Bhavesh Suresh Kataria v. Kataria Insurance Brokers Pvt. Ltd.

16. He submitted that for the past many years, the Plaintiff’s turnover has been running into several lakhs of rupees, and the Plaintiff had expended substantial sums on advertisement and promotional expenses as evidenced by the chartered accountant’s certificate and the promotional material to the Plaint.

17. Mr. Kane then submitted that since the applications for registration of the Plaintiff’s trade marks as set out in the table above were filed by the Plaintiff while trading under the name and style “KATARIA JEWELLERY INSURANCE CONSULTANCY”, the Plaintiff did not claim user of 2004. However, the Plaintiff has been using the trade mark and name KATARIA in respect of the said business since the year 2004.

18. He submitted that on 29th September, 2007, the Plaintiff registered and started using the domain name/website www.katariainsurance.com.

19. Mr. Kane then submitted that the essential elements for establishing trade mark infringement are (a) the existence of a valid registration; (b) the impugned trade mark or name being identical or deceptively similar to the registered mark in question; and (c) the impugned trade mark being used in relation to goods or services that are identical or similar to those covered by the registration.

20. Mr. Kane then pointed out that in the facts of the present case, all these three requirements had been met since (a) the Plaintiff has registration of not only the label mark but also of the word mark KATARIA in respect of, inter alia, insurance services; (b) the impugned trade mark “KATARIA INSURANCE”, the impugned domain name “www.katariainsurance.co.in” and the impugned corporate name “KATARIA INSURANCE BROKERS PVT. LTD.” were all identical and/or deceptively similar to the Plaintiff’s registered trade marks and

(c) the services in respect of which the Defendant is using the impugned trade mark, domain name and corporate name is identical to the services covered by the Plaintiff’s abovementioned trade mark registrations. He therefore submitted that the Plaintiff had clearly made out and established a case of infringement.

21. Mr. Kane then placed reliance upon the decision of the Supreme Court in the case of Laxmikant Patel v. Chetanbhai Shah & Anr.[1] to point out that in order to make out a case of passing off, the Plaintiff was required to show (i) goodwill, (ii) misrepresentation, and (iii) loss and/or likelihood of loss.

22. Mr. Kane then submitted that, given the Plaintiff’s prior adoption and long-standing, open, continuous, and extensive use of the trade mark, the existence of goodwill in favour of the Plaintiff was plainly evident. He further pointed out that the identity or deceptive similarity between the rival trade marks, coupled with the fact that both parties offer the same services under their respective marks, domain names, and corporate names, is bound to cause confusion among consumers regarding the source or affiliation of the services. Such confusion, he submitted, necessarily implies misrepresentation by the Defendant which would result in loss for the Plaintiff, or at the very least an imminent likelihood of loss to the Plaintiff.

23. Mr. Kane then pointed out that the Defendant had, in the Affidavit in Reply dated 27th May 2021, resisted the reliefs sought for by the Plaintiff by raising the following defences: (I) that the Defendant was a bona fide user of the impugned trademark; (II) alternatively, that the Defendant was a prior user; (III) non-joinder of a necessary party; (IV) acquiescence, delay and laches; and (V) that the Plaintiff had taken contrary stands. Mr. Kane submitted that each of these contentions was untenable and would in no manner disentitle the Plaintiff to the interim relief which had been sought for by the Plaintiff. He then dealt with each of the defences raised by the Defendant.

I. The Defendant was a bona fide user of the impugned trade mark

24. Mr. Kane submitted that it is the Defendant’s case that it had adopted the impugned trade mark in a bona fide manner by using the surname/family name of one of its founding members and was thus entitled to protection under Section 35 of the Trade Marks Act, 1999 (“the Act”). He, however, submitted that the defence under Section 35 does not apply to an artificial person, like an incorporated company. He submitted that in cases of incorporated entities, the adoption of the name/mark is by choice, whereas in the case of a natural person, the adoption is not by choice.

