Bombay High Court Allows Kataria Insurance Brokers to Retain Corporate Name; Holds Section 35 Protects Bona Fide Family-Name Use, Restricts Jewellery Insurance Activities Pending Trial
Bombay High Court Varies KATARIA Trademark Injunction After Supreme Court Remand; Finds Own-Surname Defence Requires Trial and Rejects Complete Interim Prohibition
Facts
The dispute arose in Commercial IP Suit No. 215 of 2021, filed by Bhavesh Suresh Kataria against Kataria Insurance Brokers Pvt. Ltd. before the Bombay High Court’s Commercial Division.
The plaintiff operates under the trading name Kataria Jewellery Insurance Consultancy and holds a registered word mark “KATARIA” in Class 36, along with an earlier label mark containing the word “Kataria” and references to jewellery and gold and diamond insurance. The label mark dates from May 2010 and the word mark from May 2019.
On 8 December 2025, a Single Judge granted an expansive interim injunction restraining the defendant from using KATARIA INSURANCE, the domain name www.katariainsurance.co.in, its corporate name containing KATARIA INSURANCE, and other deceptively similar names in relation to the relevant services.
That order was passed when the defendant was absent at the final hearing, although it had earlier filed an affidavit in reply.
The defendant appealed. A Division Bench set aside the injunction on merits on 23 February 2026. The matter then reached the Supreme Court.
The Supreme Court held that because the defendant had not contested the interim application before the Single Judge, it ought first to have sought vacation of the injunction before the Single Bench instead of directly appealing on merits. The Division Bench judgment was therefore set aside and the matter remanded, with all contentions left open.
Pursuant to that remand, Kataria Insurance Brokers filed Interim Application No. 3457 of 2026 under Order XXXIX Rule 4 read with Section 151 CPC, seeking vacation of the 8 December 2025 injunction.
Issues
The Court principally considered:
- Whether the defendant’s application under Order XXXIX Rule 4 read with Section 151 CPC was maintainable after the Supreme Court remand.
- Whether the earlier sweeping injunction should be vacated or varied after hearing the defendant on merits.
- Whether the defence under Section 35 of the Trade Marks Act, 1999, protecting bona fide use of one’s own name, can prima facie apply where the business is carried on through a company.
- Whether the Kataria family’s use of its surname in the defendant company was bona fide or an attempt to exploit the plaintiff’s goodwill.
- Whether the plaintiff’s Class 36 registrations entitled him, at an interlocutory stage, to prohibit the defendant from operating across the entire insurance field.
- Whether the plaintiff, an insurance agent specialising in gems and jewellery insurance, and the defendant, an IRDAI-registered insurance broker, could be treated as occupying one undifferentiated field of “insurance”.
- How the competing interests should be balanced pending trial.
Plaintiff’s Arguments
The plaintiff argued that the vacation application itself was not maintainable.
Since the defendant had filed a detailed affidavit in reply before the 2025 injunction was granted, the plaintiff contended that the injunction could not properly be treated as ex parte.
It was argued that under the second proviso to Order XXXIX Rule 4 CPC, a contested injunction should ordinarily not be discharged, varied or set aside unless there is:
- a change in circumstances; or
- undue hardship.
According to the plaintiff, no material change had occurred after the 2025 order, and allowing reconsideration would effectively make one Single Judge sit in appeal over another coordinate Single Judge.
On merits, the plaintiff argued that Section 35 protects natural persons using their own names, not companies that consciously select corporate names.
The plaintiff further contended that the defendant had dishonestly chosen the name KATARIA for its insurance broking activity to benefit from the goodwill associated with the plaintiff’s registered mark.
Reliance was placed upon decisions such as Bajaj Electricals, Kirloskar, Mahindra & Mahindra, Mahendra Paper and MNM Marketing to contend that use of a surname as a corporate or trading name can still be restrained where trademark rights and dishonest adoption are established.
The plaintiff also argued that his trademark registration covered Class 36 broadly and was not confined only to jewellery-related insurance.
Defendant’s Arguments
Kataria Insurance Brokers relied heavily upon the Section 35 own-name defence.
It argued that KATARIA was the inherited family surname of its promoters and had been used consistently by Kataria family businesses since 1955. The insurance broking business was said to be a natural extension of the family’s automobile businesses.
The defendant submitted that incorporating a company to carry on business should not deprive family members of the statutory protection that would otherwise be available if they conducted the same business as individuals, proprietors or partners.
