Section 35 protects bona fide corporate use of promoters’ family surnames despite registered trademarks.

The Plaintiff, proprietor of “Kataria Jewellery Insurance Consultancy”, owned registered word and label marks containing KATARIA in Class 36, covering insurance and related financial services. The Defendant, Kataria Insurance Brokers Pvt. Ltd., was an IRDAI-registered insurance broker using the Kataria family name in its corporate name and business operations.

The Plaintiff instituted the Suit in 2021 alleging infringement and passing off in respect of the Defendant’s use of “KATARIA INSURANCE”, its corporate name, and the domain name www.katariainsurance.co.in.

A limited ad-interim injunction was initially granted against use of the domain name, but that order was later set aside by consent, with all contentions left open.

The Defendant filed an affidavit in reply, but was absent when the Plaintiff’s interim application was finally heard in November 2025. On 8 December 2025, the Single Judge granted the Plaintiff expansive injunctions restraining the Defendant from using KATARIA in its corporate name, marks, domain name, website and insurance business.

The Division Bench set aside that order on merits, but the Supreme Court subsequently set aside the Division Bench order and remanded the matter to the Single Judge, holding that the Defendant ought first to have sought vacation of the interim injunction before the Single Judge. The Supreme Court left all contentions on merits open.

The Defendant accordingly filed Interim Application No. 3457 of 2026 under Order XXXIX Rule 4 read with Section 151 CPC seeking vacation or variation of the injunction.

Whether Interim Application No. 3457 of 2026 was maintainable under Order XXXIX Rule 4 read with Section 151 CPC, notwithstanding that the Defendant had previously filed an affidavit in reply but was not present at the final hearing of the Plaintiff’s interim application?

Whether the interim injunction dated 8 December 2025 warranted vacation or variation after hearing the Defendant on merits pursuant to the Supreme Court’s remand order?

Whether the Defendant’s use of the surname “KATARIA” in its corporate name and insurance-broking business constituted bona fide use of its own name protected by Section 35 of the Trade Marks Act, 1999?

Whether the Plaintiff’s registered marks and passing-off claim justified an injunction covering the entire field of insurance, or whether the relief should be confined to the Plaintiff’s pleaded niche of gems and jewellery insurance?

The Court applied Order XXXIX Rule 4 CPC, which permits an injunction to be discharged, varied or set aside; where the order was passed after an opportunity of hearing, the second proviso ordinarily requires a change in circumstances or undue hardship.

The Court also relied on Section 151 CPC, preserving the Court’s inherent power to make orders necessary to secure the ends of justice and prevent abuse of process.

Under Section 35 of the Trade Marks Act, 1999, registration cannot be used to interfere with the bona fide use by a person of his own name or business name.

The Court held prima facie that this protection is not confined to natural persons or proprietorships and may extend to a company incorporated by persons using their family surname.

The Court considered Precious Jewels v. Varun Gems, (2015) 1 SCC 160, supporting bona fide use of a shared family name; Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd., (1997) 4 SCC 201, against claiming a monopoly over an entire broad class beyond the claimant’s actual business; and distinguished authorities concerning the “one mark, one source” principle, including Power Control Appliances and Tilaknagar, because of the Section 35 issue and the parties’ distinct regulatory roles.

The Court also considered the distinction between an insurance agent and an IRDAI-registered insurance broker under the Insurance Act, 1938 and applicable IRDAI regulations.

The Court held that the Defendant had not been effectively heard merely because its affidavit in reply was on record; the Defendant was absent when the interim relief was finally argued.

The Supreme Court’s remand expressly enabled the Defendant to seek vacation of the injunction and left all merits open. Consequently, rejecting the application as a prohibited “second bite” would defeat the Supreme Court’s order; Section 151 CPC independently supported consideration of the application in the interests of justice.

On merits, the Court found prima facie that the Defendant’s promoters had used the Kataria surname consistently across their automobile and related businesses and had incorporated the Defendant as a natural extension into insurance broking.

This supported bona fide use under Section 35 and weakened the allegation that the Defendant adopted KATARIA to exploit the Plaintiff’s goodwill.

The Court further held that the Plaintiff’s pleaded case established a specialised reputation in insurance-related services for the gems and jewellery sector, and that the Plaintiff could not enlarge the scope of the Suit at the interlocutory stage by asserting a broad general-insurance business.

The parties also performed distinct functions: the Plaintiff was an insurance agent appointed by insurers, whereas the Defendant was an IRDAI-registered insurance broker. Their roles could not automatically be treated as one composite field of “insurance” giving rise to inevitable confusion.

However, the Defendant’s near-identical domain name could create initial online confusion. The Court therefore considered a calibrated arrangement preferable to either a blanket injunction or complete vacation, particularly because the Defendant undertook not to operate in the gems and jewellery insurance sector.

The Court declined to uphold the blanket injunction and instead varied the order dated 8 December 2025.

The Defendant was restrained from acting as a market intermediary in insurance relating to the gems and jewellery sector, but was permitted to retain and use its corporate name, including in its IRDAI licence and ROC records.

It was prohibited from reviving or dealing with www.katariainsurance.co.in, and was directed to adopt a distinctly different domain name and social-media presence, clearly stating that it was an insurance broker, had no connection with the Plaintiff, and did not operate in gems and jewellery insurance.

The Defendant was also directed to maintain certified accounts of revenue from its insurance-broking business and file them every six months.

The Defendant’s undertakings not to engage in gems and jewellery insurance and to pay such damages or costs as may ultimately be awarded were accepted.

Costs were deferred to the trial, the Plaintiff’s request for a four-week stay was rejected, and both IA 3457 and IA 1663 were disposed of in the modified terms. The Suit was directed to proceed expeditiously.