25. Mr. Kane then placed reliance upon the decision of the Delhi High Court in the case of Dr. Reddy’s Laboratories Ltd. v. Reddy Pharmaceuticals Limited[2] which he pointed out reiterated the findings of the decision of the Division Bench of this Hon’ble Court in the case of Bajaj Electrical 2004 SCC OnLine Del 668 Limited, Bombay v. Metals & Allied Products, Bombay[3] and held as follows: “The use of trade name/mark "Reddy" by the defendant is capable of causing confusion and deception resulting in injury to the goodwill and reputation of the plaintiff company. No other "Reddy" has a right to star a rival business by using the same trade name on the plea that it is his surname. This would encourage deception. If such a plea is allowed, rivals in trade would be encouraged to associate in their business ventures persons having similar surnames with a view to encash upon the trade reputation and goodwill acquired by others over a period of time. In Bajaj Electrical Limited, Bombay v. Metals & Allied Products, Bombay [reported in air 1988 Bom 167], the user of a family name by the defendants was held to be an act of passing off the goods and it was observed that the use of such family name as a trade mark was not permissible. The plea of the defendants that the surname of the partners of its firm could be used to carry on trade in their own name was rejected. It was held that prima facie the defendants were intentionally and dishonestly trying to 1987 SCC OnLine Bom 225 pass off their goods by use of name "Bajaj" and as such the plaintiff had made out a case for grant of injunction.”

26. He then also placed reliance upon the decisions in Kirloskar Diesel Recon (P) Ltd. & Ors. v. Kirloskar Proprietary Ltd. & Ors.4, Mahindra & Mahindra Ltd. v. Mahendra & Mahendra Paper Mills Ltd.5, Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd.6, Mahindra & Mahindra Ltd. & Anr. v. MNM Marketing Pvt. Ltd. & Anr.7, Montari Overseas Limited vs Montari Industries Limited 8, Reddy Pharmaceuticals Ltd. v. Dr. Reddy's Laboratories Ltd.[9] and Anil Rathi v. Shri Sharma Steeltech (India) Pvt. Ltd. and Ors.10 to point out that the Courts have consistently held that where a mark or name has, through long, continuous and extensive use, acquired distinctiveness and a strong proprietary association with a particular trader or business group, the goodwill in such mark will be protected against misuse or dilution. He submitted that these decisions further the defences available to an

[Bombay High Court] Order dt. 23th April 1998 in Notice of Motion No. 3143 of 1998 in Suit NO. 4007 of 1998 AIR 2002 SC 117

27. Mr. Kane then submitted that the Defendant’s adoption of the impugned name and trade mark KATARIA INSURANCE for insurance services cannot, by any standard, be regarded as being honest or bona fide. He pointed out that, it was incumbent upon the Defendant to have prior to such adoption conducted a basic search of the Trade Marks Register and a market survey. He submitted that had the Defendant undertaken even a rudimentary search, the Defendant would have immediately discovered that the Plaintiff was the registered proprietor of since the year 2010. He relied upon the decision of this Court in the case of Bal Pharma Limited v. Centaur Laboratories Limited11 to support his contention that the Defendant was required to conduct a search and, having failed to do so, must face the consequences. Mr. Kane also further submitted that the law is well settled that a Defendant who adopts and uses a mark with knowledge of the Plaintiff’s prior mark cannot later be heard to complain when sued for infringement, and that a Defendant who commences use without 2001 SCC OnLine Bom 1176 conducting a search is in no better position. In support of his contention, he placed reliance upon the decision of this Court in the case of Arochem Ratlam Pvt. Ltd. v. Arom Alchemists Pvt. Ltd.12 He thus submitted that the defendant's user was plainly not bona fide.

28. Mr. Kane then submitted that even assuming that the Defendant’s adoption of the impugned name and trade mark “KATARIA INSURANCE”, was honest and bona fide, nevertheless, it was well settled that fraud was not an essential requirement for maintaining an action for passing off. In support of his contention, he placed reliance upon the decision of this Court in the case of Wockhardt Ltd vs Torrent

II. Defendant was the prior user

29. Mr. Kane pointed out that the Defendant had in the Affidavit in Reply taken the plea that the impugned trade mark “KATARIA” was wellknown and associated with the Defendant and its alleged group companies alone. He also pointed out that it was the Defendant’s case that the Defendant had been suing the trade mark “KATARIA” through its predecessor group companies since 1955 and that by virtue of the Defendant being an authorised dealer of Maruti Suzuki India Ltd, the [Bombay High Court] Order dt. 12th August 2025 in IA (L) No. 32451 of 2024 in COMIP (L) NO. 32272 of 2024 2017 SCC Online Bom 9666 Defendant had been using the impugned trade mark in respect of INSURANCE SERVICES since 1996 through its predecessor Kataria Automobiles Pvt Ltd (KAPL), since 2002 through Kataria Motors Pvt. Ltd. and since 2011 through M/s Kataria Wheels.

