[Cites 25, Cited by 0]
Bombay High Court
Bhavesh Suresh Kataria vs Kataria Insurance Brokers Pvt. Ltd. on 8 December, 2025
2025:BHC-OS:24672
IA-1663-2021
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION NO. 1663 OF 2021
IN
COMMERCIAL IP SUIT NO. 215 OF 2021
Bhavesh Suresh Kataria proprietor of and trading as
Kataria Jewellery Insurance Consultancy ... Applicant/
Original Plaintiff
In the matter between:
Bhavesh Suresh Kataria proprietor of and trading as
Kataria Jewellery Insurance Consultancy ... Plaintiff
Versus
Kataria Insurance Brokers Pvt. Ltd. ... Defendant
-------
Mr. Ashutosh Kane a/w. Mr. I.K. Paranjpe & Mr. Kanak Kadam i/b. W.S.
Kane & Co. for the Plaintiff
-------
CORAM : ARIF S. DOCTOR, J.
DATE : 8th DECEMBER 2025
Oral Judgment
1. The Applicant in the captioned Interim Application seeks the following
substantive reliefs:
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(a) pending the hearing and final disposal of the suit, the Defendant by
itself, its directors, employees, servants, agents and all persons claiming
under it be restrained by a temporary order and injunction of this
Hon'ble Court from infringing the Plaintiff's registered trade marks
bearing Registration Numbers 1969420 and 4174551, both in Class 36
by using the impugned trade mark KATARIA INSURANCE, the
impugned domain name/ webs www.katarisinusrance.co.in and the
impugned corporate name containing the mark KATARIA
INSURANCE and/or any other trade mark, domain name 10) website
and corporate name containing the word KATARIA or any other trade
mark, domain name, corporate name identical with and/or deceptively
similar to the Plaintiff's registered trade marks in respect of the services
covered by the Plaintiff's registrations or in any other manner
whatsoever;
(b) pending the hearing and final disposal of the suit, the Defendant by
itself, its directors, employees, servants, agents and all persons claiming
through it be restrained by a temporary order and injunction of this
Hon'ble Court from rendering, offering, promoting or advertising the
impugned services or like services under the impugned trade mark
KATARIA INSURANCE, the impugned domain name/ website
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www.katariainsurance.co.in and impugned corporate name containing
the mark KATARIA INSURANCE and/or any other trade mark,
domain name/ website and corporate name containing the word
KATARIA or any other trade mark, domain name/ website and
corporate name wading name and style identical with and/or
deceptively similar to the Plaintiff's said well-known trade marks,
domain name and said trading name and style containing the said trade
mark KATARIA so as to pass off or enable others to pass off the
Defendant's impugned services and/or business as and for the said well-
known services and/or business of the Plaintiff or in any other manner
whatsoever;
2. The Defendant has not appeared, despite being served and repeatedly
informed about the listing of the matter.
3. It was thus that the Interim Application was taken up for hearing.
Facts in Brief
4. In the year 1999 the Plaintiff started the business of offering life and
general insurance policies, including Jeweller's Block Insurance Policy.
Thereafter, in the year 2004, the Plaintiff started conducting the business
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of providing insurance policies under the name and style "KATARIA
INSURANCE CONSULTANCY".
5. In 2006, the Plaintiff decided to concentrate and develop a niche in the
jewellery market, and since then, he has been offering insurance policies
and related services for the "Gems and Jewellery Sector". Consequently,
the Plaintiff changed its trading name and style to "KATARIA
JEWELLERY INSURANCE CONSULTANCY".
