BHAVESH SURESH KATARIA v. KATARIA INSURANCE BROKERS PVT. LTD.
Trademark Infringement and Passing Off: Bombay High Court Grants Interim Injunction, Holding Surname Defense Unavailable to Companies and Prior Use by Dissimilar Entities Irrelevant.
Court: Bombay High Court
Citation: 2025:BHC-OS:24672
Decision Date: 08-12-2025
List of Laws
The Trade Marks Act, 1999; Section 29 of the Trade Marks Act, 1999; Section 35 of the Trade Marks Act, 1999; Passing Off
- Facts: The Plaintiff, Bhavesh Suresh Kataria, trading as Kataria Jewellery Insurance Consultancy, sought an interim injunction against the Defendant, Kataria Insurance Brokers Pvt. Ltd., for infringing the Plaintiff's registered trademarks "KATARIA" and "KATARIA JEWELLERY INSURANCE CONSULTANCY" in Class 36, used for insurance services since 2004. The Plaintiff alleged that the Defendant's use of "KATARIA INSURANCE," the domain name www.katariainsurance.co.in, and the corporate name "KATARIA INSURANCE BROKERS PVT. LTD." was deceptively similar and caused passing off. The Defendant did not appear despite being served.
- Procedural Posture: This is an interim application (IA No. 1663 of 2021) in a commercial intellectual property suit (Commercial IP Suit No. 215 of 2021) before the High Court of Judicature at Bombay, seeking temporary injunctions pending the suit's final disposal.
- Issue: (1) Did the Defendant infringe the Plaintiff's registered trademarks by using a deceptively similar mark for identical services? (2) Did the Defendant's actions constitute passing off, causing likelihood of confusion and damage to the Plaintiff's goodwill? (3) Can the Defendant claim bona fide use of the "Kataria" surname under Section 35 of the Trade Marks Act, 1999, despite being an incorporated entity? (4) Can the Defendant rely on prior use by its alleged group companies, specifically Kataria Automobiles Private Limited (KAPL), to defeat the infringement claim? (5) Does the Plaintiff's delay in bringing the action amount to acquiescence, barring the grant of an injunction?
- Holding: The High Court granted the interim application, issuing a temporary injunction against the Defendant, restraining them from using the impugned trademark "KATARIA INSURANCE," the domain name www.katariainsurance.co.in, and the corporate name "KATARIA INSURANCE BROKERS PVT. LTD." pending the suit's final disposal.
- Reasoning: The Court found that the Plaintiff had established a prima facie case of trademark infringement under Section 29 of the Trade Marks Act, 1999, as the Defendant's marks were identical or deceptively similar to the Plaintiff's registered marks, and the services offered were identical. The Court rejected the Defendant's defense of bona fide use of surname under Section 35, holding that it does not apply to incorporated entities. The Court also rejected the claim of prior use by KAPL, noting that KAPL is a separate legal entity providing dissimilar services (car dealerships, servicing, and transport) under different trademark classes. The Court held that the Plaintiff's actions did not amount to acquiescence, as the Plaintiff had consistently objected to the Defendant's use of the mark. The Court emphasized that delay alone cannot defeat an infringement action, especially when the adoption of the mark is dishonest. The Court concluded that the balance of convenience favored the Plaintiff, and an injunction was necessary to prevent irreparable injury and public confusion, citing the principle that "one mark, one source" is a canon of trademark law.
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