30. Mr. Kane then submitted that the Defendant’s plea of prior user, as taken in the Affidavit in Reply, was both misconceived and legally untenable. He pointed out that the alleged prior user relied upon by the Defendant was, firstly, not the Defendant itself but its so-called group companies, and secondly, was not in relation to insurance services at all. He submitted that any purported use of the name or mark “KATARIA” by entities other than the Defendant and that for services unrelated to insurance was wholly irrelevant to the present proceedings and cannot, in any manner, inure to the Defendant’s benefit. He pointed out that each company is a separate legal entity, and any use by an independent legal entity cannot benefit the Defendant or be treated as use by the Defendant.

31. Mr. Kane then pointed out that the Defendant was admittedly incorporated in the year 2014, and hence, in the absence of any cogent and clear chain of title, any use of the impugned trademark/name “KATARIA” by any of the entities referred to in the Affidavit in Reply, namely Kataria Automobiles Pvt. Ltd., Kataria Motors Pvt. Ltd. and M/s Kataria Wheels, can neither be construed as the Defendant’s use, nor can a claim of prior user be made on the basis thereof. It is submitted that such alleged stray and isolated use by any entity (particularly in the absence of any written document/assignment) cannot be equated with the Defendant’s own use, and hence the Defendant is not and cannot be considered a prior user of the impugned trade mark for the purpose of the Trade Marks Act. In support of his contention, he placed reliance upon the decision in the case of T. G. Balaji Chettiar v. Hindustan Lever Ltd. Bombay14 as also the decisions in the case of Lords Inn Hotels & Developers Pvt. Ltd. v. Vikas Seth, Trading as Lords Residency15, Yogi Ayurvedic Products Pvt. Ltd. v. Vaishali Industries16, London Rubber Co. Ltd v. Durex Products Incorporated and Another17, Kores (India) Limited v. Whale Stationery Products Ltd.18, Kamat Hotels (India) Ltd. v. Royal Orchid Hotels Ltd.19, Tata Oil Mills Co. Ltd. V. M/s. Wipro Ltd.and Anr.20, New Hope Food Industries (P) Limited v. Pioneer Bakeries (P) Limited21, and Grasim Industries Limited & Anr. v. Saboo Tor Private Limited & Ors.22

[Bombay High Court] Order dated 05.03.2025 passed in IA/190/2025 in COMIP/247/2025 [Bombay High Court] Order dated 17.02.2025 passed in IA/1598/2023 in COMIP/45/2023 AIR 1963 SC 1882 2008 (3) Mh.L.J. 523 2011 (5) Bom C.R. 416 AIR 1986 DELHI 345 MIPR 2008(1) 0173 [Bombay High Court] Order dated 16th October 2025 in IA No. 3888 of 2022

III. Non-Joinder of Kataria Automobiles Private Limited

32. Mr. Kane then pointed out that the Suit was also bad for non-joinder of Kataria Automobiles Private Limited (“KAPL”), who was the registered proprietor of the following trade marks in which the Defendant also had statutory rights: Trademark Registrati on No. Date of Application Cla ss User Detail s Services 1462954 21/06/2006 35 01/01/ MARUTI CARS DEALERSHIP SHOWROOMS & ALL OTHER SERVICES INCLUDED IN CLASS

35. 1462955 21/06/2006 37 01/01/ CAR SERVICE CENTRE & ALL OTHER SERVICES INCLUDED IN CLASS 37. 1859016 07/09/2009 39 01/06/ TRANSPORT (TRANSPORTATION OF GOODS AND SERVICES NECESSARILY CONNECTED WITH SUCH TRANSPORT; AS WELL AS SERVICES RELATING TO THE STORING OF GOODS IN A WAREHOUSE OR OTHER BUILDING FOR THEIR PRESERVATION OR GUARDING). Mr. Kane, however, submitted that there was a fundamental fallacy in the Defendants’ contention since none of the aforementioned trade marks pertained to insurance-related services. He thus, without admitting that the KAPL was the registered proprietor of the above marks submitted that the Defendant, cannot take refuge of the said registrations obtained by KAPL since the same not only pertain to dissimilar services but were also in the name of a completely distinct legal entity