6. The Plaintiff then applied for and secured registration of the following
trade marks:
Trade Mark Registration Date of User Claim Cl Services
No. Registration
1969420 21.05.2010 07/04/2006 36 Real Estate
Affairs,
Insurance,
Financial Affairs,
Monetary Affairs
KATARIA 4174551 13.05.2019 07/04/2006 36 Insurance,
Financial Affairs,
Monetary Affairs,
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Real Estate
Affairs
7. It is the Plaintiff's case that in the fourth week of January 2014 the Plaintiff
came to know that the Defendant had registered a company under the
Corporate Name "KATARIA INSURANCE BROKERS PRIVATE
LIMITED". The Plaintiff thus, through its chartered accountant,
addressed a letter dated 28th January 2014, to the Registrar of Companies
(ROC), Ahmedabad, objecting to the Defendant's registration of the said
corporate name.
8. On 25th February 2014, the ROC informed the Defendant about the
Plaintiff's existing trade mark in Class 36 and called upon the Defendant
to change its corporate name. It appears that the ROC also drew the
Defendant's attention to an undertaking dated 13th December 2013
signed by one of the directors of the Defendant, namely Mr. Rohan
Rajendra Kataria, by which he had undertaken to alter the name of the
Defendant company, if required.
9. Since, however, the Defendant did not change its name the Plaintiff on
4th August 2014 issued a cease and desist notice to the Defendant.
10. The Defendant, in its letter dated 8th September 2014, responded to the
cease and desist notice by denying its contents, among other points. The
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Defendant claimed to be entitled to use the name Kataria for several years
by virtue of being part of the "KATARIA GROUP" and also on the basis
of certain trade mark registrations in the name of "Kataria Automobiles
Private Limited".
11. On 3rd October 2014 the Plaintiff responded to the Defendant's letter
dated 8th September 2014, negating the contentions raised therein. It is
the Plaintiff's case that since the Defendant did not respond to this letter,
the Plaintiff was under a bona fide belief that the Defendant had
discontinued the use of the mark "KATARIA INSURANCE"
("impugned mark") and ("impugned corporate name").
12. It is the Plaintiff's case that in January 2019 the Plaintiff came across the
Defendant's domain name www.katariainsurance.co.in while
conducting an online search, pursuant to which the Plaintiff sent the
Defendant another cease and desist notice dated 17th August 2019.
Again, there was no response from the Defendant. The Plaintiff
accordingly once again informed the ROC and also informed the
Insurance Regulatory Development Authority of India (IRDA) regarding
the same.
13. The Plaintiff then on 10th March 2021, filed the captioned Suit.
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14. By an order dated 4th August, the Plaintiff was granted leave under
Clause XIV of Letters Patent to merge the causes of action of infringement
and passing off.
Submissions on behalf of the Plaintiff
15. Mr. Kane, Learned Counsel appearing on behalf of the Plaintiff, at the
outset submitted that since the beginning, the Plaintiff's family name
"KATARIA" formed the leading, essential and memorable feature of his
trading name and style and that the Plaintiff had, since the year 2004,
been openly, regularly, continuously and extensively using the said trade
mark and name in respect of the said services.
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.
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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.
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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
1 (2002) 3 SCC 65
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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
Limited2 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
2 2004 SCC OnLine Del 668
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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
3 1987 SCC OnLine Bom 225
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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
41995 SCC OnLine Bom 312
5 [Bombay High Court] Order dt. 23th April 1998 in Notice of Motion No. 3143 of 1998 in Suit No.
4007 of 1998
6 AIR 2002 SC 117
2014 SCC OnLine Bom 1343
1995 SCC OnLine Del 865
9 2007 SCC OnLine Del 1416
10 2020 SCC OnLine Del 2848
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individual under Section 35 of the Trade Marks Act, which are not
available to a company.
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
11 2001 SCC OnLine Bom 1176
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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
Pharmaceuticals Ltd13.
