Do Companies Also Enjoy Protection Under Section 35 of the Trademarks Act? Bombay High Court Clarifies

The scope of protection under Section 35 of the Trade Marks Act, 1999, which safeguards the bona fide use of one’s own name, has long generated debate in Indian trademark jurisprudence. A recurring question is whether this statutory defence is available only to natural persons or to corporate entities as well.

This issue came under scrutiny before the Bombay High Court in Kataria Insurance Brokers Pvt. Ltd. v. Bhavesh Suresh Kataria, Proprietor of Kataria Jewellery Insurance Consultancy, Commercial Appeal (L) No. 42036 of 2025, decided on 23 February 2026. The Court clarified that companies are not automatically excluded from Section 35 protection, especially where the corporate name genuinely reflects the promoters' surnames or identities and has been used bona fide in business.

The judgment is significant because it addresses the intersection between registered trademark rights, surname usage, corporate identity, and the scope of statutory defences in infringement actions.

Background of the Dispute

The dispute arose between two entities operating in the insurance sector:

Plaintiff/Respondent: Bhavesh Suresh Kataria, operating as Kataria Jewellery Insurance Consultancy.

Defendant/Appellant: Kataria Insurance Brokers Pvt. Ltd., a company incorporated in Ahmedabad.

The respondent claimed that he had been engaged in the insurance business since 1999, later specialising in insurance policies for the jewellery sector. Around 2004, he adopted the trading name “Kataria Jewellery Insurance Consultancy.”

The respondent subsequently secured trademark registrations in Class 36 for insurance and financial services. The key registrations included:

• “Kataria Jewellery Insurance Consultancy” (label mark) – registered in 2010.
• “Kataria” (word mark) – registered in 2019.

He also operated a domain name 'www.kataria.insurance', through which he promoted his services.

The respondent argued that the word “Kataria” had become the distinctive and essential element of his brand, and that extensive use had generated goodwill and recognition in the insurance market.

Allegations of Trademark Infringement

The dispute intensified when the respondent discovered that the appellant company had:

• Registered the corporate name Kataria Insurance Brokers Pvt. Ltd.
• Operated the website www.katariainsurance.co.in
• Offered insurance services under the mark “Kataria Insurance.”

The respondent alleged that this amounted to:

1. Trademark infringement under Section 29 of the Trade Marks Act.
2. Passing off, since consumers could assume that the appellant’s services were connected to his business.

Accordingly, the respondent filed a commercial IP suit seeking:

• A permanent injunction restraining use of the mark “Kataria”.
• Removal of the impugned domain name.
• Damages for infringement and passing off.

Decision of the Single Judge

During the pendency of the suit, the respondent sought interim relief under Order XXXIX Rules 1 and 2 of the Civil Procedure Code.

The Single Judge of the Bombay High Court granted an injunction against the appellant, holding that:

1. The respondent was the registered proprietor of the trademark “Kataria.”
2. The appellant’s mark “Kataria Insurance” was identical or deceptively similar.
3. Both parties operated in the insurance sector, creating a likelihood of confusion.

Importantly, the Single Judge rejected the appellant’s reliance on Section 35, observing that:

• The defence of bona fide use of one’s own name applies only to natural persons.
• A corporate entity chooses its trade name, unlike an individual who has no control over his surname.

Consequently, the court concluded that the appellant’s adoption of “Kataria” was not protected under Section 35.

Appeal Before the Division Bench

The appellant challenged the injunction before a Division Bench comprising Justice Bharati Dangre and Justice R. N. Laddha.

The primary issues before the Court were:

1. Whether the defence under Section 35 is available to companies.
2. Whether the appellant’s use of the word “Kataria” was bona fide.
3. Whether the plaintiff could claim exclusive rights over the surname “Kataria” for all insurance services under Class 36.

The Appellant’s Arguments

The appellant contended that “Kataria” was the surname of its promoters and had been used by the family in business for decades.

The court was shown evidence that:

• A partnership firm “Kataria Transport Company” was established in 1955.

Over time, several businesses were established by members of the Kataria family, including:

• Kataria Automobiles Pvt. Ltd.
• Kataria Motors Pvt. Ltd.
• Kataria Wheelers
• Other group entities.

These businesses operated across sectors such as:

• Automobile sales
• Transport
• Logistics
• Insurance services related to motor vehicles.

