Bombay High Court
Kataria Insurance Brokers Pvt Ltd vs Bhavesh Suresh Kataria Proprietor Of … on 23 February, 2026
Author: Bharati Dangre
Bench: Bharati Dangre, R.N. Laddha
2026:BHC-OS:5811-DB
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL APPELLATE JURISDICTION
COMMERCIAL APPEAL (L) NO. 42036 of 2025
WITH
INTERIM APPLICATION (L) NO. 42059 OF 2025
IN
COMMERCIAL APPEAL (L) NO. 42036 OF 2025
Kataria Insurance Brokers Pvt. Ltd .. Applicant/Appellant
(original plaintiff)
In the matter between
Kataria Insurance Brokers Pvt Ltd Appellant (original
plaintiff)
Versus
Bhavesh Suresh Kataria, Proprietor .. Respondent/original
of and Trading as Kataria Jewellery defendant
Insurance Consultancy
...
Mr. J.P. Sen, Senior Advocate with Mr. Kunal Vaishnav, Ms.
Monika Tanna, Ms. Dhara Modi and Ms. Harkirat Kaur i/b
Singhania Legal Services for the appellants.
Dr.Virendra Tulzapurkar, Senior Advocate with Ashutosh Kane,
Kanak Kadam and Ms. Archita i/b W.S. Kane and Co. for the
respondents.
CORAM : BHARATI DANGRE &
R.N. LADDHA, JJ
DATED : 23rd FEBRUARY, 2026
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JUDGMENT:
– (Per Bharati Dangre, J)
1. The present Appeal filed by the appellant, ‘Kataria
Insurance brokers Private Ltd’, raise a challenge to the
judgment dated 8/12/2025, passed by the learned Single Judge
on an Interim Application No. 1663/ 2021 in Commercial IP.
Suit No. 215/2021 instituted by Bhavesh Suresh Karatia,
Proprietor of and trading as ‘Kataria Jewellery Insurance
Consultancy’. By the impugned judgment, the Interim
Application was made absolute in terms of its prayer clause, by
recording that the plaintiff had made out a strong prima facie
case, and the balance of convenience is in its favour, and if
injunction is not granted, it would cause irreparable injury to
the plaintiff, it would also prejudice the public at large.
The defendant in the suit, ‘Kataria Insurance
Brokers Private Limited’ is the appellant before us, and in the
Commercial Appeal (L) No. 42036/2025, has taken out Interim
Application(L) No.42059/2025, seeking stay of the judgment
dated 8/12/2025. By a consensus expressed by the respective
learned senior counsel appearing for the appellant and the
respondent, it was agreed that the Appeal itself shall be argued
finally, instead of the Interim Application for stay of the
judgment being taken up for hearing.
2. We have heard learned Senior Counsel Mr. J.P Sen,
for the appellant and learned Senior Counsel Mr. Virendra
Tulzapurkar representing the respondent.
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Bhavesh Suresh Kataria, an Insurance Consultant,
conducting his business as proprietary concern under the name
and style ‘Kataria Jewellery Insurance Consultancy’, claim to be
specializing in insurance for Gems and Jewellery, instituted a
Suit on the Ordinary Original Jurisdiction of this Court for
infringement of Trademark and Passing off by impleading
“Kataria Insurance Brokers Private Limited”, a Company
registered under the Companies Act, as the defendant, who is
also offering insurance related services from its address
mentioned in the cause title, in Ahmedabad, Gujarat.
3. The claims staked that the plaintiff started the
business of offering life and general insurance policy, including
Jeweller’s Block Insurance Policy since 1999, and since the year
2004, he started conducting business of providing insurance
policies and decided to concentrate and developed a niche in
jewellery market, and changed his trading name and style from
‘Kataria Insurance Consultancy’ to ‘Kataria Jewellery Insurance
Consultancy’.
Pleading that the name, “KATARIA” formed the
leading essential and memorable feature of trading, the plaintiff
claimed to have been using the mark “KATARIA” openly,
regularly, continuously and extensively in respect of said
services since the year 2004. He claimed that he had earned
huge revenue by rendering the services under the said
mark/name and taken efforts for promoting the said services
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under the said trademark and due to the superior quality of the
services rendered under the said mark, it has become well
known and the plaintiff has acquired immense goodwill and
reputation therein, and the Trademark exclusively connotes and
denotes to the members of the trade and the public, the services
of the plaintiff’s origin.
4. As per the plaintiff, on or about 29/9/2007, he
registered and started using the domain name/website www.
kataria.insurance containing the said trademark, with a view to
have presence over the internet and facilitate faster business
and plaintiff continue to use the domain name for conducting
his business, even after changing the trading name and style i.e.
‘M/s. KATARIA JEWELLERY INSURANCE CONSULTANCY’.
According to the plaint, plaintiff applied for and
secured registration of trademark/name of ‘Kataria’ and ‘Kataria
Jewellery Insurance Consultancy’ under the following
particulars,
Trade Mark Registration Date of Class Services
No. Registration
KATARIA Real Estate Affairs,
JEWELLERY Insurance Financial
INSURANCE 1969420 21/05/2010 36 Affairs, Monetary
CONSULTANCY Affairs.
(label mark)
Insurance, Financial
KATARIA 4174551 13/05/2019 36 Affairs, Monetary
Affairs, Real Estate
Affairs.
The plaintiff claim that the registrations were
renewed from time to time and are currently valid and
subsisting.
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Pleading that the trade name/name, along with the
domain name and the trading name and style had become
descriptive for plaintiff’s aforesaid services and business, and it
was associated by the traders and the members of the public
exclusively with plaintiff, and with no one else, the plaintiff
claim to have acquired statutory, as well as common law rights
in the said trademark/name, and claim that he is entitled to
exclusive use thereof in relation to the aforesaid services.
Alleging that in January 2014, the plaintiff gained
knowledge about the defendant having registered a Company
under the corporate name, “Kataria Insurance Brokers Private
Limited”, with the Registrar of Companies, Ahmedabad, he
objected to the defendant’s adoption of the impugned corporate
name and the Assistant Registrar of Companies informed the
defendant about the plaintiff’s objection and also informed that
“KATARIA” is a registered trademark in respect of services in
Class 36 and called upon the defendant to suggest alternative
names. Attention of the defendant was also invited by the
Assistant Registrar to an undertaking dated 13/12/2013 signed
by one Mr. Rohan Rajendra Kataria, one of the Directors of the
Company, who gave an undertaking to alter the name of the
Company, if required, in case there is an objection raised.
According to the plaintiff, despite a clear direction to the
aforesaid effect, the defendant did not take any steps, and the
plaintiff send a ‘Cease and Desist’ notice to the defendant,
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informing about the plaintiff’s statutory and common law
rights, which received a specific denial from the defendant, who
adopted a plea that it is a part of kataria group of companies,
which has allegedly been using name ‘kataria’ for several years,
and the Group Company, “Kataria Automobiles Private Ltd”
(for short ‘KAPL’) has been trading in automobiles and ancillary
services and providing general insurance services, including
automobile/motor vehicles and the name ‘KATARIA’, was first
adopted by defendant’s promoter in the year 1955. The
defendant, therefore, raised a specific objection that Kataria is
its surname/family name and the defendant has a right to use
the same in a bonafide manner, and the plaintiff cannot have
proprietary right to use the same to the exclusion of others.
Apart from this, it is also the stand adopted by the
defendant, that the plaintiff does not hold any registration for
the mark ‘Kataria Insurance’, or ‘Kataria’, and the defendant is
not using the plaintiff’s trademark as registered. The contention
of the plaintiff that there was correspondence back and forth,
the last communication being the letter addressed by the
plaintiff to the defendant on 3/10/2014, but since there was no
response, the plaintiff was under the bonafide belief that
defendant had discontinued the use of impugned trademark
and the corporate name. However, during an online search, the
plaintiff came across defendant’s domain name,
‘www.katariainsurance.co.in’ through which the defendant was
advertising, promoting, and offering insurance services, andTilak
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7/57 COMAPL 42036-25.doconce again, the plaintiff resorted to issuance of a notice to the
defendant to stop the use of the impugned trademark, but did
not receive any response, and he addressed a communication to
the Registrar of Companies Ahmedabad, who did not take any
cognizance of the grievance of the plaintiff.
5. In the aforesaid background, the plaintiff who had
it’s place of business in Mumbai, instituted the Suit against the
defendant by itself, and all persons claiming under it, from
infringing its registered trademarks in Class 36 by using the
impugned trademark ‘KATARIA INSURANCE’, the impugned
domain name/website www.katariainsurance.co.in, and the
impugned corporate name containing the mark “Kataria
Insurance” or any other trademark, domain name website and
corporate name containing the word ‘KATARIA’ or any other
mark identical with/or deceptively similar to the plaintiff’s
registered trademark in respect of the services covered by the
plaintiffs registration or in any other manner whatsoever. The
plaintiff also sought a restraint order against the defendant
from rendering, offering, promoting, or advertising the
impugned services under the impugned trademark/impugned
domain name/website, and impugned corporate name, so as to
pass off or enable others to pass off it’s services for the well-
known services and/or business of the plaintiff.
The plaintiff also sought damages in the sum of Rs.
Five lakhs for the act of infringement of trademark and passing
off committed by the defendant.
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6. During the pendency of the Suit with the aforesaid
reliefs, the plaintiff filed an Interim Application under Order
XXXIX Rule 1 and 2 read with Section 151 of the Code of Civil
Procedure, seeking a temporary order and injunction against
the defendant by itself, it’s Directors, employees, servants, and
agents from infringing the plaintiff’s registered trademark and
from rendering, offering, promoting or advertising the
impugned services under the impugned trademark/domain
name/corporate name, so as to pass off or enable others to pass
off the defendant’s services and for the well-known services and
business of the plaintiff.
