Companies Too Can Claim 'Own Name' Defence Against Trademark Infringement: Bombay High Court

The Bombay High Court has held that the defence available under Section 35 of the Trade Marks Act, 1999, which protects the bona fide use of one's own name, is not confined only to natural persons and can also be invoked by a corporate entity where the name used reflects the surname of its promoters.

A division bench of Justices Bharati Dangre and R. N. Laddha made the observation while allowing an appeal filed by Kataria Insurance Brokers Pvt. Ltd. against an interim injunction granted in favour of Bhavesh Suresh Kataria, proprietor of “Kataria Jewellery Insurance Consultancy”.

Rejecting the single judge's view that the protection under Section 35 is limited to natural persons, the bench observed:

“… 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.”

The Single Judge had earlier granted an interim injunction restraining Kataria Insurance Brokers Pvt. Ltd. from using the mark “Kataria Insurance”, holding that it infringed Bhavesh Suresh Kataria's registered trademark “Kataria” in Class 36, which relates to insurance services.

Before the appellate bench, Kataria Insurance Brokers Pvt. Ltd. argued that its use of the name “Kataria” was bona fide. The company said the word forms part of the surname of its promoters and has historically been used by businesses associated with the Kataria family.

The Single Judge was not persuaded by this contention. The court held that the protection under Section 35 of the Trade Marks Act, which permits bona fide use of one's own name, applies only to natural persons and cannot be extended to corporate entities that consciously adopt their trade names.

Examining the scope of Section 35, which protects bona fide use by a person of his own name or that of his place of business, the Division Bench held that the provision does not expressly restrict the defence to natural persons.

The Court noted that the surname “Kataria” was associated with the promoters and predecessors of Kataria Insurance Brokers Pvt. Ltd. and that the defence raised under Section 35 could not be rejected at the interim stage solely on the ground that the defendant was a corporate entity, particularly in the absence of material showing that the adoption of the name was mala fide.

Holding that the Single Judge had erred in dismissing the Section 35 defence on this basis, the bench set aside the impugned order granting the injunction restraining Kataria Insurance Brokers Pvt. Ltd. from using the trade name containing “Kataria”.