The Bombay High Court examined whether a corporate entity could rely on the bona fide use defence under Section 35 of the Trade Marks Act, 1999 when its name incorporated a family surname, and whether the interim injunction granted in the suit could be varied under Order XXXIX Rule 4 of the CPC and Section 151 of the CPC. The Court allowed the interim application (IA 3457) and varied the earlier injunction, laying down a nuanced test for corporate use of family names.
Background & Facts
The Dispute
The plaintiff, Mr. Bhavesh Suresh Kataria, operates an insurance consultancy specialising in gems and jewellery insurance under the trade name “Kataria Jewellery Insurance Consultancy”. He holds a word mark “KATARIA” (Reg. No. 4174551, Class 36, registered 13 May 2019) and a label mark “Kataria” (Reg. No. 1969420, Class 36, registered 21 May 2010). The defendant, Kataria Insurance Brokers Pvt. Ltd., incorporated in 2014, uses the corporate name “Kataria” and the domain name www.katariainsurance.co.in, which the plaintiff alleges infringes his marks and passes off his goodwill.
Key Facts
- 01 Jun 1999 - Plaintiff begins offering life and general insurance policies, later focusing on jewellery insurance.
- 2004 - Plaintiff starts operating under the style “Kataria Insurance Consultancy”.
- 21 May 2010 - Plaintiff registers the label mark “Kataria”.
- 13 May 2019 - Plaintiff registers the word mark “KATARIA”.
- 2014 - Defendant is incorporated as Kataria Insurance Brokers Pvt. Ltd. by the Kataria family, who have used the surname in multiple businesses since 1955.
- 03 Mar 2021 - Suit (Commercial IP Suit No. 215 of 2021) filed by the plaintiff.
- 23 Mar 2021 - Interim Application IA 1663 filed, seeking a temporary injunction against the defendant’s use of the mark and domain name.
- 08 Dec 2025 - Single Judge grants an expansive interim injunction restraining the defendant, its directors, employees and agents from using the mark, the domain www.katariainsurance.co.in and any corporate name containing “KATARIA INSURANCE”.
- 25 May 2026 - Supreme Court order directs that the interim order should not have been appealed before the Division Bench; the matter must be remanded to the Single Bench for a vacation application.
- 19 Aug 2026 - Present judgment delivered.
Procedural History
- 10 Jun 2021 - IA 1663 listed for final hearing; repeatedly adjourned and finally heard on 26 Nov 2025 in the defendant’s absence.
- 08 Dec 2025 - Interim Order granting injunction issued by the Single Judge.
- 23 Feb 2026 - Division Bench set aside the Interim Order on merits.
- 25 May 2026 - Supreme Court order remands the matter to the Single Bench, directing that the defendant may file an application to vacate the Interim Order.
- 19 Aug 2026 - High Court decides IA 3457 (filed under Order XXXIX Rule 4 CPC) and varies the Interim Order.
Parties' Positions
- Plaintiff argues that the defendant’s use of the Kataria name and the domain name is a deliberate attempt to piggy-back on his registered marks, constituting infringement and passing off. He contends that the interim injunction should remain in full force.
- Defendant contends that the use of the Kataria surname is bona fide under Section 35 because the family has used the name in all its businesses for decades. He relies on the Supreme Court’s remand and argues that the interim order should be vacated or at least varied, invoking the “change in circumstances” and “undue hardship” provisions of Order XXXIX Rule 4 and the inherent powers under Section 151 CPC.
Relief Sought
- Plaintiff seeks to maintain the interim injunction in its entirety and to restrain the defendant from any use of the Kataria name in the insurance sector.
- Defendant seeks vacation of the interim injunction, permission to continue using its corporate name, and a calibrated restriction limited to the gems-and-jewellery insurance niche.
The Legal Issue
What is the correct interpretation of Section 35 of the Trade Marks Act, 1999 with respect to a corporate entity using a family surname, and does the Supreme Court’s remand empower the Single Bench to vary the interim injunction under Order XXXIX Rule 4 CPC and Section 151 CPC?
Arguments Presented
For the Applicant (Defendant)
- The defendant relies on the Supreme Court’s direction that the matter be remanded to the Single Bench, creating a change in circumstances that satisfies the first limb of Order XXXIX Rule 4.
- He argues that the bona fide use defence under Section 35 applies because the Kataria family has consistently used the surname in all its enterprises since 1955, and the corporate name is merely a continuation of that use.
- The defendant points to Precious Jewels & Anr. v. Varun Gems and other Supreme Court precedents where the Court protected the use of a family name by a corporate entity.
- He submits that the interim injunction imposes undue hardship on a regulated insurance broker, violating the second limb of Order XXXIX Rule 4.
- The defendant invokes Section 151 CPC to fill any gap left by the Supreme Court order, emphasizing the inherent power of the court to prevent abuse of process.