It is this application which received consideration
from the learned Single Judge, who granted the relief prayed
by the plaintiff, accepting the plea of infringement and passing
off against the defendant.
7. Perusal of the impugned order would disclose that
on the plaintiff making out a prima facie case for infringement
u/s.29 of the Trademarks Act, based on the well settled
parameters of (1) existence of a valid registration (2) impugned
trademark, being identical or deceptively similar to the
registered trademark, and (3) use of impugned trademark in
relation to goods or services, identical or similar to those for
which mark is registered, it is held by the Single Judge that the
plaintiff is a registered proprietor of the word and device mark
“Kataria” in Class 36 for insurance related services, and the
defendant is using the mark ‘Kataria Insurance”, and the
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corporate name “Kataria Insurance Brokers Private Limited”, all
of which are identical or deceptively similar to the plaintiff’s
mark. Further, recording that the defendant’s services are in
the very field of insurance covered by the plaintiff’s
registration, the plaintiff had established the requisite
ingredients u/s.29 of the Trademark Act.
The plea of the defendant that ‘Kataria’ is a surname
and constitutes bonafide adoption, was not accepted, as the
impugned judgment record a finding that Section 35 of the
Trademark Act only applies to person, (private party) using
their own surname and does not apply to any any corporate
entities, who can consciously choose their trade names.
Reaching a conclusion that the plaintiff’s mark ‘Kataria’ has
proved long continuous and extensive use, in insurance sector,
denote a single identifiable source, the defendant’s adoption
was found to be prima facie dishonest and not bonafide. The
defendant’s plea of prior user was also found to be totally
untenable by the learned Single Judge, as the alleged user by a
separate and legal distinct entity i.e. KAPL, which the defendant
alleged to be a group company, was in respect of Kataria
Automobiles, and therefore the use of impugned trademark
‘Kataria’ in unrelated fields or different entities was held, not
constituting prior user for the purposes of defeating claim of
infringement or passing off.
With a clear finding rendered that the plaintiff is a
registered proprietor and prior adopter of the trademark
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“KATARIA” and has established its goodwill and reputation, by
placing reliance upon the Chartered Accountant’s Certificate,
reflecting annual income of the plaintiff as well as the annual
promotional expenses from the years 2004-05 to 2017-18, the
learned Single Judge concluded that the plaintiff and the
defendant are using their respective marks for the same service
i.e. insurance and it is plainly antithetical to the canon
principle of trademark law, which is one mark, one source.
Considering the similarity between the marks, the learned
Judge concluded that the continued use by the defendant will
inevitably lead to confusion, diversion of business and dilution
of goodwill of the plaintiff, resulting into irreparable harm, not
only to the plaintiff but also to the consumer, hence, the Interim
Application was made absolute in terms of prayer clauses (a)
and (b).
8. The learned senior counsel Mr.J.P. Sen representing
the defendant against whom the injunction was granted i.e.
‘Kataria Insurance Brokers Private Limited’, the appellant before
us would submit that the predecessor of the appellant’s
promoter incorporated a partnership firm under the name and
style of ‘Kataria Transport Company’ on 9/8/1955, which was
dissolved on 20/10/1979, with an understanding that though
in the mutual interest of the partners, the business of
partnership is discontinued by dissolving the partnership and by
allotting the assets and business of the partnership firm to its
partners, the partners were permitted to commence their
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business under the mark ‘KATARIA’.
Thereafter, several companies were incorporated,
which included ‘Kataria Infrastructure Private Limited’, being
incorporated on 30/12/1982, for providing real estate services,
whereas “Kataria Automobiles Private Limited” (KAPL), was
incorporated on 10/5/1990. KAPL, according to Mr. Sen was
the authorised dealer of Maruti Suzuki Ltd since 1996, and
extended variety of services, including sales, servicing,
transportation, logistics, and also rendering motor vehicle
insurance services and other allied services with use of mark
‘KATARIA’ to it’s customers.
On 2/12/2002, Kataria Motors Private Ltd was
incorporated, which engaged in business of sale and servicing
of automobiles and also provided Motor Vehicle Insurance
Services. In 2011, M/s. Kataria Wheelers, a partnership firm
was incorporated, which again dealt with the business of
dealership of automobiles, and inter alia provided motor
vehicle insurance services also. During the course of such
activities being undertaken, the appellant “Kataria Insurance
Brokers Private Limited”, was incorporated for providing
insurance services as an authorised agent under Insurance
Regulatory Development Authority (IRDA), it being registered
with Registrar of Companies (ROC), Ahmedabad, with Rajendra
Kumar and Rohan Kataria, being named as its
Directors/Promoters.
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9. It is the specific submission of Mr.Sen that the
respondent in the Suit was, all the while, engaged in business
of automobiles, including its sale and servicing, and also
providing motor vehicle insurance services. Kataria Insurance
Brokers Private Limited, was specifically incorporated in the
year 2014 as insurance broker, and according to him, the
activity of Kataria group was implemented through various
companies/partnership firm, and though the activity was
mostly focused in automobile sector and providing vehicle
insurance services, it also expanded to real estate, warehouses,
renewable energy generation, as well as vehicle recycling.
According to him, the group revenue of Kataria Group for the
financial year 2020-21 to 2024-25 is Rs.17,26,885.77 and the
amount spent on advertisement and sale promotion is 7905.38
lakhs.
Mr. Sen urge that, the defendant adopted defence of
Section 35 in the action of infringement and passing off at the
instance of the plaintiff, and this defence was of bonafide use of
family name ‘KATARIA’. Apart from this, he would submit that
the respondent is engaged in general insurance as distinguished
from the plaintiff who, according to its own case, was in
jewellery insurance, and the nature of business carried out by
the two entities is completely distinct. Mr. Sen would invoke the
principle laid down by the Delhi High Court in M/s.Marc
Enterprises Private Limited Vs M/s.Five Star Electricals (India)
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and Anr,1 where the Court by relying upon the decision of the
Apex Court in Vishnudas Trading as Vishnudas Kishendas Vs.
Vazir Sultan Tobacco Co. Ltd,2 which held that if a trader or
manufacturer trades in or manufactures only one or some of
the articles coming under broad classification and such trader
or manufacturer has no bonafide intention to trade in or
manufacture other goods or articles, which also fall under the
said broad classification, such trader or manufacturer should
not be permitted to enjoy monopoly in respect of all the articles
which may be covered under broad classification, and by that
process preclude the other traders or manufacturers to get
registration of separate or distinct groups, which may also be
grouped under broad classification. According to Mr. Sen, a
class of registration, may be broad, but that do not mean that
registration of a trademark cannot be absolute, perpetual, and
invariable in all circumstances, and one cannot claim right over
every item following under a class. According to Mr.Sen,
‘Insurance’ is a broad category, and there might be different
types of insurances, and as the defendant is engaged in
automobile insurance, but do not touch jewellery insurance, but
the plaintiff is engaged in jewellery insurance consultancy.
Mr.Sen on behalf of the appellant (Kataria Insurance Broker Pvt
Ltd), make a statement that he will not deal with jewellery
insurance, and his undertaking may be recorded to that effect.
Mr. Sen would rely upon the following decisions :-
1 2008 SCC Online Del 310
2 (1997) 4 SCC 201Tilak
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10. It is the specific contention raised by Mr. Sen that
the learned Single Judge has failed to appreciate the scope of
Section 35 of the Trademarks Act, 1999 and he would place
heavy reliance upon the decision of the Delhi High Court in
Jindal Industries Private Limited Vs Jindal Sanitaryware Private
Ltd and another,3 where the assertion of the counsel for the
plaintiff that ‘name’ cannot be used as a trademark when
Section 35 is read with Section 29 (1) of the Act, was not
accepted, and it is categorically concluded that the plaintiff
cannot monopolize use of ‘Jindal’ in the context of PVC pipes
and tubes, particularly when there are many marks of ‘Jindal’,
available on the register and the plaintiff have themselves
agreed to co-existence with another Jindal user and have
sought to plead dissimilar with identical Jindal mark, which
was without any basis.
11. Per contra, the learned counsel Mr. Tulzapurkar
appearing for the Respondent before us, assertively submit that
the business of the plaintiff carried under the mark, ‘KATARIA’ is
not restricted to jewellery only, and when it applied for and
secured registration of trademark ‘Kataria’ vide Registration no.
4174551 on 13/5/19 with the user claim from 7/4/2006, its
registration is in Class 36, Insurance, Financial Affairs,
monetary affairs.
In addition, the plaintiff has secured registration of
“Kataria Jewellery Insurance Consultancy, Gold and Diamond
3 CS(COMM) 251/2023
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Insurance”, vide registration no. 1969420 on 21/5/2010, and
the services under Class 36 in the Registration Certificate,
extend to real estate affairs, insurance, financial affairs,
monetary affairs. Thus, according to him, the trademark
‘Kataria’ is synonymous with services in insurance, real estate,
financial affairs, and monetary affairs.
By relying upon Section 28 of the Trademarks Act,
1999, Mr. Tulzapurkar would submit that upon registration of
the mark, the plaintiff is entitled to the exclusive right to the
use of the trademark, in relation to the goods or services, in
respect of which the mark is registered, and he is entitled to
obtain relief in case of infringement of the trademark. Thus,
according to him, upon securing registration of the mark
‘KATARIA’, it has given the plaintiff exclusivity over insurance,
and definitely it is not restricted. Further by relying upon
Section 29 of the Act, it is the submission of Mr. Tulzapurkar,
that if a registered trademark is infringed by a person, not
being a registered proprietor or a person entitled for permitted
user, and if he uses a mark, which is identical with or
deceptively similar to the trademark and relation to the services
in respect of which the trademark is registered, it amounts to
infringement of the registered trademark. If by any manner, a
registered trademark is infringed by a person, because of its
similarity to the registered trademark, and it is likely to cause
confusion on part of the public, or which is likely to have
association with the registered trademark, his registered
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trademark deserves protection. Therefore, it is the contention
of Mr. Tulzapurkar, that the plaintiff’s family name ‘KATARIA’,
form the leading essential and memorable future of his trading
name and style, and since the year 2004, the plaintiff has been
openly, regularly, and continuously using the trademark and
name in respect of the services of insurance. According to Mr.
