In a landmark ruling by the Bombay High Court in Kataria Insurance Brokers Pvt. Ltd. vs. Bhavesh Suresh Kataria 2025, a division bench of Justice Bharati Dangre and Justice R.N. Laddha held that the protection under Section 35 of the Trade Marks Act, 1999, which shields bona fide use of a person’s “own name” from trademark infringement claims, is not restricted to natural persons alone and can be extended to corporate entities, provided the use of the name traces back to a genuine family name or predecessor business.
The judgement is important as corporate brokers registered with IRDAI who share a family name with another registered trademark holder in Class 36 can now more credibly invoke Section 35 as a defence at the interim stage if their use of a family surname is traceable to predecessors and are bona fide.
Family business groups, after this ruling, could be relieved of the earlier threat that incorporating a new entity under a family name in a crowded sector would be treated as a “conscious choice” defeating Section 35, making the judgment a likely reference for disputes in auto, real estate, pharma, and financial‑services conglomerates.
“A large number of promoter-led businesses in India use the promoter’s surname as part of the corporate name. The courts have traditionally been reluctant to extend the Section 35 “own name” defence under the Trade Marks Act to corporate entities, often drawing a distinction between an individual’s name and a company’s name,” said Rohit Jain, managing partner, Singhania & Co. “In that context, the High Court’s express recognition that Section 35 protection can extend to corporate names is significant. It provides meaningful comfort to promoters who have bona fide adopted their surname for their company and later face restraint actions by trademark owners.”
The Dispute
The case arose when Bhavesh Suresh Kataria, a Mumbai-based proprietor conducting business as Kataria Jewellery Insurance Consultancy, sued the Ahmedabad-based Kataria Insurance Brokers Pvt. Ltd. for trademark infringement and passing off. The plaintiff held registered trademarks for “KATARIA” and “KATARIA JEWELLERY INSURANCE CONSULTANCY” under Class 36 (insurance, financial and monetary affairs) since 2010 and 2019 respectively.He alleged that the defendant’s use of “Kataria Insurance” as a corporate name, domain name (www.katariainsurance.co.in), and trading style was deceptively similar to his registered marks and amounted to both infringement under Section 29 and passing off.
A Single Judge of the Commercial IP Division of the Bombay High Court, by order dated December 8, 2025, had granted the plaintiff an interim injunction, holding that the plaintiff had made out a “strong prima facie case” and that “the continued use by the defendant will inevitably lead to confusion, diversion of business and dilution of goodwill of the plaintiff.”
The Division Bench overturned that injunction in its entirety and held that Section 35 is not a privilege restricted to individuals.
The Single Judge had held that the defence was unavailable to the defendant because it was a corporate entity that could consciously choose its name, a position derived from the Bombay High Court’s 1997 ruling in Kirloskar Diesel Recon (P) Ltd. The Division Bench rejected this categorically.
The bench further held that incorporating a company under a family name is not a “mere matter of choice” when an entire group of predecessor businesses has been conducting business under that very surname for seven decades:
“In the present case, through a corporate entity, as the business was run through different acceptable forums in law, and therefore, there was no question of any choice being exercised by the corporate entity because it is not for the first time that the appellant had made the use of the word ‘Kataria’ which is its family name.”
The Court delivered an equally impactful holding on the scope of trademark protection within broad classification categories. It held that registering “KATARIA” under Class 36 does not give the plaintiff exclusive control over the word for all forms of insurance:
“Insurance is a broad sector and there may be types of insurance, and in no case, Class 36 covers all types of insurance, as insurance is a contract between the parties and will vary in its terms and conditions, the subject of the insurance etc.”
Applying the principle from the Supreme Court’s Vishnudas Trading ruling, the bench held that a trademark proprietor who operates only in a sub-niche, jewellery insurance in this case, cannot claim a monopoly over all species of services grouped under the same broad genus.
With the appellant’s business anchored in vehicular and general insurance, and the respondent’s niche explicitly being gems and jewellery insurance, the Court found no overlap in the area of operation and consequently no case for infringement under Section 29.
Senior Advocate J.P. Sen, Kunal Vaishnav and Rohit Jain, managing partner at Singhania & Co, alongwith Monika Tanna, Neha Khanduri, Dhara Modi, and Harkirat Kaur from Singhania & Co. appeared for the appellant Kataria Insurance Brokers.
Senior Advocate Dr. Virendra Tulzapurkar with Ashutosh Kane, partner at W.S. Wane & Co., Kanak Kadam, associate at W.S. Wane & Co. and Archita appeared for the respondent Bhavesh Suresh Kataria / Kataria Jewellery Insurance Consultancy.