It relied particularly upon Precious Jewels v. Varun Gems, where the Supreme Court dealt with competing business use of the surname “Rakyan”, along with Jindal Industries, Chandra Engineers and Vasundhra Jewellers, to contend that Section 35 is not confined to natural persons.
The defendant further emphasised that the plaintiff’s own pleaded case identified his reputation and specialisation primarily in the gems and jewellery insurance sector, while the defendant was an IRDAI-registered insurance broker operating more broadly.
It offered to completely stay away from insurance activities relating to gems and jewellery.
The defendant also argued that compelling it to abandon its registered corporate identity at an interim stage would cause enormous hardship, regulatory difficulties, client confusion and expensive rebranding.
Analysis of the Law
Maintainability Under Order XXXIX Rule 4
The Court held that the application was maintainable.
The Supreme Court had expressly remanded the matter to the Single Bench precisely so that the defendant could apply for vacation of the injunction and contest the issue on merits.
Holding the application non-maintainable would therefore effectively nullify the Supreme Court’s order.
The Court also held that merely having filed an affidavit in reply was not equivalent, in the peculiar circumstances, to having received an effective “opportunity of being heard”, since the defendant was absent when the injunction was finally argued.
Further, the Supreme Court order itself constituted a subsequent development, and the sweeping injunction caused substantial hardship by preventing a regulated insurance intermediary from using its own corporate identity.
Any procedural gap under Order XXXIX Rule 4 could in any event be addressed through the Court’s inherent jurisdiction under Section 151 CPC.
The Court therefore found itself not merely empowered but duty-bound to reconsider the interim arrangement.
Section 35 of the Trade Marks Act
Section 35 provides that nothing in the Trade Marks Act entitles a registered proprietor to interfere with the bona fide use by a person of his own name or place of business.
The central question was whether this protection could extend to a corporate entity created by family members using their surname.
The Court rejected, at least prima facie, an absolute distinction between natural persons and companies.
It reasoned that if individuals are entitled to conduct business using their surname, it would be artificial to say that they lose that substantive protection merely because they choose the corporate form to conduct that business.
A family member cannot logically retain the right to use his surname in a proprietorship or partnership but automatically lose that right upon incorporating a company.
The Court therefore held that, prima facie, Section 35 is not restricted to natural persons in the conduct of business; even if read with reference to natural persons, their conduct of business may include incorporating a company using their own name.
Bona Fide Use of the KATARIA Family Name
The Court placed considerable weight upon the historical conduct of the Kataria family.
The promoters had consistently used the surname KATARIA across their business enterprises, particularly their automobile businesses. When they entered the connected area of automobile insurance and insurance broking, they continued using the same surname.
The Court found this history strongly indicative of bona fide adoption rather than an artificial attempt to appropriate the plaintiff’s goodwill.
It held that where a business family has used the same surname across generations and later expands or diversifies into another business, continued use of that surname is ordinarily difficult to characterise as dishonest merely because another person bearing that surname has registered it as a trademark.
The Court therefore found a strong prima facie case of bona fide use of the family name.
Scope of Plaintiff’s Trademark Rights
The Court also rejected the notion that registration in Class 36 automatically entitled the plaintiff to an interim monopoly over every form of insurance activity.
The plaintiff’s own plaint stated that from 2006 he had decided to concentrate upon and develop a niche in the gems and jewellery insurance market, and had changed his trading style to Kataria Jewellery Insurance Consultancy.
The Court held that the plaintiff could not significantly broaden his pleaded case at the interlocutory stage by asserting a massive general insurance business inconsistent with the foundation of his own suit.
It further distinguished the parties’ roles:
- the plaintiff was an insurance agent appointed by insurers; while
- the defendant was an insurance broker registered with IRDAI.
Those distinct regulatory roles could not simply be amalgamated into one generic field labelled “insurance”.
Accordingly, Class 36 registration could not justify, at the interim stage, an injunction wider than the actual reputation and business case pleaded by the plaintiff.
Precedent Analysis
Precious Jewels v. Varun Gems
This Supreme Court decision was central to the Court’s prima facie analysis.
It concerned competing use by members of a family of the surname Rakyan in the jewellery business.
The Bombay High Court considered the decision supportive of the proposition that trademark registration of a surname does not automatically confer an absolute monopoly against another person or family bona fide using that same surname.
The Court considered it significant that the earlier injunction had been granted without the benefit of submissions based on Precious Jewels.
Jindal Industries, Chandra Engineers and Vasundhra Jewellers
These decisions were treated as consistent with the principle that Section 35’s own-name defence is not necessarily confined to natural persons acting in their individual capacity.