Tulzapurkar, plaintiff has been using the trademark and name
‘Kataria’ in respect of the business since the year 2004, and it
registered and started using the domain name/website.
www.kataria.insurance.com.
In order to establish a claim for trademark,
infringement, the three pre-requisites being existence of a valid
registration, impugned trademark, or name being identically or
deceptively similar to the registered mark in question and the
impugned trademark being used in relation to the goods or
services that are identical or similar to those covered by the
registration are all attracted in the present case. It is urged that
the plaintiff has registration of not only the label mark, but the
word mark ‘Kataria’, in respect of insurance services, and the
impugned trademark ‘Kataria insurance’, the impugned domain
name www.katariainsurance.co.in and the impugned corporate
name of the defendant ‘Kataria Insurance Brokers Private
Limited’ are all identical and/or deceptively similar to plaintiff’s
registered trademark, and not only this, the services in respect
of which the defendant is using the impugned trademark, and
corporate name is identical to the services covered by plaintiff’s
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registered trademark, and therefore, a clear case is made out
for infringement.
Apart from this, according to the learned senior
counsel, when the plaintiff sought the relief of passing off, it
was required to demonstrate its goodwill, misrepresentation
and loss, and/or likelihood of loss. The plaintiff’s prior
adoption and long-standing, open and continuous use of the
trademark, the existence of goodwill was evidently clear, as in
the Suit for infringement of trademark and passing off, and the
Interim Application filed under order XXXIX Rule 1 and 2, the
plaintiff prima facie demonstrated that the defendant, by using
the impugned trademark, impugned corporate name and
impugned domain name/website attempted to trade on the
goodwill, of the plaintiff created for years, and in fact, the
defendant ought to have conducted a market survey, when it
would have come across the plaintiff’s trademark, the domain
name/website and the training name and style, and the services
rendered thereunder, coupled with its immense goodwill and
reputation which had accrued. However, the defendant
knowingly and deliberately adopted the impugned trademark,
impugned domain name/ and the impugned corporate name,
with a view to sail close to the wind to trade upon the enviable
reputation accrued to the plaintiff over considerable period of
time, so as to make unlawful gains.
Mr. Tulzapurkar would submit that the plaintiff
clearly established that, by advertising and promoting the
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services through the impugned domain name/website, the
defendant was diverting the plaintiff’s customers to the
impugned domain name/website, the only difference between
the plaintiffs domain name, and the defendant’s impugned
domain name/website being of “.com” and “.co.in”. Claiming
that the domain name used by the defendant is almost identical
with the plaintiff’s domain name, the plaintiff’s customers or a
prospective client in an attempt to access its domain name/
website is likely to be directed to the defendant’s impugned
domain name/website, as the customer is not likely to notice
the minute difference in “.com” and “.co.in”.
Since the plaintiff was able to establish the
mischievous adoption of the impugned domain name/website,
and also the mark ‘Kataria Insurance’ being compared with the
impugned corporate name “Kataria Insurance Brokers Pvt. Ltd”
which is phonetically, structurally, closely and deceptively
similar to the plaintiff’s mark ‘Kataria’, the defendant had
infringed and continued to infringe the plaintiff’s trademark
with different registration numbers, both in Class 36. By
establishing that, with regard to the enviable reputation and
goodwill acquired by the plaintiff in the said trademark, and in
the trading name and style by including the trademark ‘Kataria’
as it’s leading and essential feature, the plaintiff was able to
establish that the use of the impugned trademark by the
defendant in respect of the same/similar services is bound to
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impugned services rendered under the impugned trademark,
the impugned domain name and the impugned corporate name,
and a new customer may not be able to notice the difference.
Mr. Tulzapurkar would clarify that initially, though the plaintiff
had started it’s business under trading name ‘Kataria Insurance
Consultancy’ and was offering life and general insurance
policies, the members of the trade and public, coming across
defendants impugned trademark may be misled to believe that
the plaintiff has expanded its business, and once again, offering
insurance policies and related services under the impugned
trademark/domain name, and the corporate name, and it may
enhance the probability of initial interest confusion on account
of close and deceptive similarity between the rival trademarks,
domain name/website and corporate name/trading name and
style.
12. Mr.Tulzapurkar would, therefore, support the
impugned order and submit that the learned Single Judge has
rightly noted the deceptive use of the registered trademark of
the plaintiff by the defendant. He would also place heavy
reliance upon the decision of this court in Kirloskar Diesel
Recon (P) Ltd and ors Vs. Kirloskar Proprietory Ltd and ors,4
which is a decision delivered on Section 34 of the Old
Trademarks Act, and by specifically relying upon the
observation of the Division Bench, to the effect that saving for
use of name as provided in Section 34 of the Act, do not apply
4 1997 PTC (17)
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to artificial persons like incorporated company, as the company
has a choice of adopting the name, which a natural person do
not have, it is his submission that the attempt of the respondent
to adopt the name, in no way, can be considered to be bonafide
and the defence adopted under Section 35 has rightly been not
entertained by the Single Judge. He would also place reliance
upon the decision of Delhi High Court in case of Montari
Overseas Ltd Vs. Montari Industries Ltd,5
13. The learned Single Judge, while deciding the
Interim Application filed by the plaintiff, pending the hearing
and final disposal of the Suit for infringement and passing off,
considered the prayer for a restraint order against the
defendants, by way of temporary order and injunction from
infringing its two registered trademarks, both in Class 36 by the
impugned trademark of the defendant ‘Kataria Insurance’,
along with the impugned domain name
‘www.kataria.insurance.co.in’ and the impugned corporate
name ‘Kataria Insurance’, containing the word ‘Kataria’. The
plaintiff, Bhavesh Suresh Kataria claimed to have started the
business of life and general insurance policies, including
Insurance in Jewellery, though it is a claim staked that, in the
year 2004, it started conducting the business of providing
insurance policies in the name of ‘Kataria Insurance
Consultancy’. However, in 2006, according to the plaintiff,
decided to focus on jewellery market, and indulged in offering
insurance policies and related services in “Gems and Jewellery
5 1996 PTC (16)
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Sector”, and therefore changed its trading name to ‘Kataria
Jewellery Insurance Company’. The plaintiff obtained
registration for the aforesaid trademark and secured
registration on user claim in Class 36 and it extended to real
estate affairs and insurance. In the year 2019, another
registration of trademark ‘Kataria’ is secured again in Class 36
for ‘insurance services’. Therefore, the claim of the plaintiff
before the learned Single Judge is that it has been using the
trademark and name ‘Kataria’ in respect of the business since
2004, and also registered and started using domain
name/website www.katariainsurance.com.
14. The plaintiff staked its claim for an injunction
against the defendant, who, according to it, infringed the
registered trademark of the plaintiff, which was entitled to
protection and being confronted from time to time, failed to
take any corrective measures.
The relief sought by the plaintiff was contested by
the defendant by adopting the specific stand that it was a
bonafide user of the impugned trademark, and it was a prior
user.
The claim of bonafide user by the defendant was
based on the protection granted u/s. 35 of the Trade Marks Act,
as the defendant claimed to have adopted the trademark in a
bonafide manner by using the surname/family name of one of
its founding members, and therefore, it was entitled to
protection u/s.35.
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The bone of contention between the parties is about
the protection u/s.35 being applicable to incorporated entities,
as the plaintiff claim that it is not available to a Company, as
adoption of the name/mark is by choice and in case of natural
persons, there is no choice. The defendant, however, contested
the contention, and since this was a primary defence in
opposing the injunction and the learned Single Judge rendering
a finding that the defendant’s plea that ‘Kataria is a surname
and constitutes bonafide adoption is untenable, as Section 35 of
the Trademark only apply to the person (private party) using
their own surname and is not available to incorporated entities
that consciously chose their trade name.
15. We must, therefore, deal with the rival contentions
in this regard. Section 35 of the Trade Marks Act reads thus:-
“35. Saving for use of name, address or description of goods or services.-
Nothing in this Act shall entitle the proprietor or a registered user of a
registered trade mark to interfere with any bona fide use by a person of
his own name or that of his place of business, or of the name, or of the
name of the place of business, of any of his predecessors in business, or
the use by any person of any bona fide description of the character of
quality of his goods or services.
Objects and Reasons-Clause 35.-This clause corresponds to section 34 of
the existing Act and provides that the registered proprietor or the
registered user cannot interfere with any bona fide use by a person of his
own name, or his predecessor in business, his place of business or bona
fide description of the character or quality of the goods or services.”
The above Section thus postulates that no provision
in the Trade Marks Act, authorise the owner or registered user
of registered trademark to interfere with any authentic use by
individuals of their own names, or that of their site of business,
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or the name of the site of business or the name of any of their
predecessor in business, or the use by any individual of
authentic description of the character or qualities of their goods
or services.
16. An issue involving Section 35 arose for
consideration on more than one occasion in the past, before the
Higher Courts and to begin with, we would refer to the decision
of the Apex Court in Precious Jewels and Anr Vs. Varun Gems 6,
which arose in the background facts that the partners of the
plaintiff as well as the defendant firms, belonging to the same
family, sharing a common surname “RAKYAN”. Both the
plaintiff and the defendant were running a family business of
jewellery, and the defendants are conducting it in the name and
style of ‘nina and “ravi rakyan”, where the plaintiff was
conducting it in the name and style of “RAKYAN FINE
JEWELLERY, both businesses being run in New Delhi through
shops abutting each other. When the plaintiff claimed
trademark of their surname “RAKYAN”, and by filing a Suit,
sought a restraint order on the defendants from carrying out
their business and filed an application for interim relief, the
impugned order restrained the defendants from doing their
business, and that is how the Appeal came before the Apex
Court.
