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Family Feud or Fair Game? Bombay HC Opens Section 35 Door to Corporate Surnames
In a pivotal twist for trademark battles, a Division Bench of the —Justices Bharati Dangre and R.N. Laddha—overturned a single judge's injunction on , ruling that companies can claim the "surname defence" under . The case pitted Mumbai's Bhavesh Suresh Kataria, proprietor of Kataria Jewellery Insurance Consultancy , against Ahmedabad-based Kataria Insurance Brokers Pvt. Ltd. , both leveraging the family name "Kataria" in insurance services.
Roots of the Rivalry: From Transports to Jewellery Policies
The dispute traces back decades. Kataria Insurance Brokers traces its lineage to a partnership, Kataria Transport Company , dissolved in but allowing family members to continue using "Kataria" in new ventures. This evolved into an empire spanning automobiles, real estate, and insurance via entities like Kataria Automobiles Pvt. Ltd. ( ) and Kataria Motors Pvt. Ltd. ( ), which offered motor vehicle insurance.
Bhavesh Suresh Kataria, operating as Kataria Jewellery Insurance Consultancy since (initially Kataria Insurance Consultancy from ), carved a niche in gems and jewellery insurance. He secured trademarks: "KATARIA JEWELLERY INSURANCE CONSULTANCY" (Reg. No. 1969420, ) and "KATARIA" (Reg. No. 4174551, ), both in Class 36 for insurance and financial services. In , spotting the brokers' use of "Kataria Insurance" in their corporate name, domain ( www.katariainsurance.co.in ), and services, he sued for infringement and , securing an interim win on .
The single judge found
under
, deeming the brokers' marks
and rejecting Section 35 as inapplicable to
"corporate entities that consciously choose their trade names."
Brokers Bite Back: Surname Rights and Sector Splits
Appellant Kataria Insurance Brokers Pvt. Ltd. (incorporated 2014, -registered) argued of their family surname "Kataria," protected by Section 35. They highlighted group history since , massive revenues (Rs. 17,268 crores, 2020-25), and focus on automobile/motor insurance—not jewellery. invoked precedents like and , stressing Class 36's breadth doesn't grant monopoly over all insurances. He offered an undertaking: no jewellery insurance dealings.
Respondent Bhavesh Kataria, via , countered with prior adoption ( ), domain ( www.kataria.insurance ), and registrations conferring exclusivity under . He dismissed Section 35 for companies, citing , and warned of confusion from similar domains and names in identical Class 36 services.
Decoding the Defence: Why Section 35 Isn't Just for Individuals
The Division Bench dissected Section 35: "Nothing in this Act shall entitle the proprietor... to interfere with any
by a
person
of his own name...
"Rejecting the single judge's natural-person-only view, it clarified"
person" (per General Clauses Act) includes companies, especially where family businesses historically used the surname across entities.
Drawing from Precious Jewels v. Varun Gems (SC, family surname use bona fide), Jindal Industries v. Suncity Sheets (Delhi HC, no monopoly on common surnames), and (successors inherit rights), the court found the brokers' use since , not riding on the respondent's goodwill.
Class 36 analysis was key: Insurance is a "broad genus" ( Vishnudas , Osram ); jewellery vs. motor insurance are distinct "species," negating deceptive similarity or infringement. No overlap meant no risk.
Key Observations
"Merely because Kataria Insurance Brokers Pvt. Ltd is a corporate entity, we find that the learned Single Judge has erred in excluding... the benefit of Section 35, by holding that it is not available to a Company..."
"‘Kataria’ happens to be the surname of the promoters and the predecessors of the appellant, and we find that the defence of Section 35... ought to be appreciated at the interim stage..."
"Insurance is a broad sector... the class is broad and... the activity of the plaintiff was restricted to gems and jewellery sector, whereas the appellant’s activity is restricted to insurance and automobile sector..."
"The Trade Marks Act, does not define the term ‘person’ but as per the, a person includes any company or association or body of individuals..."
Victory for Brokers, Blueprint for Businesses
The appeal succeeded; the , order was quashed. Brokers can continue using "Kataria," subject to their no-jewellery-insurance undertaking. This expands Section 35 to corporates in family-lineage cases, checks overbroad Class 36 claims, and prioritizes bona fides over form.
As news reports noted, it signals corporates aren't barred from surname use if rooted in genuine heritage—potentially reshaping IP suits where family names clash in expansive classes like insurance.