33. Mr. Kane then submitted that the Defendant’s reliance on trade mark registrations standing in the name of “Kataria Automobiles Private Limited” (KAPL) was wholly misconceived. In support of his contention that a registration in a different class and, more importantly, in the name of a different legal entity, cannot constitute a valid defence, he placed reliance on the decision of this Court in Mahindra & Mahindra Ltd. & Anr v. MNM Marketing Pvt. Ltd. & Anr. He pointed out that, in that case, the irrelevant registrations were at least held by the Defendants themselves, whereas in the facts of the present case, the registrations were admittedly owned by an entirely separate and distinct legal entity. He thus submitted that the Defendant could not merely by asserting that KAPL was part of its group, appropriate or rely upon trade mark rights that purportedly vest exclusively in KAPL. He thus submitted that any registrations that KAPL might have would not confer proprietary rights upon the Defendant.

34. Mr. Kane further pointed out that the Defendant was incorporated only in the year 2014 for the exclusive purpose of carrying on business related to insurance services. He therefore submitted that the services for which KAPL was stated to be using the name and mark “KATARIA” were entirely distinct from the insurance-related services offered by the Defendant. He submitted that since the Plaintiff’s objection pertains solely to the Defendant’s use of the impugned trade mark, corporate name, and domain name in relation to insurance services, there was no question of impleading KAPL, was a distinct entity engaged in completely different and unrelated services. Mr. Kane also submitted that, despite KAPL not being a party to the present Suit, the Defendant had sought to mischievously and in bad faith rely upon the alleged use of the name and mark “KATARIA” by KAPL in connection with wholly dissimilar services.

IV. Acquiescence and Delay and Laches

35. Mr. Kane then submitted that though the Defendant had alleged acquiescence, delay and laches on the part of the Plaintiff, these contentions were untenable. He first placed reliance upon the decision of the Hon'ble Supreme Court in the case of Midas Hygiene v Sudhir Bhatia23 to point out that in cases pertaining to copyright infringement, for the party against whom infringement was alleged.

36. Mr. Kane then submitted that in the facts of the present case, there was neither acquiescence nor delay and laches on the part of the Plaintiff. He pointed out that the Plaintiff had already objected to the incorporation of the Defendant in 2014, before the Registrar of Companies, Ahmedabad. Further, the Plaintiff had corresponded with Insurance Regulatory Development Authority of India (IRDA) to oppose the registration of the Defendant. Furthermore, the Plaintiff had sent out not one but two separate cease and desist notices to the Defendant one in the year 2014 and another in 2019. In the circumstances, the defence of acquiescence is non est as the Plaintiff had time and again objected to the use of the Defendant’s trade mark. He then placed reliance upon the decision of this Court in the case of Schering Corporation & Ors. v. Kilitch Co. (Pharma) Pvt. Ltd.24 to submit that if the Defendant, after notice, continues the infringing activity, the Defendant does so at its own peril and cannot raise the defences of delay and acquiescence.

37. Mr. Kane then submitted that the Defendant’s conduct was tainted with mala fides. He pointed out that although the Plaintiff was copied on the ROC, Ahmedabad’s letter dated 25th February 2014, informing the Defendant of the Plaintiff’s objection to the adoption of the impugned corporate name, the Defendant thereafter did not copy or inform the Plaintiff in any of its subsequent correspondence with the ROC, including the letters dated 13th December 2013 and 27th March 2014. As a result, the Plaintiff was never made aware of the Defendant’s response to the ROC or of the Defendant’s continued use of the impugned name between 2014 and 2019. He submitted that had the Plaintiff been apprised of such communications, the Plaintiff would have replied on merits.

38. Mr. Kane further submitted that when the Defendant failed to respond to the Plaintiff’s letter dated 3rd October 2014, and in the absence of any knowledge of the Defendant’s ongoing correspondence with the ROC, the Plaintiff was under a bona fide belief that the Defendant had ceased using the impugned trade mark or corporate name and that it was only in the year 2019, upon discovering the Defendant’s impugned website/domain name, that the Plaintiff realised that the misuse continued, prompting it to issue a second cease and desist notice and, thereafter, filed the present Suit.

