'Surname Protection Under Section 35 Trade Marks Act Not Restricted To Natural Persons': Bombay High Court Allows Corporate Body To Use Family Name

"Section 35 is not restricted to natural persons in the conduct of business and even if so, such natural person’s conduct of business would include the activity of incorporating a company to conduct business with the use of one’s own name." Bombay High Court, in a crucial trademark ruling dated August 19, 2026, held that statutory protection under Section 35 of the Trade Marks Act, 1999 for the bona fide use of a personal or family surname extends to incorporated corporate entities and is not restricted merely to natural persons or sole proprietorships.

A Single Judge bench of Justice Somasekhar Sundaresan observed that interpreting the provision otherwise would arbitrarily "wipe out and truncate the individuals’ substantive right to so use their own name merely on account of the form of the business enterprise."

The Plaintiff, Bhavesh Suresh Kataria, operating as an insurance agent specializing in gems and jewellery under the name 'Kataria Jewellery Insurance Consultancy', instituted a commercial IP suit claiming exclusive trademark rights over the word mark "KATARIA" in Class 36. An interim injunction previously restrained Kataria Insurance Brokers Pvt. Ltd. from using the word "Kataria" in its corporate name, domain, and broking services. The matter reached the Single Judge on remand from the Supreme Court after the earlier injunction was passed without an effective oral contest from the Defendant company.

The primary question before the Court was whether the statutory defense under Section 35 of the Trade Marks Act, 1999 protecting bona fide use of one's own name is available to incorporated companies formed by family members sharing that surname. The Court also had to determine whether an application under Order XXXIX Rule 4 read with Section 151 of the CPC was maintainable to vary the sweeping ex-parte interlocutory restraint.

Section 35 Trade Marks Act Protects Family Surnames Across Business Forms

Addressing the core controversy regarding Section 35 of the Trade Marks Act, the Court held that the provision unequivocally overrides the proprietary rights conferred under the statute against any bona fide use by a person of their own name. The Court rejected the rigid distinction between natural persons and incorporated entities in the context of family businesses.

The bench reasoned that while a company requires human agency for incorporation, individuals do not lose their fundamental right to conduct business under their inherited family surname simply because they incorporated a company rather than running a proprietorship or partnership firm.

"In my opinion, there is nothing in the provision itself to indicate any relevance for the form of business enterprise that would be covered by Section 35, quite apart from whether a 'person' can in its simplest meaning include juridical persons such as bodies corporate."

Supreme Court Precedent In 'Precious Jewels' Solidifies Corporate Name Protection

Relying on the Supreme Court's ruling in Precious Jewels v. Varun Gems and subsequent decisions of the Delhi High Court in Jindal Industries, Chandra Engineers, and Vasundhra Jewellers, the bench observed that courts have consistently recognized the right of family members to trade using shared surnames, provided the adoption is bona fide.

The Court held that earlier judgments such as Kirloskar Diesel Recon, Montari Overseas, and MNM Marketing were distinguishable on facts, particularly because the Kataria family had a documented, continuous history of operating diversified automobile and allied businesses under the "KATARIA" brand since 1955.

"Having a name or surname registered to claim statutory protection, brings with it the risk of the statutory benefits of registration not working against other families with that surname in view of the protection for use of one’s own name under Section 35 being unequivocal."

"Where a business family has used the family surname for all its businesses for generations, for conduct of a newer business in the course of a natural progression, extension or further diversification, the consistent choice of the family name inherited by generations of the family would be hard to assail as not being bona fide."

Trademark Registrations Cannot Squat Over Entire Classes To Monopolize Unrelated Fields

The Court highlighted that the Plaintiff's pleaded case was strictly confined to specialized insurance services in the gems and jewellery niche, whereas the Defendant operates as an IRDAI-regulated corporate insurance broker primarily catering to automobiles. Citing the Supreme Court's decision in Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd., the bench noted that a registrant cannot squat over an entire classification under Class 36 to extinguish legitimate commerce in distinct sub-sectors.

Furthermore, the Court pointed out that an insurance agent appointed under Section 42 of the Insurance Act, 1938 and an IRDAI-registered insurance broker under Section 42D operate in entirely distinct regulatory spheres and cannot be swept into a single generic bucket to presume consumer confusion.

"The regulatory framework in the insurance sector entails multiple nuanced regulatory requirements for those playing specific roles... It would not be appropriate to confer a monopoly wider than the case set up by Plaintiff himself."

Application Under Order XXXIX Rule 4 Read With Section 151 CPC Fully Maintainable

On the preliminary issue of maintainability, the Court ruled that the application under Order XXXIX Rule 4 read with Section 151 of the CPC was fully maintainable, as the earlier injunction was rendered without oral representation from the Defendant. The subsequent remand order from the Supreme Court itself constituted a material change in circumstances.

The bench concluded that subjecting a heavily regulated insurance intermediary to a blanket injunction demanding complete corporate rebranding inflicted severe and undue hardship that required urgent interlocutory calibration.

"Flinging out IA 3457 on the ground that it does not fit the second proviso of Order XXXIX Rule 4 would lead to an evident abuse of process – shutting the doors of the Court on the Defendant, who has been sent here by the topmost Court of the land."

High Court Recalibrates Injunction To Allow Co-Existence

Modifying the earlier blanket injunction, the Court permitted the Defendant to retain and use its registered corporate name 'Kataria Insurance Brokers Pvt. Ltd.' across its corporate filings, ROC registrations, and IRDAI broking licenses.

However, to prevent initial digital confusion, the Court accepted the Defendant's undertaking not to enter the gems and jewellery insurance sector, directed the Defendant to keep the domain 'www.katariainsurance.co.in' dormant, and mandated prominent disclaimers on its new website clarifying no connection with the Plaintiff.

The High Court ultimately allowed the Defendant's application for variation, establishing a calibrated interlocutory framework that protects the Plaintiff's niche jewellery insurance goodwill while safeguarding the Defendant's statutory right under Section 35 to bona fide commercial use of its family surname.

Date of Decision: August 19, 2026