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 well-
known 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
13 2017 SCC Online Bom 9666
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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
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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 Another 17, 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
14 1965 SCC OnLine Mad 69
15 [Bombay High Court] Order dated 05.03.2025 passed in IA/190/2025 in COMIP/247/2025
16 [Bombay High Court] Order dated 17.02.2025 passed in IA/1598/2023 in COMIP/45/2023
AIR 1963 SC 1882
18 2008 (3) Mh.L.J. 523
2011 (5) Bom C.R. 416
AIR 1986 DELHI 345
21 MIPR 2008(1) 0173
22 [Bombay High Court] Order dated 16th October 2025 in IA No. 3888 of 2022
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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 Date of Cla User Services
on No. Application ss Detail
s
1462954 21/06/2006 35 01/01/ MARUTI CARS
1996 DEALERSHIP
SHOWROOMS & ALL
OTHER SERVICES
INCLUDED IN CLASS
1462955 21/06/2006 37 01/01/ CAR SERVICE CENTRE
1996 & ALL OTHER
SERVICES INCLUDED
IN CLASS 37.
1859016 07/09/2009 39 01/06/ TRANSPORT
2006 (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).
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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
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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
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the Hon'ble Supreme Court in the case of Midas Hygiene v Sudhir Bhatia 23
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.
23 (2004) 3 SCC 90
24 1990 SCC OnLine Bom 425
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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.
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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
Stationary Products Co.26, 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.
(1994) 2 SCC 448: 1994 SCC OnLine SC 93
AIR 1990 Delhi 19
27 2015 (64) PTC 244 [Bom]
28[Bombay High Court] Order dated 06.11.2025 in IA No. 2143 of 2021
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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 :
"5. The law on the subject is well settled. In cases of
infringement either of trade mark or of copyright, normally an
injunction must follow. Mere delay in bringing action is not
sufficient to defeat grant of injunction in such cases. The grant
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of injunction also becomes necessary if it prima facie
appears that the adoption of the mark was itself
dishonest."
He submitted that the above findings were entirely apposite to the facts
of the present case since the rival marks/names were identical. The rival
services/businesses are also virtually identical. He thus submitted that a
strong prima facie case of both infringement and passing off had been
made out by the Plaintiff. He submitted that the Defendant had not
provided any justification for adopting an identical name and mark and
the adopting of the mark was plainly dishonest. Thus an injunction must
follow.
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.
29 (1994) 2 SCC 448
30 2025 SCC Online Bom 2658
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REASONS AND CONCLUSIONS
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.
A. It is well settled that to make out a case of infringement under
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.
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Accordingly, the Plaintiff has well established all the requisite
ingredients to establish infringement under Section 29 of the
Trade Marks Act.
B. As held by the Supreme Court in the case of Laxmikant Patel
v. Chetanbhai Shah, to establish a case of passing off, a Plaintiff
must show goodwill, misrepresentation, and likelihood of
damage. In the present case, the Plaintiff has, prima facie, shown
long, continuous, and extensive use of the mark "KATARIA"
since 2004. The Plaintiff has also relied upon cogent material
showing substantial turnover and promotional expenditure,
which establishes the Plaintiff's goodwill. The rival marks and
names are identical and used for the same services, making
confusion inevitable and rendering the Defendant's
misrepresentation implicit. It cannot be lost sight of that in the
insurance industry, trust and reputation. Thus, any confusion
would potentially result in damage or, a strong likelihood of
damage.
C. The Defendant's plea that "Kataria" is a surname and
constitutes bona fide adoption is also wholly untenable. Section
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35 of the Trade Marks Act only applies to the person (private
party) using their own surname and does not apply to
incorporated entities that consciously choose their trade names.
The decisions in the case of Bajaj Electricals, Kirloskar,
Mahindra & Mahindra, and Dr. Reddy's Laboratories have all
consistently held that when a mark has acquired distinctiveness
and strong association with a specific trader or business group
through long, continuous and extensive use, the goodwill of
such mark will be protected against misuse. In the present case,
the Plaintiff's mark "KATARIA" has, through long, continuous,
and extensive use in the insurance sector, come to denote a
single and identifiable source. Thus, the Defendant's adoption
is therefore prima facie dishonest and not bona fide. Moreover,
as reaffirmed in Bal Pharma and Arochem Ratlam Pvt. Ltd., a
Defendant who adopts a mark without conducting even a basic
search does so at its own peril. In the present case, had the
Defendant undertaken a search in the trade mark registry the
same would have immediately revealed that the Plaintiff's
mark "KATARIA" was registered in Class 36 in the year 2010.
