Corporates can also invoke ‘surname defence’ under the Trademarks Act: Bombay High Court

The Bombay High Court has ruled that the Trade Marks Act’s “surname defence” under Section 35 can be invoked even by a company, so long as its use of the use of the surname or family name is bona fide and rooted in a genuine business lineage [Kataria Insurance Brokers Pvt Ltd v. Bhavesh Suresh Kataria, Proprietor, Kataria Jewellery Insurance Consultancy].

Section 35 (saving for use of name, address or description of goods or services) provides that nothing in the Trade Marks Act entitles a registered proprietor to interfere with any bona fide use by a person of his own name or that of his place of business. 

The provision assumed significance in a trademark dispute over the trademark "Kataria", between a Mumbai-based proprietor of Kataria Jewellery Insurance Consultancy and Ahmedabad-based Kataria Insurance Brokers (brokerage company).

Kataria Jewellery Insurance Consultancy's proprietor, Bhavesh Suresh Kataria, sued the brokerage company before the Bombay High Court for allegedly infringing his registered “Kataria” trademarks and for passing off by using “Kataria” in the company's corporate name, trading style and domain.

A single-judge bench on December 8, 2025, restrained the brokerage company from using ‘Kataria’ in its corporate name, trading style and domain. It held that Section 35’s “saving for use of name” protects only natural persons and not incorporated entities that can choose their own names.

This was challenged before a Division Bench of Justices Bharati Dangre and RN Laddha, which set aside the order on February 23 

The Division Bench disagreed with the single judge's view that the benefit under Section 35 is restricted to natural persons.

“Merely because Kataria Insurance Brokers Pvt. Ltd is a corporate entity, we find that the Single Judge has erred in excluding 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 choose its own name,” the Division Bench said. 

It observed that Section 35 does not contain any blanket exclusion of companies from availing its benefit.

“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 held.

The Court also took note of the submission that “Kataria” is the surname of the brokerage company's promoters and has been used in business since 1955 across transport, automobiles, real estate and insurance through a series of firms and companies. 

“The appellant’s use of the 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,” the Court held.​

The Division Bench further pushed back against the single judge’s treatment of “insurance” as a single undifferentiated field. 

While both parties operate in insurance, the Mumbai-based proprietor had created a niche business relating to providing policies in the field of “gems and jewellery sector” since 2006, whereas the broker company was in motor and general insurance.

The Court found no overlap in the area of their operation, but recorded an undertaking that the brokerage company shall not touch the insurance business in jewellery and gems, while allowing the company's appeal.

Senior Advocate JP Sen, with advocates Kunal Vaishnav, Monika Tanna, Dhara Modi and Harkirat Kaur, briefed by Singhania Legal Services, appeared for Kataria Insurance Brokers.

Senior Advocate Virendra Tulzapurkar, with Advocates Ashutosh Kane, Kanak Kadam and Archita, briefed by WS Kane and Co. appeared for the Kataria Jewellery Insurance Consultancy. 

[Read order]