The Bombay High Court has clarified that the protection granted under the “surname defence” in India’s trademark law is not limited to individuals alone. Companies, the Court said, may also rely on this defence if their use of a family name is genuine and tied to a legitimate business history.
The ruling came in a dispute involving the use of the name “Kataria” between Mumbai-based Kataria Jewellery Insurance Consultancy and Ahmedabad-based Kataria Insurance Brokers Pvt. Ltd.
Under Section 35 of the Trade Marks Act, 1999, the law safeguards the bona fide use of a person’s own name or the name of their place of business. The provision essentially ensures that a registered trademark holder cannot prevent someone from honestly using their own name in business.
Dispute over the “Kataria” name
The conflict began when Bhavesh Suresh Kataria, who runs Kataria Jewellery Insurance Consultancy, approached the court alleging that the brokerage company was infringing his registered “Kataria” trademarks and passing off its services by using the name in its corporate identity, trading style, and website domain.
A single judge initially sided with the consultancy. The court restrained the brokerage firm from using “Kataria” in its corporate name or branding, reasoning that Section 35’s protection applied only to natural persons and not to companies, which can freely choose their names.
Division Bench takes a different view
However, the decision was overturned by a Division Bench comprising Justices Bharati Dangre and R. N. Laddha.
The Bench held that the earlier interpretation was too narrow. According to the Court, nothing in Section 35 explicitly bars companies from invoking the defence.
The judges observed that merely because a business is incorporated as a company does not automatically strip it of the right to use a family name connected to its founders or promoters. If the usage is honest and not intended to exploit another party’s goodwill, the protection can still apply.
A legacy business name
The Court also noted that “Kataria” was not an arbitrary corporate label for the brokerage firm. It is the surname of the company’s promoters and has been associated with their family’s business ventures since the 1950s, spanning sectors such as transport, automobiles, real estate and insurance.
Given this background, the Bench concluded that the company’s use of the surname was a legitimate continuation of a longstanding business identity rather than an attempt to capitalise on another entity’s reputation.
Different corners of the insurance market
Another important factor was the nature of the two businesses. Although both operate within the insurance industry, their work occupies different niches.
The consultancy focuses on insurance solutions for the gems and jewellery sector—a specialised field it has served since 2006. The brokerage company, on the other hand, deals largely in motor and general insurance products.
With little operational overlap between the two, the Court found limited risk of market confusion. As part of the resolution, the brokerage company agreed not to enter the jewellery and gems insurance segment.
With that undertaking recorded, the Division Bench allowed the company’s appeal and set aside the earlier restrictions on its use of the “Kataria” name.
