noted that the mark “Kataria” was the family surname of the promoters of the appellant company and had been used historically by the “Kataria Group” across several businesses including automobiles and related services. In such circumstances, the company could legitimately invoke protection for bona fide use of its own name.
Referring to Precious Jewels and Anr Vs. Varun Gems, 2015 1 SCC 160 & Jindal Industries Private Limited Vs. Jindal Sanitaryware Pvt Ltd. & Anr, CS(COMM)251/2023, the Benchemphasised that Section 35 protects bona fide use of a name or business identity and must be interpreted in line with established precedent.
Considering the nature of the businesses involved, the Court also noted that the plaintiff primarily operated in the niche segment of jewellery insurance consultancy, whereas the appellant’s activities were historically linked to automobile and general insurance services within the Kataria group.
Finding that the Single Judge had taken an unduly restrictive view of Section 35 while granting the injunction, the Division Bench concluded that the interim order could not be sustained and set it aside.
Appearances
Mr. J.P. Sen, Senior Advocate with Mr. Kunal Vaishnav, Ms. Monika Tanna, Ms. Dhara Modi and Ms. Harkirat Kaur i/b Singhania Legal Services for the appellants.
Dr.Virendra Tulzapurkar, Senior Advocate with Ashutosh Kane, Kanak Kadam and Ms. Archita i/b W.S. Kane and Co. for the respondents.