The dispute came to be appreciated in the wake of
the admitted fact that the partners of the plaintiff and the
defendant belonged to one family, and there are not less than
6 2015 1 SCC 160
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15 business units belonging to the family members. The
appellant running a business in the name and style of “NINA
and RAVI RAKYAN” urged that they could not be restrained
from carrying on his business in their own name, by specifically
raising a defence of Section 35. The respondents in the Appeal,
contested the stand and urged that they had no right to use the
word ‘RAKYAN’ in the name of their shop.
Restricting the scope of the Appeal to the
interlocutory order, the Apex Court observed thus :-
“9. As stated hereinabove, Section 35 of the Act permits anyone to do his
business in his own name in a bonafide manner. In the instant case, it is
not in dispute that the defendants are doing their business in their own
name and their bonafides have not been disputed. It is also not in dispute
that the plaintiff and defendants are related to each other and practically
all the family members are in the business of jewellery. We have perused
the hoardings of the shops where they are doing the business and upon
perusal of the hoardings we do not find any similarity between them.
10. In our opinion, looking at the provisions of Section 35 of the Act,
there is no prima facie case in favour of the plaintiff and therefore, the
defendants could not have been restrained from doing their business. We,
therefore, quash and set aside the impugned order¹ granting interim relief
in favour of the plaintiff and the appeal is allowed with no order as to
costs.”
17. In Jindal Industries (supra) decided by Delhi High
Court, the defendants were Suncity Sheets Private Limited &
Anr, (SSPL) and Rachna Jindal, the defendant no.2 was
Nitinkumar Jindal’s wife, Manager of SSPL. The plaintiff,
Jindal Industries Private Ltd, filed an interlocutory application,
requesting for an order of injunction, as it was its claim that the
defendants infringed its trademark ‘JINDAL’, by using the
trademark ‘RNJ RN JINDAL SS TUBES” label. The defendants
pleaded that they used their surname ‘JINDAL’ in the trademark,
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and invoked Section 35 of the Trade Marks Act. The defence
adopted was ‘JINDAL’ was a commonly used surname, and if the
surname is used as trademark, such usage was authentic.
On a detailed consideration of the rival claims, and
with specific reference to Section 35, the learned Single Judge
of Delhi High Court observed that when one obtains
registration of a common name, or a surname like JINDAL, as a
trademark in his favour, does so with all the risk that such
registration entails and it is open to anyone and everyone to
use his name on his goods, and therefore, the possibility of
there being several JINDAL’s looms large. A significant
observation in the decision reads thus:-
“The plaintiff cannot by obtaining registration for JINDAL as a word
mark, monopolize the use of JINDAL even as a part – and not a very
significant one at that-of any and every mark, even in the context of steel,
or SS pipes and tubes. The Trade Marks Act, and the privileges it confers,
cannot be extended to the point where one can monopolize the use of a
common name for goods, and, by registering it, foreclose the rest of
humanity from using it.”
“If one registers a mark which lacks inherent distinctiveness, the
possibility of others also using the same mark for their goods, and of the
registrant being powerless to restrain such use, is a possibility that looms
large, which the registrant has to live with.”
Another pertinent observation also needs
reproduction which is to the following effect:-
“40. To the extent it protects against interference with the use of one’s
name, Section 35 has to be understood in the context of the law
enunciated in the above decision, and those cited within it. The right of a
person to use her, or his, own name on her, or his, own goods, cannot be
compromised; else, it would compromise the right to use one’s name as an
identity marker, which would ex facie be unconstitutional.
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41. In the absence of any such caveat to be found in Section 35, it may be
arguable, at the very least, whether, while the use of one’s name as an identity
marker is permissible under Section 35, but the instance it spills over into “trade
mark” territory, it is rendered impermissible. Any such interpretation, in my
prima facie view, would be reading a non-existent proviso into Section 35 and, in
effect, rewriting the provision.
42. The proscription under Section 35 is absolute, and would extend to
infringement as well as passing off actions. The restraint against interference
with the bona fide use, by a person, of his own name, is not dependent on
whether the action is one for infringement or passing off.
43. The plaintiff’s prayer for injunction is, therefore, bound to fail even on the
sole anvil of Section 35.”
Even on examining the merits of the case, it was
concluded that no case for infringement or passing off is made
out, as the impugned mark that the defendant’s possessed
added matter and added features, which clearly distinguished it
from the JINDAL mark of the plaintiff and the defendants quite
clearly made every effort to minimise any chance of confusion
by prominently using initials ‘RNJ’, along with the complete
name of the proprietorship of defendant no.2 “RNJ Stainless
Steel” below it. The use of the impugned mark by the
defendants, therefore, was held not to be regarded as passing
off their goods as to that of the plaintiffs.
The defendants, therefore, enjoyed the benefit of
Section 35, the use being bonafide, and in good faith.
18. In Jindal Industries Private Limited Vs. Jindal
Sanitaryware Pvt Ltd. & Anr.7, another decision of Delhi High
Court, where a Suit was filed by the plaintiff seeking a decree
for permanent injunction, restraining the defendants from using
7 CS(COMM)251/2023,I.A.8888/2023&I.A. 13154/2023
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the marks jointly or severally or any other mark deceptively
similar to the plaintiff’s trademark, ‘JINDAL’ resulted in an ad-
interim injunction granted in favour of the plaintiff. The
plaintiff’s grievance in essence was, the defendant had no
registration for the mark ‘JINDAL’ in respect of the Poly Vinyl
Chloride, (“PVC”) pipes and it is the registered holder of the
mark, J-Plex, but started using the mark ‘JINDAL’ for PVC pipes.
Asserting prior user in respect of the Jindal for PVC pipes and
registration with effect from 1/9/2006, the Court recorded that
the user by the defendant no.1 of JINDAL for PVC pipes and
fittings is recent and, in any event, later in point of time both to
the registration and the user of the said mark in favour of the
plaintiff for identical PVC pipes, and by recording a prima facie
case for infringement, a restraint order was passed against the
defendant.
On consideration of the stand adopted by the
defendants upon its appearance after the interim order was
passed, the registration of the mark ‘JINDAL’ in different form
as regards the category of goods, i.e. PVC pipes and fittings,
along with the galvanized iron pipes and tubes, was taken note
of, the registration being in Class 17 and in Class-6. As far as
the registration of defendants with mark ‘JINDAL’ was found to
be in Class-11 and 20 for cisterns, toilet seats and parts, PVC
and water storage tanks was taken note of. The defendant
specifically placed before the Court the list of the entities, who
had obtained registration of the mark ‘JINDAL’, and therefore it
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was claimed that the Plaintiff alone cannot claim exclusivity, as
the plaintiff itself is not the owner of the mark ‘JINDAL’, as
another entity ‘JINDAL INDIA LIMITED’ also claimed ownership
and user.
The rival claims with the data placed before the
Court for analysis took note of the stand of the plaintiff of
exclusivity over ‘Jindal’ mark was not accepted, and the
assertion of the plaintiff that a name cannot be used as a
trademark when Section 35 read with Section 29(1) was found
without substance and reliance in that regard was placed on the
decision in case of JINDAL Industries Vs. Suncity Sheets Pvt.
Ltd. & Anr. (supra), and a pertinent observation in this regard
was recorded as below,
“46. Reliance by defendant on Neon laboratories (supra) is appropriate as
it holds that the proprietor of a mark does not have the right to prevent
use by another party of an identical mark, which has user prior to the use
or the registration by the proprietor.
47. Moreover, the plaintiff cannot monopolize the use of JINDAL’ in the
context of PVC pipes and tubes, particularly, when there are many marks
of ‘JINDAL’ available on the register (as noted in para 28); the plaintiff
have themselves agreed to co-existence with another ‘JINDAL’ user and
have sought to plead dissimilarly with identical ‘JINDAL’ marks, which is
without any basis.”
19. The learned senior counsel Mr.J.P. Sen has placed
reliance upon another decision of Delhi High Court in M/s.
Chandra Engineers versus Mrs. Multifrig Marketing Co. Pvt.
Ltd. & Anr.8 which again revolved around Section 35 of the
Trade Marks Act.
8 RFA (COMM) 352/2025&CM APPL.36957/2025
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The respondents, being the plaintiff in the Suit
claiming to be the proprietor of trademark ‘Chandra’,
registered, in Class 11 from 1982 for ‘freezing and pulling
machines, ice safes, air conditioning apparatus as stablizer for
air conditioning apparatus’. It claimed to have amassed
considerable goodwill and reputation over a period of time. It
gained knowledge that the appellant M/s.Chandra Engineers
was providing services in connection with the same item, in
respect of mark ‘Chandra’ by using trade name ‘Chandra
Engineers’, and this according to it amounted to infringement
of their registered trademark.
The Commercial Court find favour with the claim in
the plaint and granted decree of permanent injunction against
the appellant and all others, acting on their behalf from using
mark ‘CHANDRA’ as their business or trade name, which
resulted into filing of the Appeal before the Delhi High Court.
Dealing with the statutory exceptions, both to
infringement as defined in Section 29, as well as to the
remedies available to a person who is registered proprietor of
an infringed mark u/s. 28(1), the Court tested whether the
case of the defendants fell within the circumstances envisaged
u/s. 31 to 35 of the Trade Marks Act. It held that the aspect of
infringement became inconsequential, as in such cases, even if
infringement existed, no injunctive relief could be granted.