The appellant argued that the name “Kataria” was not adopted to exploit the respondent’s goodwill, but rather represented the family identity and business heritage.

It also invoked Section 35 of the Trade Marks Act, which provides:

Nothing in the Act shall entitle the proprietor of a registered trademark to interfere with any bona fide use by a person of his own name or that of his place of business.

Accordingly, the appellant maintained that its use of “Kataria” was legitimate and protected by statute.

Interpretation of Section 35

The Division Bench examined the text and purpose of Section 35 in detail.

The provision creates a statutory limitation on trademark rights, preventing registered proprietors from interfering with:

• Bona fide use of a person’s own name
• Use of a predecessor’s name in business
• Descriptive use relating to goods or services.

The Court emphasised that the provision is intended to balance trademark protection with the right of individuals to use their own identity in trade.

Can Companies Invoke Section 35?

One of the central questions before the Court was whether corporate entities are excluded from this defence.

The Division Bench disagreed with the Single Judge’s view and held that Section 35 is not restricted to natural persons.

The Court noted that:

(a) The Trade Marks Act does not define the term “person.”

(b) Under the General Clauses Act, 1897, the word “person” includes:

• Companies
• Associations
• Bodies of individuals.

Therefore, a company cannot be automatically denied protection under Section 35 merely because it is an artificial legal entity.

The Court observed that when a corporate name genuinely reflects the surname or identity of its promoters, the use may still be bona fide.

Importance of Bona Fide Use

While recognising that companies can rely on Section 35, the Court clarified that the defence is available only when the use is bona fide.

In assessing bona fide use, the Court considered:

• Historical use of the surname in business
• Continuity of the family enterprise
• Absence of intention to exploit another trader’s goodwill.

The evidence showed that the Kataria family had been conducting business under the surname “Kataria” since 1955, long before the respondent’s insurance consultancy was established.

This significantly weakened the allegation that the appellant had adopted the mark dishonestly.

Trademark Classes and Scope of Protection

Another crucial aspect of the judgment concerned the scope of trademark protection within a class of goods or services.

The respondent relied on registration in Class 36, which includes:

• Insurance services
• Financial affairs
• Monetary affairs
• Real estate services.

However, the Court observed that registration in a class does not automatically grant a monopoly over all possible goods or services within that class.

Relying on the Supreme Court’s decision in Vishnudas Trading v. Vazir Sultan Tobacco, the Court held that:

• A trademark owner cannot claim exclusivity over an entire class if its actual business relates only to a specific segment.

In the present case:

• The respondent’s business focused on insurance for the jewellery sector.
• The appellant primarily provided vehicle insurance and general insurance brokerage.

Thus, the Court found that the nature of services was distinct, reducing the likelihood of consumer confusion.

Passing Off and Consumer Confusion

The respondent had also alleged passing off, claiming that the use of “Kataria Insurance” would mislead customers.

However, the Court noted several factors that weakened this claim:

1. The respondent specialised in jewellery insurance consultancy.
2. The appellant operated mainly in vehicle insurance brokerage.
3. The markets and customer bases were substantially different.

Moreover, the appellant gave an undertaking before the Court that it would not enter the jewellery insurance sector.

This further reduced the possibility of confusion.

Decision of the Court

After considering the evidence and legal principles, the Division Bench concluded that the Single Judge’s injunction could not be sustained.

The Court held that:

• The appellant’s use of the surname “Kataria” was bona fide.
• Section 35 protection cannot be denied merely because the defendant is a company.
• The respondent could not claim a monopoly over the surname “Kataria” for all insurance services.

Accordingly, the Court:

• Allowed the appeal
• Set aside the injunction granted by the Single Judge.

However, the Court clarified that the ultimate issues of prior use, goodwill, and infringement would still be determined during the trial.

Conclusion

The Bombay High Court’s decision in Kataria Insurance Brokers Pvt. Ltd. v. Bhavesh Suresh Kataria provides a valuable clarification of the scope of Section 35 of the Trade Marks Act, 1999.

The Court held that the statutory defence of bona fide use of one’s own name is not limited to natural persons, and companies may also invoke it where the corporate name genuinely reflects the identity of its promoters.

At the same time, the judgment reiterates that trademark protection cannot be stretched to create monopolies over common surnames or broad categories of services.

By setting aside the injunction, the Court reinforced the principle that trademark law must carefully balance exclusive rights with fair competition and legitimate business identity.

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