For the Respondent (Plaintiff)
- The plaintiff relies on the earlier Interim Order, which found that the defendant’s use of the mark would cause confusion, dilution of goodwill and pass off.
- He argues that Section 35 protects only natural persons and that a corporate entity cannot claim the same protection.
- The plaintiff cites Ravishankar v. VIIth Additional District Judge and Pittie v. Pittie to contend that an order passed after an opportunity to be heard cannot be varied unless there is a new material fact.
- He maintains that the Supreme Court’s remand does not override the substantive findings of infringement and that the injunction should remain in full force.
The Court's Analysis
The Court began by confirming that IA 3457 falls squarely within Order XXXIX Rule 4 CPC because the Supreme Court’s remand constitutes a change in circumstances. It noted that the Supreme Court expressly directed the matter to be heard by the Single Bench for a vacation application, thereby satisfying the statutory requirement that the applicant must approach the court which passed the original order.
"The Supreme Court has directed that the matter be remanded to the Single Bench to enable the Defendant to seek vacation of the Interim Order."
The Court then turned to the interpretation of Section 35. It held that the provision uses the term “person” in its ordinary sense, which includes juridical persons when they are using a name that is genuinely their own. The judgment observed that the Kataria family had used the surname in all its businesses for over six decades, and the incorporation of Kataria Insurance Brokers Pvt. Ltd. was a natural extension of that usage. Consequently, the bona fide use defence was available to the defendant.
The Court distinguished Ravishankar and Pittie on the ground that those cases dealt with parties who had failed to appear and could not invoke a Supreme Court remand. Here, the Supreme Court had expressly remanded the matter, creating a fresh factual matrix that justified revisiting the interim relief.
Regarding the undue hardship limb, the Court accepted the defendant’s evidence that the injunction barred it from acting as an insurance broker in the gems-and-jewellery sector, a restriction that would cripple its business, which records show has an annual turnover of over Rs 13.28 crore. The Court found this to be a genuine hardship, satisfying the second limb of Order XXXIX Rule 4.
The Court also invoked Section 151 CPC, stating that the inherent power of the court to prevent abuse of process allows it to vary an injunction when the Supreme Court’s direction creates a new legal scenario. The Court emphasized that the Supreme Court’s order was not merely advisory but a binding directive that must be implemented.
Balancing the interests, the Court concluded that a total vacatur of the injunction would be excessive. Instead, it fashioned a calibrated variation that:
- Allows the defendant to retain its corporate name and continue operating as an insurance broker, provided it does not act as a market intermediary in the gems-and-jewellery insurance niche.
- Requires the defendant to discontinue the domain www.katariainsurance.co.in and adopt a distinct domain that does not cause initial confusion.
- Imposes a duty on the defendant to maintain transparent accounts and file audited statements every six months.
- Leaves the plaintiff’s website untouched and permits the defendant to display a disclaimer clarifying its separate identity.
The Court’s reasoning reflects a principled approach: protecting the statutory bona fide use defence while ensuring that the plaintiff’s legitimate goodwill is not unduly harmed.
The Verdict
The Court allowed IA 3457, varied the Interim Order dated 08 Dec 2025, and imposed the following directions:
- The defendant shall not act as a market intermediary in the gems-and-jewellery insurance sector.
- The defendant may continue using its corporate name and may not be required to alter its incorporation name.
- The domain www.katariainsurance.co.in shall remain dormant; the defendant must launch a new domain that clearly differentiates it from the plaintiff’s mark.
- The defendant must display a disclaimer on its website stating it is an insurance broker with no connection to the plaintiff.
- The defendant shall file audited accounts every six months.
- Costs will be determined at trial.
What This Means For Similar Cases
Bona Fide Use Extends to Corporates
- Practitioners should advise corporate clients that long-standing family surnames can qualify for the bona fide use defence under Section 35, provided the usage is genuine and not a device to appropriate another’s goodwill.
- Evidence of historic use across multiple entities strengthens the defence.
Order XXXIX Rule 4 Is Not a Barrier When Supreme Court Remands
- A Supreme Court remand creates a change in circumstances, satisfying the first limb of Order XXXIX Rule 4.
- Courts will now be more willing to vary interim injunctions on the basis of undue hardship, especially where the injunction hampers a regulated business.
Inherent Powers Under Section 151 CPC
- Courts may invoke Section 151 CPC to fill gaps left by procedural statutes, ensuring that higher-court directives are given effect without procedural dead-lock.
- Lawyers should frame applications to highlight the inherent power to prevent abuse of process.
Practical takeaways:
- Compile documentary proof of historic family-name usage before filing an opposition.
- When faced with an interim injunction, assess whether a Supreme Court remand or a change in factual matrix exists to invoke Order XXXIX Rule 4.
- Prepare detailed accounts and compliance schedules to satisfy any court-imposed monitoring conditions.