The reference is specifically made to Section 35
which is found to be worded as below:-
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30/57 COMAPL 42036-25.doc“28. Once such circumstance is to be found in Section 35,
Section 35 proscribes interference, by the proprietor of a
registered trademark, with the bona fide use, inter alia, by a
person, of the name of any of his predecessors in business. As
such, even if the use, by the person, of the name of his
predecessor in business would amount, facially, to infringement
within Section 29, no injunction against such use can be
granted in view of the proscription contained in Section 35.”
“32. Though an opinion was mooted, in Goenka Institute of
Education & Research v. Anjani Kumar Goenka, to the effect that
the benefit of Section 35 would be available only if the full
name of the proprietor or of the predecessor in interest was
used, and not if only part thereof was employed, this Court, in
Vasundhra, noted that the said proposition was stated even in
Goenka to be merely orbiter. In Vasundhra, we have held that
there is no proscription in Section 35 from the use even of the
first name or the surname of the proprietor as the mark of the
enterprise itself. There is no ‘requirement that the complete
name should be used. In that case, “Vasundhra” was the first
name of the original proprietor who had adopted use of the
name, which was Vasundhra Maitri. In the present case, the only
difference is that “Chandra” is not the first name, but the
surname of Phool Chandra, who was the proprietor of Chandra
Enterprises.”
The argument of the learned counsel that the case
was clearly covered by the decision in case of Vasundhra
Jewellers (P) Limited versus Vasundhara Fashion Jewellery LLP,
was found to be appropriate, as it was contended that ‘Chandra’
was the surname of Phool Chandra, who was the sole
proprietor of Chandra Engineers, which was the predecessor in
interest of appellant firm and therefore, respondent was
prohibited, in view of Section 35, on obtaining an injunction
against the use of the mark ‘Chandra’ by the appellant.
20. At this juncture, we also deem it necessary to refer
to the decision of Delhi High Court in Vasundhra Jewellers Pvt
Ltd. Vs. M/s. Vasundhara Fashion Jewellery LLP & Anr.9 (supra)
9 FAO(OS)(COMM)232/2023&CMAPPL.55117/2023
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dated 18/8/2025.
The appellant Vasundhra Jewellers, sought a decree
of permanent injunction restraining the respondents and all
others acting on their behalf from using the mark and domain
names ‘VASUNDHRA JEWELLERS’ VASUNDHRA or the domain
name www.vasundhra.in or any other mark, label or domain,
which is identical or deceptively similar to its mark. The Suit
was accompanied with application under Order 39 Rule (1) and
(2), which was dismissed resulting into an appeal being filed
before the learned Single Judge. It was the claim of the
plaintiff/appellant that the respondent no.1 was using the mark
‘Vasundhara’ and was manufacturing and selling goods similar
to it and was also operating a domain name www.vasundhra.in
and using mark “Vasundhara” on social media accounts.
The defence adopted was that the name Vasundhara
was a common and generic name, often used in indian families,
and no party would claim exclusivity over its use. Defence of
Section 35 was also pleaded by stating that the mark
‘Vasundhara’ was adopted by Vasundhara Mantri from her own
name in 2001.
On a detail discussion, specifically focussing upon
Section 35, as to whether the said provision is available to
natural persons only and not corporate entities, and this
discussion was found to be unwanted for the following
reason :-
“50. We are not required to enter into the merits of this
contention, for the simple reason that the word VASUNDHARATilak
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Mantri, who was an individual, for use by her proprietorship.
The intellectual property rights of Vasundhara Mantri in the
mark VASUNDHARA were assigned to Respondent 1 under the
Assignment Deed dated 28 March 2019. Respondent 1,
therefore, succeeded to the intellectual property rights of
Vasundhara Mantri in the mark VASUNDHARA. Inasmuch as
those rights were availed by an individual, the benefit of Section
35 would also be available to Respondent 1 as the assignee-in-
interest of the intellectual property rights earlier held by
Vasundhara Mantri.”
Answering the question, as to whether benefit of
Section 35 is restricted to use of full name, the Court expressed
that there is no such limitation and the specific observation in
that regard deserve a reproduction:-
“53. In any event, in the absence of any particular stipulation,
in Section 35, to the effect that it applies only where the full
name is used, we are unwilling to read any such limitation into
the provision. It is trite that courts cannot re-write the statute. A
name is a name. It cannot be denied that VASUNDHARA was the
name of Vasundhara Mantri. Mr. Sagar Chandra’s submission
that the protection under Section 35 would be available only if
the respondents were to use the full name “Vasundhara Mantri”,
therefore, merely has to be stated to be rejected.
54. We, therefore, are of the opinion that, irrespective of
the merits of the matter, there could have been no injunction
restraining the respondents from using the mark VASUNDHARA
in view of the protection available under Section 35 of the Trade
Marks Act.
55. Of course, the benefit of Section 35 is available only in
the case of bonafide use by a defendant of her, or his, name as a
mark. In this regard, we are in entire agreement with the
learned Single Judge that the use by the respondents of the
mark VASUNDHARA is completely bona fide. VASUNDHARA was
used by Vasundhara Mantri. It was her own name. There is
nothing whatsoever on record on the basis of which her bona
fides could be questioned. She has been using the mark without
interruption since 2001 or, even as per the appellant’s own
showing, since 2005. The use of the mark VASUNDHARA by
Vasundhara Mantri, and later by Respondent 1 has, therefore,
necessarily to be treated as bona fide.
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56. It is, therefore, clear that the respondents would be
entitled to the benefit of Section 35 of the Trade Marks Act. De
hors the issue of infringement or passing off, therefore, the
respondents cannot be denied the right to use the mark
VASUNDHARA, in view of Section 35 of the Trade Marks Act.”
21. Mr.Tulzapurkar appearing for the respondent has
placed reliance upon the decision of this Court in Kirloskar
Diesel Recon Pvt Ltd (supra), which was delivered in the
background fact that “Kirloskar Proprietary Ltd and others”
filed three suits for permanent injunction to restrain the
appellants “Kirloskar Diesel Recon (P) Ltd.” from using the
word ‘KIRLOSKAR’ as a part of the corporate name and/or its
trading style, so as to pass off or enable others to pass off the
goods as that of respondents. The Suits were restricted to the
passing off action and the applications for grant of injunction
were filed, which were disposed of, by injuncting the
defendants from using the word ‘Kirloskar’, as a part of its
corporate name and the Appeals raised challenge to the same.
Each of the respondents, being a Company duly
incorporated and registered under the Companies Act, belonged
to ‘Kirloskar Group of Companies’, and the word “KIRLOSKAR”
formed part of the corporate name, and it was a registered
holder of various trademarks under the Trade and Merchandise
Marks Act, 1958 and the registered holder of artistic word
“KIRLOSKAR” in English, Hindi and Marathi, under the
provisions of Copyright Act. They claim to be the registered
user of various trademarks and/or copyrights, held possessed
and owned by them, and some of them were the permitted
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users of the copyrights.
The appellants who opposed the claim in the Suit
denied that the plaintiffs are the registered holder of the
trademark ‘Kirloskar’, but it was stated that as many as 27
companies mentioned in the plaints, had used the name
‘Kirloskar’ as part of their corporate names, though they did not
belong to Kirloskar Group of Companies as claimed.
The specific defence adopted was, ‘KIRLOSKAR’ is a
surname, and by virtue of provision of Section 34 of the Act
(present Section 35), the person having name ‘Kirloskar’ are
entitled to adopt and use it as their trademark and/or trade
name, and therefore the appellants have the right to use the
same. It was also pleaded that the word ‘Kirloskar’ do not
connote any distinctiveness, reputation, quality, or goodwill
alleged to have been acquired by the plaintiffs.
22. The defence u/s.34 was examined, by recording
that there was no force in the submission advanced that
incorporation of word ‘Kirloskar’ as part of the appellant in each
Appeal is bonafide, and u/s. 34 of the Act, they are entitled to
use the same. The pertinent observation in this regard is :-
“No doubt as per section 34 of the Act a proprietor or a registered
user of a registered trade-mark is not entitled to interfere with any
bonafide use by a person of his own name or that of his place of
business, or of the name, or of the name of the place of business, of
any of his predecessors in business, or the use by any person of any
bonafide description of the character or quality of his goods. In the
fact of the case, it can not be said that the use of the word “Kirloskar”
as part of the corporate name of the 1st Appellant in each appeal is
bonafide more particularly when admittedly the 2nd Appellant was
associated in a high office with the “Kirloskar Group of Companies” as
aforesaid and had participated in the image building campaigns and
programmes of the Respondents and “Kirloskar Group of Companies”.
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The very fact that the Appellants have chosen to incorporate the
word “Kirloskar” as part of the corporate names of 1st Appellant in
each appeal shows that the Appellants want to trade on reputation of
the Respondents and “Kirloskar Group of Companies”, and also on the
goodwill of the trade mark “Kirloskar” of which the 1st Respondent is
the registered proprietor and Respondents 2 to 7 are registered users.
Moreover saving for use of name, as provided in Section 34 of the Act
does not apply to artificial person like an incorporated company.”
23. The aforesaid observation, according to us, is
delivered in the facts of the case, as the Suits instituted by the
plaintiff were restricted to action of passing off, and that is the
specific reason why the court noted that in passing off action,
the plaintiff is not required to establish fraudulent intention on
part of the defendant, and therefore it was not necessary to
establish that the defendants, i.e. KIRLOSKAR DIESEL RECON
(P) LTD, had fraudulent intention in incorporating the word
‘KIRLOSKAR’ as a part of their corporate name. It was held that
it is not necessary for the plaintiff to prove causing of actual
confusion amongst the customers or public at large by adoption
of the word ‘Kirloskar, and what was only required to be
established, was a likelihood of deception or confusion, and
therefore the grant of injunction in the claim of passing off was
found to be justified.