39. Mr. Kane then relied upon the decisions in Power Control Appliances v. Sumeet Machines (P) Ltd.25, Hindustan Pencils Pvt. Ltd. v. M/s. India, ITC Limited v. NTC Industries Limited27 and Petrofer Chemie H. R. Fischer GMBH & Co. KG. & Anr. v. United Petrofer Limited28 to emphasise that mere delay or inaction does not amount to acquiescence and cannot, by itself, defeat an infringement claim. He submitted that acquiescence requires a positive act by the Plaintiff, i.e., something that encourages, assents to, or induces the Defendant’s use of the impugned trade mark, leading the Defendant to alter its position to its detriment. Mere negligence, silence, oversight, or delay without such encouragement is insufficient. He further submitted that even where there is delay or laches, Courts generally do not deny an injunction if public confusion is likely, as consumer protection remains paramount. He submitted that therefore, unless a Defendant can show conscious encouragement by the Plaintiff and bona fide reliance on such conduct, the defence of delay or acquiescence cannot stand.

V. Plaintiff has taken Contrary Stances

40. Mr. Kane then pointed out that it was the Defendant’s contention that the Plaintiff has taken inconsistent positions regarding the claim of user, of the Plaintiffs trade mark “KATARIA” since in the Plaint the Plaintiff had claimed user from the year 2004, however, in the letter dated 20th January 2014 addressed to ROC, the Plaintiff had claimed user from the year 2006. Mr. Kane clarified that there was infact no inconsistency since the Plaintiff’s claim of use since 2004 related to the trading style “KATARIA INSURANCE CONSULTANCY”, whereas the user claim of 2006 pertained specifically to the name/style “KATARIA JEWELLERY INSURANCE CONSULTANCY”. He submitted that these were two distinct trading styles adopted at different points in time, which facts had been fairly disclosed. He thus submitted that the Plaintiff had not taken any contradictory stand as alleged or at all.

41. Mr. Kane then, pointed out that the Hon’ble Supreme Court had, in the case of Midas Hygiene v Sudhir Bhatia held as follows:

42. Mr. Kane then placed reliance upon the decisions in the case of Power Control Appliances & Ors. v. Sumeet Machineries Pvt. Ltd.29 and UTO Nederland B.V. & Anr v/s Tilaknagar Industries Ltd and Tilaknagar Industries Ltd v/s Herman Jansen Beverages Nederland B.V. & Ors.30 submitted that if an injunction was not granted, it would amount to a situation whereby one mark, i.e., KATARIA, would have multiple sources, which would be antithetical to the basic canon of trade mark law, i.e., one mark, one source and one proprietor.

43. Having heard Learned Counsel for the Plaintiff and having considered the pleadings, documents, and case law upon which reliance was placed, I am satisfied that the Plaintiff has made out a prima facie case and are entitled to interim relief for the following reasons.

Section 29 of the Trade Marks Act, a Plaintiff is required to establish (i) the existence of a valid registration, (ii) the impugned trade mark being identical or deceptively similar to the registered mark, and (iii) use of the impugned trade mark in relation to goods or services identical or similar to those for which the mark is registered. In the present case, there is no dispute that the Plaintiff is the registered proprietor of the word and device marks KATARIA in Class 36 for insurance-related services and that the Defendant is using the marks KATARIA INSURANCE, the domain name www.katariainsurance.co.in, and the corporate name KATARIA INSURANCE BROKERS PVT. LTD., all of which are identical or deceptively similar to the Plaintiff’s marks. The Defendant’s services are in the very field of insurance covered by the Plaintiff’s registrations. Accordingly, the Plaintiff has well established all the requisite ingredients to establish infringement under Section 29 of the Trade Marks Act.

44. Hence, for the aforesaid reasons, the Plaintiff has made out a strong prima facie case, and the balance of convenience is in favour of the Plaintiff. I am satisfied that in the event an injunction as prayed for is not granted, not only would irreparable injury be caused to the Plaintiff but also that the prejudice would be caused to the public at large.

45. In view of the foregoing discussion and for the reasons recorded hereinabove, I pass following order:

(i) The Interim Application No.1663 of 2021 is made absolute in terms of prayer clauses (a) and (b) which are already reproduced above.

(ii) In the facts and circumstances of the case, there shall be no order as to costs. [ARIF S. DOCTOR, J.]