They supported the Court’s view that use of a family surname in an incorporated business may prima facie fall within Section 35 where the adoption is bona fide.
Kirloskar and Related Authorities
The Court distinguished the authorities relied upon by the plaintiff.
It observed that Kirloskar involved a breakaway faction and different factual circumstances; Montari principally concerned company law rather than Section 35; and MNM Marketing did not involve use of a family surname.
Those cases therefore did not justify an absolute rule preventing incorporated businesses from invoking Section 35.
Vishnudas Trading
The Court applied the principle that registration under a broad statutory class should not necessarily confer monopoly over every conceivable product or service falling within that class, particularly where the proprietor’s own pleaded use is narrower.
Thus, the plaintiff’s Class 36 registration could not at the interlocutory stage automatically support an injunction across every insurance-related activity.
Court’s Reasoning
The Court found that the 2025 injunction was excessively wide.
It effectively prohibited the defendant from using its corporate identity and carrying on insurance broking activities generally, even though:
- the plaintiff’s pleaded reputation centred on gems and jewellery insurance;
- the defendant was a separately regulated insurance broker;
- the Kataria family had a long history of using its surname across businesses;
- Section 35 raised a substantial own-name defence;
- bona fides, prior usage and acquiescence required evidence at trial; and
- forcing immediate rebranding would cause severe commercial and regulatory hardship.
The Court held that the earlier injunction was effectively equivalent to granting final relief at the interlocutory stage, despite substantial defences remaining triable.
At the same time, it declined to completely vacate all protection available to the plaintiff.
Instead, the Court concluded that the appropriate solution was a recalibration of the injunction, balancing the defendant’s right to its corporate name against the plaintiff’s prior online presence and established niche in gems and jewellery insurance.
Final Interim Arrangement
The Court therefore permitted Kataria Insurance Brokers Pvt. Ltd. to retain and use its corporate name without alteration.
It was expressly not required to change either:
- its corporate name in its ROC certificate; or
- its name in the insurance broking licence issued by IRDAI.
However, the defendant was restrained from engaging in any manner whatsoever in insurance activity relating to the gems and jewellery sector.
The defendant’s earlier domain name www.katariainsurance.co.in must remain dormant and cannot be revived, transferred or otherwise dealt with pending the suit.
Any new website must use a domain name clearly distinguishable from the expression “Kataria Insurance”, which appears in the plaintiff’s earlier domain www.katariainsurance.com.
The defendant must also clearly communicate that:
- it is an insurance broker;
- it has nothing to do with insurance in the gems and jewellery sector; and
- it has no connection with the plaintiff or the plaintiff’s business.
The Court further directed the defendant to maintain accurate accounts of revenue earned from its insurance broking business and file statutory-auditor-certified statements every six months.
Conclusion
The Bombay High Court allowed Interim Application No. 3457 of 2026 and varied, rather than entirely vacated, the injunction dated 8 December 2025.
The Court held, prima facie, that:
- Section 35’s own-name protection is not necessarily restricted to natural persons;
- use of the KATARIA surname by the defendant’s promoters through their company was prima facie bona fide;
- trademark registration cannot at the interim stage confer an absolute monopoly extending beyond the plaintiff’s pleaded business;
- the plaintiff’s case was fundamentally built around gems and jewellery insurance;
- the earlier blanket restraint caused serious undue hardship and required recalibration; but
- safeguards were necessary to prevent confusion pending trial.
Accordingly, the defendant may continue using Kataria Insurance Brokers Pvt. Ltd. as its corporate name, but must stay completely outside the gems and jewellery insurance sector and comply with the domain-name, disclaimer and accounting directions imposed by the Court.
The Court also refused the plaintiff’s request for a four-week stay of the judgment and directed that the suit itself be expedited because the ultimate application of Section 35 requires evidence at trial.
Case Details
Case: Bhavesh Suresh Kataria v. Kataria Insurance Brokers Pvt. Ltd.
Court: High Court of Judicature at Bombay, Commercial Division
Case Number: Commercial IP Suit No. 215 of 2021 with Interim Application No. 3457 of 2026 and Interim Application No. 1663 of 2021
Judge: Justice Somasekhar Sundaresan
Date: 19 August 2026
Result: IA 3457 allowed; December 2025 blanket injunction varied. Defendant permitted to retain KATARIA corporate name but barred from gems and jewellery insurance, with domain-name, disclaimer and accounting safeguards pending trial.