24. In the facts placed before us, we, on the other hand,
are required to pronounce upon the defence u/s. 35, as against
the action of infringement along with an action of passing off,
as even according to Mr. Tulzapurkar, it is on account of Section
29, the plaintiff with its registered mark is entitled to claim
exclusivity on account of its mark being registered, and the
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relief sought in the Suit for infringement and passing off, is
premised on its registered trademark being infringed by the
defendant, not being a registered proprietor, or person using by
way of permitted use, this very same mark, which is identically
or deceptively similar to the trademark in relation to the
services rendered by the plaintiff.
Dr.Tulzapurkar has also relied upon a decision of the
Delhi High Court in Montari Overseas Ltd Vs. Montari
Industries (supra), which is not a case u/s. 35, but it is a case in
revolving around Section 20 of the Companies Act, 1956,
providing that no Company will be registered by a name which
is similar or identical or too nearly resembling the name by
which a Company in existence, has been previously registered
and Section 22 of the Act, making a provision for getting the
name of the former altered. The pronouncement in the said
decision is therefore, as regards the decision of the learned
Single Judge in a Suit injuncting the defendant from using the
word ‘Montari’ or any other word deceptively similar thereto as
part of its corporate name.
The plaintiff M/s. Montari Industries Limited, being
incorporated in 1983, was engaged in manufacturing products
like Chemicals, Agro-chemicals, paints, cosmetics, etc, whereas
M/s. Montari Overseas Ltd was incorporated in 1993 with a
claim that its field of operation, being distinct from that of the
plaintiff, and it was specifically noted that when the suit was
filed, the factory of Montari Overseas was under construction
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and was not completed, even when the impugned order was
passed by the learned Single Judge. Montari Overseas became
public only in 1995, and having come to know about its
existence in the capital market, the Suit was filed for permanent
injunction, and mandatory injunction and damages, along with
the application for injunctive relief. An ex-parte injunction was
claimed against the defendant from using, trading and making
public issue under the name Montari Overseas Limited.
The injunction passed by the learned Single Judge
was based upon the reputation or goodwill in business attached
with the trade name adopted by house and that copying of the
name by competitor is likely to cause injury to its business.
Admittedly, the focus was only Section 20 and 22 of the
Companies Act, and there was no scope for any defence u/s. 34
and 35 of the Trade Marks Act, as the Suit filed was the use of a
name similar to that of the plaintiff by the defendant, and in
these background facts, the Court observed thus :-
“13. It is well settled that an individual can trade under his own
name as he is doing no more than making a truthful statement of the
fact which he has a legitimate interest in making. But while adopting
his name as the trade name for his business he is required to act
honestly & bonafidely and not with a view to cash upon the goodwill
& reputation of another. An individual has the latitude of trading
under his own name is in recognition of the fact that he does not have
choice of name which is given to him. However, in the case of a
Corporation the position is different. Unlike an individual who has no
say in the matter of his name, a company can give itself a name.
Normally a company can not adopt a name which is being used by
another previously established company, as such a name would be
undesirable in view of the confusion which it may cause or is likely to
cause in the minds of the public. Use of a name by a company can be
prohibited if it has adopted the name of another company.
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It is well settled that no company is entitled to carry on business in a
manner so as to generate a belief that it is connected with the
business of another company, firm or an individual. The same
principle of law which applies to an action for passing off of a trade
mark will apply more strongly to the passing off of a trade or
corporate name of one for the other. Likelihood of deception of
unwary and ordinary person in the street is the real test and the
matter must be considered from the point of view of that person.”
25. The crucial aspect of the matter which is noticed
and reflected from the order is, that Montari Overseas Limited
had entered with capital market recently, and it’s products were
yet to enter the market. Montari Industries explained why the
word ‘Montari’ was selected by it, as it set out that the word,
was coined by the respondent by deriving a part of it from the
name of the Chairman of the Company, and part of it from the
name of his wife. M/s. Montari Overseas Limited, has also tried
to furnish explanation by urging that the word ‘Montari’ was of
significance to it, as it was derived in the name of father of the
Managing Director of the Company and his father-in-law, but
in the written statement, it was noted that the father of the
Managing Director is Mohan Singh while the name of his
father-in-law is Avtar Singh, and therefore, the learned Judge
concluded that the word ‘Montari’ has nothing to do with the
name of the father of the Managing Director, and no
satisfactory explanation was given by the appellant in that
regard, and therefore, ultimately the decision turned around
the use of word ‘Montari’ by the defendant in the proceedings,
despite the plaintiff’s company being registered as ‘Montari
Industries Limited’, much prior to its use by the defendant.
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Thus, according to us, even this decision cited by Mr.
Tulzapurkar do not take his case ahead, as the pronouncement
did not involve Section 35 of the Trade Marks Act.
26. Reliance placed upon the decision in case of M/s.
Mahindra & Mahindra Ltd. and Anr Vs MNM Marketing Private
Limited & Anr.10 is also looked into by us, and we have noted
the facts, being the suit filed by the plaintiff with its registered
trademark “M & M” alleging infringement by the defendants,
and for act of passing off along with the Notice of Motion
seeking interim relief.
The plaintiff no.1 Company Mahindra and
Mahindra Limited registered under the Companies Act, and it’s
group/subsidiary companies referred to as ‘Mahindra group’
and the plaintiff no.1, being the flagship company, claim to
have established wide range of business activities. The plaintiff
no.2 Company being the Retail trade arm of ‘Mahindra Group’
focussed on premium lifestyle and retail business from selling
inter alia, apparels, toys and furnishings, and using the trade
mark “Mahindra” and ‘MNM”. The defendant no.1, a firm
Manhar and Manhar was incorporated as ‘MNM Marketing
Private Limited’, whereas defendant no.2 was incorporated as
Med India Hospital and Research Centre Private Limited.
The plaintiff no.1, being a registered owner of mark
‘Mahindra’, word per se and label “Mahindra & Mahindra” and
“MNM” in various classes under the Trade Marks Act and Rules,
claimed that it had incurred huge expenses in sales, promotion
10 2014(60)PTC 227[Bom]
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and advertisement in relation to the goods and services bearing
the mark ‘Mahindra’, and the corporate name “Mahindra and
Mahindra” and the trading style “Mahindra and Mahindra.
MNM, being the natural abbreviation/acronym of
Mahindra and Mahindra, according to the plaintiff, the
popularity, goodwill, and reputation of the marks was immense
amongst the members of the trade and public, and came to be
associated even with the acronym ‘MNM’ and it was used by the
plaintiff in use of their business/activities and was in use since
atleast 1969.
The plaintiff complained of defendants’ impugned
mark ‘M & M’/’MNM’ used by them in the shopping mall/retail
business falling in Class 35, it being identical with, or in any
event, deceptively similar to the plaintiff’s trademark “M and
M”, registered, inter alia, in Classes 35 and 42. Such use was
alleged to be constituting infringement of plaintiff’s registered
trademark, and resulting in passing off the defendants’ retail
services/business as and for those of the plaintiffs. The
defendants defended their action by stating that the impugned
mark “M&M” and “MNM” is registered by defendant no.2 since
2002 in several classes viz. 3, 14, 16, 18, 24, and 25, and such
registration was projected as a defence u/s.30 (2)(e) of the Act
to the plaintiff’s case of infringement. It was also contended
that the impugned mark is distinctive and therefore registered
under different classes, and defendant has no registration under
Classes 35 and 42, which was pending for consideration, since
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the plaintiffs have opposed the same, and therefore, they claim
that the statutory right of defendant is restricted to goods in
respect of which their trademark is registered.
27. Upon this contention being advanced, the Court
noted that the defendant’s registrations are all in classes other
than Classes 35 and 42, and that the use by the defendants of
the impugned mark in respect of services falling under Classes
35 and 42 is not a right conferred on the defendants by their
registrations, and definitely not protected under Section 30(2)
(e) of the Act and with reliance being placed on the decision in
case of Balkrishna Hatcheries v. Nando‘s International Ltd11, the
Court recorded thus:-
“In Balkrishna Hatcheries (supra), this Court has noted the
distinction between goods and services, and marks registered for
goods on the one hand and for services on the other. The Court has
held that registration of a trade mark in relation to goods cannot
support the use of that mark in respect of services and vice versa.
In the present case, the Defendants have registration of their mark in
respect of goods only and not for services. Hence, their registrations
cannot afford protection when their mark is used in respect of
services. Therefore, an infringement suit does lie against the
Defendants, as the Defendants’ registrations are not in respect of
services in classes 35 and 42 and the registrations in respect of
goods in other classes cannot be a defence to a suit based on the
Plaintiffs registrations in classes 35 and 42.”
The defence sought to be taken u/s.35 was found to
be without merit by relying upon Kirloskar Diesel Recon (P) Ltd
(supra), to the following effect:-
“35. In the present case, as already stated hereinabove, the
Defendants themselves have admitted at paragraph 22 at page 16
of the affidavit in reply and paragraph 8 of the affidavit in sur
rejoinder that “M & M” is an abbreviation of Mahindra &
Mahindra. Therefore, in the aforesaid circumstances, the11(2004) 28 PTC 566 (SC)
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Supreme Court in Mahendra & Mahendra Paper Mills Ltd. v. M
and M Auto Industries Limited (supra) has observed that,
“Mahindra & Mahindra” is a well known trade mark and that the
mark “Mahindra & Mahindra “has acquired secondary
significance. Since “M & M” which is only a natural abbreviation,
has also been used since 1969, the reputation of Mahindra &
Mahindra will enure to and attach to its natural abbreviation and
the abbreviation itself in the normal course will be a well-known
mark. Under Section 29(4), the use of the impugned mark by the
Defendants in respect of dissimilar goods or services also
constitutes infringement of a well known trademark. Any use of
the impugned mark by the Defendants in respect of any goods or
services will constitute infringement of the Plaintiffs registered
trademarks. There are no bona fides in the Defendants’ use of the
impugned mark. Also, its use will certainly be detrimental to the
distinctive character of the Plaintiffs’ registered trademark
inasmuch as it will get diluted and its indiscriminate use will lead
to its destruction.”