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The Defendant not having done so, the adoption of the
impugned trade mark "KATARIA INSURANCE." by the
Defendant is thus prima facie negligent.
D. The Defendant's plea of prior user is, in my view, wholly
untenable. In the facts of the present case, not only is the alleged
prior use by a separate and distinct legal entity namely KAPL,
which the Defendant alleges is a group company but also is in
respect of Kataria Automobiles Private Limited. Thus, the
Plaintiff's reliance upon the decisions in the case of T.G. Balaji
Chettiar, Lords Inn, London Rubber, Kores, Kamat Hotels
which all lay down that the use of the impugned trade mark
"KATARIA" in unrelated fields or by different entities cannot
constitute prior user for purposes of defeating infringement or
passing off is entirely apposite. Also, and crucially, the
Defendant itself having come into existence only in the year
2014, use of the impugned trade mark "KATARIA" by distinct
legal entities before that cannot inure to the benefit of the
Defendant.
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E. The Defendant's contention that KAPL is a necessary party is
also wholly misconceived. The registrations, which are in
KAPL's name and upon which the Defendant has placed
reliance, fall under Classes 35, 37, and 39 and pertain
exclusively to car dealerships, servicing, and transport services,
fields that are entirely unrelated to insurance. As held in the
case of Mahindra & Mahindra v. MNM Marketing, that the
registration in class relating to services will be irrelevant in the
dispute wherein the subject matter is registration in class
relating to goods, and vice and versa. . In the present case, the
Defendant uses the impugned trade mark for insurance
services squarely falling in Class 36 and not for any of the goods
and services covered under the Classes in which KAPL has
valid registrations. Moreover, as already noted above, KAPL is
a separate and distinct legal entity, and any trade mark rights
vested in KAPL do not, and cannot absent a valid assignment,
vest in the Defendant merely because the Defendant is part of
an alleged group of companies.
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F. The Defendant's plea of delay and acquiescence is wholly
untenable. As held in the case of Midas Hygiene, delay alone
can never defeat an action for infringement, especially when the
adoption of the mark is dishonest. In the present case, the
Plaintiff has consistently objected to the Defendant's use of
impugned trade mark "KATARIA.". Thus, the conduct of the
Plaintiff in the present case can, by no stretch of imagination
amount to acquiescence. The Plaintiff's reliance upon the
decisions in the case of Power Control Appliances, Hindustan
Pencils, ITC Ltd., Petrofer, and Wilmott v. Barber; are therefore
entirely apposite.
G. It is not in dispute that the Plaintiff is the registered proprietor
and prior adopter of the trade mark "KATARIA.". The Plaintiff
has established its goodwill and reputation by placing reliance
upon the Chartered Accountant's Certificate that reflects the
annual income of the Plaintiff as well as the annual promotional
expenses from the year 2004-05 to 2017-18. The Plaintiff has also
annexed the advertisement material showing use of the mark
"KATARIA". The Defendant though having filed an Affidavit
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in Reply has not appeared. Also crucially, the Defendant, in the
Affidavit in Reply has not taken any substantive plea relating
to hardship, if any that would be caused to the Defendant if an
injunction were to be granted. Furthermore, the Plaintiff and
the Defendant are using the respective marks for the same
services, i.e., insurance. This is plainly antithetical to the canon
principle of trademark law, which is one mark, one source as
recognised in the case of Power Control Appliances and the
Tilaknagar. Hence, given the similarity between the marks,
continued use by the Defendant will inevitably lead to
confusion, diversion of business, and dilution of goodwill and
thus cause irreparable harm to the Plaintiff as also the
consumer. Thus, the balance of convenience is entirely in favour
of the plaintiff.
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
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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.]
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