28. Another important aspect of the matter, which
warrant our consideration, is the submission of Mr. Sen that the
registration of the plaintiff’s trademark under Class 36, in
relation to services of real estate affairs, insurance, financial
affairs, monetary affairs, does not exhaust the whole class itself.
Inviting our attention to Trademark Class 36, which
pertain to insurance, he would submit that Class 36 pertain to
financial affairs, monetary affairs, real estate and insurance,
and various types of services are classified under Class 36 like
services of all banking establishments or institutions connected
with them, such as exchange brokerage or clearing services;
services of credit institutions, such as corporative credit
associations, individual financial companies, lenders, etc. hire
or lease purchase financing, services of brokers dealing in
shares, services dealing with insurance such as those rendered
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by agents or brokers, engaged in providing services rendered to
the insured and insurance underwriting services.
Thus, the registration of the plaintiff in Class 36 will
only be restricted to the services mentioned by it in its
registration certificate, and that is in relation to real estate
affairs, insurance, financial affairs, and monetary affairs.
In support of his submission, Mr. Sen has placed
reliance upon the decision in Osram Gesellschaft Mit
beschrankter Haftung vs Shyam Sunder and ors12, where
reliance is placed on decision in case of Vishnu Das Trading as
Vishnunas Kishendas (supra), to the effect that by merely
getting registered its electric lamps of all kinds in Class 11, the
appellant cannot deprive the registration of respondent’s goods,
either on ground of its prior registration, or of dishonest
intention. Reliance was placed upon the following observations
of the Apex Court.
“If a trader or manufacturer actually trades in or
manufactures only one or some of the articles coming under a
broad classification and such trader or manufacturer has no
bonafide intention to trade in or manufacture other goods or
articles which also fall under the broad classification, such trader
or manufacturer should not be permitted to enjoy monopoly in
respect above of all the articles which may come under such
broad classification, and by that process preclude the other
traders or manufacturers to get registration of separate and
distinct goods which may also be grouped under a broad
classification.”
Based upon the aforesaid observation, the Delhi
High Court, following the said principle, recorded that as a
matter of fact, a registered trademark holder cannot in law
12 2002 SCC Online Del 423
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claim exclusive monopoly rights for its trade mark as extended
to goods of all descriptions, falling within the same class in
which it’s sole, and solitary product falls and if that is
permitted, it would tantamount to preventing other traders to
get registered their descriptive articles which fall under the
same class of general classification.
Reliance upon the aforesaid decision is criticized by
Dr. Tulzapurkar, by submitting that Vishnudas Trading was a
case of rectification of trademark and the principle laid down
therein must restrict to the background of the facts involved.
29. We do not subscribe to the above objection raised by
Dr.Tulzapurkar, as though we find that the Appeals were filed
against the Division Bench of Madras High Court, arising out of
a decision of Single Bench, the facts disclose that Vazir Sultan
Tobacco Co. was manufacturing cigarettes under the name
‘Charminar’, and the company obtained registration for
trademark in 1942 and 1955 in respect of manufactured
tobacco falling in Class 34 of Fourth Schedule to the Rules
framed under 1940 and 1950 Act. The Company did not
manufacture anything other than cigarettes and the appellant
Vishnudas manufacturing Quiwam and Zarda, using the trade
name “Charminar” on his bottles and boxes, claim that the
device of trademark “Charminar” in the city of Hyderabad is
different from the device used by Vazir Sultan. He applied for
registration of Quiwam and Zarda with trademark “Charminar”,
and objection was raised by Vazir Sultan, that the trademark
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sought by the appellant would conflict its own trademark.
Despite the contention of the applicant that such registration of
trademark was in respect of cigarettes, but Quiwam and Zarda
were different goods, and such goods would not cause any
conflict with the goods manufactured by Vazir Sultan Tobacco
Limited, as the registration was in respect of ‘manufacture
tobacco’, which in its ambit would also take Quiwam and
Zarda, it was held at the objection by the respondent company
under section 12(1) could not be waived. The order also noted
that the counsel for the appellant, i.e. the applicant offered to
apply for rectification of the trademark in favour of respondent
no.1 company, and when two applications were filed by
Vishnudas Trading under section 46 read with Section 56 of the
Trade Marks Act before the Registrar for rectifying the
registration for existing trademark held by Vazir Sultan Tobacco
Co, on the ground of non-user of the same in respect of
Quiwam and Zarda, the applications were disposed of by
allowing the rectification. The Assistant Registrar, Trademark,
ordered the registered trademark to be rectified by making the
entries relating to specification of goods to be read as
‘cigarettes’.
This being aggrieved Vazir Sultan Tobacco Co. filed
its statutory Appeals before the learned Single Judge who
allowed the Appeals and set aside the order of Assistant
Registrar of Trademark, and the learned Single Judge observed
that sub-classification of ‘manufacturer tobacco’, occurring in
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Class 34 could not have been made.
Thereafter, being aggrieved, Vishnudas Trading
carried the matter to the Division Bench, Madras High Court,
and the Division Bench affirmed the order passed by the Single
Judge. It is in this aforesaid background, the pronouncement
comes from the Apex Court, and on reading of the entire
judgment, with a conclusion being drawn that the rectification
of the trademark registered in favour of the respondent Vazir
Sultan Tobacco Co, since allowed by the Assistant Registrar of
Trademark, was valid and also justified, and it is held that the
order did not warrant any interference in the Appeal. As a
result, the appeals were allowed by setting aside the judgment
of the High Court and restored the order of rectification passed
by the Assistant Registrar of Trademarks, Madras. However, the
principle of law flowing from the said decision can be clearly
discerned to the following effect :-
“48. The “class” mentioned in the Fourth Schedule may
subsume or comprise a number of goods or articles which are
separately identifiable and vendible and which are not goods
of the same description as commonly understood in trade or in
common parlance. Manufactured tobacco is a class mentioned
in Class 34 of Fourth Schedule of the Rules but within the said
class, there are a number of distinctly identifiable goods which
are marketed separately and also used differently. In our view,
it is not only permissible but it will be only just and proper to
register one or more articles under a class or genus if in reality
registration only in respect of such articles is intended, by
specifically mentioning the names of such articles and by
indicating the class under which such article or articles are to
be comprised. It is, therefore, permissible to register only
cigarette or some other specific products made of
“manufactured tobacco” as mentioned in Class 34 of Fourth
Schedule of the Rules. In our view, the contention of Mr
Vaidyanathan that in view of change in the language of Section
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in respect of class or genus and not in respect of articles of
different species under the genus is based on incorrect
appreciation of Section 8 of the Trade Marks Act and Fourth
Schedule of the Rules.”
30. The aforesaid decision which is followed in Osram
(supra) thus lay down a principle in law that a trademark
holder cannot claim exclusive monopoly right for its trademark,
as extended to goods of all descriptions falling within the same
class, as the class may be broad and as in the present case, as
we have noted Class 36 is broad and insurance is one aspect of
it. Insurance is the Genus with different species, and admittedly,
merely by virtue of registration of a trademark, qua a
particular goods or services, the entire broad class is not
occupied, as the registration is restricted only to the goods/
services against which it is granted.
Insurance is a broad sector and there may be types
of insurance, and in no case, Class 36 cover 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.
Though we do not want to burden our judgment
with multiple authorities, we cannot refrain from referring to
the judgment of Delhi High Court in M/s.Marc Enterprises Vs.
M/s. Five Star Electricals (India) and anr, where the learned
Single Judge, by relying upon Vishnudas Trading (supra),
arrived at a conclusion that the plea of the plaintiff that it was
the registered proprietor of registered trademark in Class 9, and
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though the defendant was also a registered proprietor of same
trademark of Class 9, noted that the plaintiff is not
manufacturing the goods which were being manufactured by
the defendant. Even if the plaintiff has got trademark registered
for class of items, the plaintiff was not using this trademark for
the goods which were being manufactured by the defendant
and therefore, the defendant cannot be restrained from being
using the trademark ‘Marc” for the goods manufactured by it.
31. The scheme of the Trade Marks Act, which aim for
protection of trademark for goods and services and for
prevention of the use of fraudulent marks, assist customers in
recognising brands and their produces from those of other
competitors in the market. By registering a trademark, the
owner of the trademark enjoy the exclusive right to the use of
the trademark in relation to the goods or services in respect of
which it is registered and it also enable him to obtain a relief in
respect of the infringement of the trademark in the manner
prescribed in the Act.
The trademarks assist the customers in recognising
brands and their products from those of other competitors in
the market. Section 34 of the Act safeguard the right of the
owner using unregistered trademark.
Section 29 provide as to when a registered
trademark will be infringed by a person who, not being a
registered proprietor, uses that mark in the course of the trade,
which is identical with or deceptively similar to, the trademark
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in relation to the goods or services in respect of which a
trademark is registered. Section 30 to 35 provide exceptions to
the right of exclusivity to a registered trademark holder and
Section 35 is one of them.
A proprietor or registered user of a registered
trademark is not permitted to interfere with any bonafide use
by a person of his own name or that of his place of business, or
the name of place of business or any of his predecessors in
business or the use by any person of any bonafide description of
the character or quality of his goods or services. To seek
protection u/s.35, it is imperative to satisfy the Court about the
bonafide use or bonafide description of the goods or services
used by the defendant.
As far as the appellant – original defendant is
concerned, it specifically adopted a stand in its reply filed to the
application seeking injunction by the plaintiff as well as it is
also his stand in the Appeal before us that in or around 1955,
the defendants’ promoters/predecessors incorporated a
partnership firm under the name and style of M/s. Kataria
Transport Co, and over the years, Kataria Group of Companies
grew and expanded its activities and several
companies/partnership firms were incorporated right from
1955. M/s. Kataria Transport Co, a partnership firm,
incorporated on 9/8/1955, engaged in business of
transportation, was subsequently dissolved, with the partners
being permitted to incorporate other firms in different
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territories by use of the mark ‘Kataria’, as set out in the deed of
dissolution. M/s.Kataria Transport Co, a partnership firm was
again incorporated in 1969 which was dissolved in 1979, but
the partners were permitted to incorporate other firms by using
the mark ‘Kataria’.
Once again on 8/12/1979, M/s.Kataria Transport
Company was incorporated and it engaged itself in the
transportation of goods and merchandise and plying of trucks,
tractors, trailers, buses and other allied businesses. Thereafter,
over passage of time, various companies were incorporated by
using the name ‘Kataria’ which was largely operational in the
business of sale and servicing of automobiles but Kataria
Motors Pvt. Ltd, incorporated in 1990 along with Kataria
Motors Pvt. Ltd incorporated in 2002 involved itself in
Automobile dealership and in also rendering motor vehicle
insurance services and other allied services with mark ‘Kataria’.
M/s. Kataria Wheels, a Company incorporated in July 2012,
was specifically engaged in the activity of providing motor
vehicle insurance services. M/s.Kataria Insurance Brokers Pvt
Ltd, was incorporated on 24/1/2014, exclusively engaged in
the business of providing of insurance services and it even
secured authorization from the Insurance Regulatory
Development Authority. It is engaged in providing services of
general insurance including motor vehicle insurance, fire
insurance, etc.
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All the aforesaid companies include “Kataria” as an
essential and vital component of their mark and corporate
name and over the years, the defendant and group companies
have continued to undertake the business under ‘kataria’ mark
and has diversified into fields such as transport, logistics,
automobiles, real estate insurance and infrastructure. Through
the said companies, the defendant had openly, continuously and
exclusively used the ‘Kataria’ mark and have come to be
associated exclusively with Kataria companies and Kataria
Insurance Brokers Private Limited is a part of the same.
32. Along with the Appeal Memo, the partnership
agreement along with the agreement for its dissolution as early
as on 20/10/1979, is placed on record. Its reading reveal to us
that the partners of M/s. Kataria Transport Co, were the
members of Kataria family, Kataria being the surname and all
the partners of the partnership firm are the members belonging
to Kataria family, and that is the reason why the business in
which they engaged themselves in form of partnership firm,
was styled as ‘M/s.Kataria Transport Company’. The dealership
agreement between Maruti Udyog Ltd, is also with M/s.Kataria
Automobile Private Limited, Ahmedabad, which was formed
after dissolution of the earlier partnership business. The
Partnership Deed dated 3/4/2001 at Ahmedabad made on
3/4/2001 also has the members of the Kataria family, as its
partners to carry on the business with its primary business
being that of transportation of goods, plying of trucks, tractors,
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trailers, buses and other allied business. The shareholding of
the partners, all, belonging to Kataria family, make up 100% of
the contribution with the shares in the profit and loss of the
firm, being determined by the deed.
It is thus noted by us that ‘Kataria Insurance Brokers
Pvt Ltd’ though incorporated in 2014, for providing insurance
services, is not an attempt to take benefit of the goodwill, of the
business of ‘Kataria Jewellery Insurance Consultancy’, another
group of Kataria family, but it is it’s identity as “Kataria”, the
name which the family takes. As we have noted that ‘Kataria
Insurance Brokers Pvt. Ltd’ belonging to Kataria Group had its
first venture in 1955 through the promoters/predecessors, who
incorporated a partnership firm in the year 1955 with presence
of members of ‘Kataria’ family. Since Kataria is a family name
which the plaintiff Company continued through its enterprise
i.e. Kataria Jewellery Insurance Consultancy, which was initially
“Kataria Insurance Consultancy”, even the defendants i.e.
appellants before us also indulged themselves in business
activity by using their surname ‘Kataria’.
The appellant’s use of 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. Merely
because Kataria Insurance Brokers Pvt. Ltd is a corporate entity,
we find that the learned Single Judge has erred in excluding
that the benefit of Section 35, by holding that it is not available
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to a Company, but it is only available to an individual, as the
Company may chose its own name.
33. We do not approve of the aforesaid finding, since
we find that if there are number of entities which run the
automobile and allied business activity by using the family
name ‘Kataria’ since 1955, the incorporation of ‘Kataria
Insurance Brokers Pvt. Ltd’ is not a mere matter of choice, but it
is a matter of right as all other businesses being carried out by
the family, was by the use of their family name ‘Kataria’, and it
is not the appellant Company which is for the first time,
engaged in insurance business, but several of the entities from
Kataria Group belonging to the appellant prior to incorporation
of the appellant Company, were established to engage
themselves in insurance business. The appellant has invoked its
own goodwill and reputation in the wake of conduct of its
business activity from various entities with the name ‘Kataria’
and the revenue generated by it, as the group entity from 2020-
21 to 2024-25, placed before us, is around Rs.17268 crores and
therefore, it cannot be assumed that the appellant ‘Kataria
Insurance Brokers Pvt. Ltd, is a fly-by night operator or a novice
who has entered into the business arena, just to encash the
goodwill of the ‘Kataria Jewellery Insurance Consultancy’. The
promoter of the appellant’s has been using the name ‘Kataria’
since 1955 and is involved in automobile dealership business
since 1966 and is also providing ancillary services relating to
insurance service since 2003.
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Prima facie, we are shown that as group companies,
they have gained reputation in the field.
34. As far as the use of the name ‘Kataria’ by the
appellant, according to us, is bonafide, as we find that the mark
‘Kataria’ happens to be the surname of the promoters and the
predecessors of the appellant, and we find that the defence of
Section 35 of the Trade Marks Act, raised by the defendant
ought to be appreciated at the interim stage, in absence of other
contradictory material showing that its use is malafide or, is an
attempt to encash upon the goodwill of ‘Kataria Jewellery
Insurance Consultancy’. Since we find that the use of the mark
‘Kataria’ by the appellant is bonafide, continuous and though it
involve insurance business, the reasoning adopted by the
learned Single Judge restricting the applicability of Section 35
to natural persons is also not approved by us as the Trade
Marks Act, does not define the term ‘person’ but as per the
General Clauses Act, 1897, a person includes any company or
association or body of individuals and peculiar circumstance, as
placed before us, the Kataria family joined hands in the
partnership firm in 1955, and whether it expanded its business,
it on numerous occasions through Private Limited Company or
through partnership firms or through LLP, and 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
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made the use of the word ‘Kataria’ which is its family name and
therefore, 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.
35. One important aspect which ought to have been
looked into is, the case of the plaintiff before the learned Single
Judge that it had created a niche business relating to providing
policies in the field of ‘gems and jewellery sector’ since 2006.
This is clearly indicated that the plaintiff was
admittedly operating in different sector of insurance for
jewellery, whereas the appellant is operating in the field of
vehicular insurance, since automobile and its sale and allied
services was the business of the proprietor of the appellant’s
family and though Class 36 covers ‘insurance’, we are of the
opinion that the class is broad and since the activity of the
plaintiff was restricted to gems and jewellery sector, whereas
the appellant’s activity is restricted to insurance and automobile
sector, definitely, the plaintiff could not have claimed complete
control over ‘Insurance’, including vehicle insurance as it is not
its case that it anyway deal with insurance in jewellery sector.
Since the business activity of the plaintiff and the appellant may
be common i.e. insurance, but the character of the
goods/services covered are distinct and there is no question of
any deceptive similarity, or deception in rendering of the goods
or services, as the appellant trade in the field of insurance
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brokerage, whereas the plaintiff is dealing in trade of insurance
policies, relating to gems and jewellery, and we do not find any
overlap in the area of their operation, and therefore, there is no
question of trademark infringement, as contemplated u/s.29.
As far as the prior use of the trademark “Kataria” is
concerned, the appellant’s mark is not registered, but it is using
the mark ‘Kataria’ being its surname with continuity and have
encashed upon it by creating a business world by use of the
goodwill of their forefathers/predecessors and are banking
upon the same, and if the appellant Company which is not an
isolated one, but belongs to a group of companies, with the use
of surname ‘Kataria, is restrained from conduct of its business,
it would cause serious prejudice to it.
36. In any case, Mr.J.P. Sen, has made a statement
before us that the appellant shall not touch the insurance
business in jewellery and gems and according to us, this would
suffice to clear the apprehension expressed by the plaintiff that
its business would be impacted and it is admitted that its
business is of insurance in gems and jewellery. In any case,
whether the use of the mark was ‘bonafide’ or whether or not, it
was continuous and prior use, is ultimately a matter of trial and
these issues shall be determined at that stage. However, since
we find that the learned Single Judge has not taken into
consideration some of the important facets of the matter, to
which we had referred to above, we quash and set aside the
said impugned order.
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37. Appeal is allowed by quashing and setting aside the
said order dated 8th December 2025 passed by the learned
Single Judge restraining the defendant from using the trade
name ‘Kataria’, domain name ‘www.katariainsurance.co.in’ and
corporate name ‘Kataria Insurance’, on the ground that it
infringes the registered trademark of the plaintiff and is
deceptively similar to its mark in respect of the services covered
by the plaintiff’s registration.
In view of the disposal of the Appeal, Interim
Application do not survive and stand disposed of.
(R.N. LADDHA,J) (BHARATI DANGRE, J.)
After the pronouncement of the judgment, learned
counsel for the respondent seek stay of the judgment which is
opposed by the counsel for the appellant.
Upon consideration of the request, the operation of
the judgment is stayed for a period of four weeks from the date
when the judgment is uploaded.
(R.N. LADDHA,J) (BHARATI DANGRE, J.)
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