Kiranakart wins trademark case
The Delhi High Court has directed an entity holding the “Zepto” trademark for advertising and marketing of electronic products to remove the same, providing relief to Kiranakart Technologies Private Ltd, parent company of quick commerce platform Zepto, in the trademark dispute, according to a report in Medianama.com.
The quick commerce company first acquired trademark registrations for “Zepto” in 2021 under Classes 29 and 39 concerning food items and delivery services, respectively. Later, Kiranakart sought to expand its trademark protection to Class 35 comprising advertisement, promotional, and marketing activities. However, the entity which owned the trademark for marketing, opposed this proposition citing the prior registration of the “Zepto” trademark filed in 2014 under Class 35 for the advertisement of mobile phones, microphones, speakers etc. Responding to this objection, Kiranakart filed a rectification petition under Sections 47 and 57 (rectification of the register) of the Trade Marks Act, 1999 seeking the cancellation of the pre-existing trademark.
Kiranakart argued that the defendant’s opposition to their trademark application sought to “unjustly delay the registration and harass the petitioner [Kiranakart]”. Additionally, while both parties attempted a settlement, the same failed to materialise owing to the defendant’s intent to extort money in disguise of an amicable resolution. Finally, they also furnished proof of non-use of the registered trademark, claiming that the entity had no bona fide intention to use it for the services listed under Section 35.
Justice Amit Bansal first noted that Arshad’s failure to reply to the petition indicates the lack of substantial arguments based on merit on the latter’s part. Moving forward, the court stated that despite objecting to Kiranakart’s application for trademark registry, Arshad had not used the impugned mark for commercial purposes under Section 35. On the contrary, Kiranakart has used the mark extensively since 2021, acquiring “immense goodwill and reputation” through advertisement and promotion activities.
Concerning the establishment of non-use of trademarks, the court recalled previous judgments. Firstly, as established in the case of Dorco Co. Ltd. vs Durga Enterprises and Another, 2023, a petitioner’s allegation of non-use by the respondent must be admitted when the latter fails to specifically deny such allegations. Secondly, Kiranakart corroborated its argument of non-use under Section 35 (by Arshad) with an affidavit of an independent investigative agency detailing such non-use for nearly eight years up to the date of filing the petition. A similar observation admitting the investigator’s affidavit was made during the case of Russell Corp Australia Pty Ltd. vs Shri Ashok Mahajan 2023. Justice Bansal ordered the removal of the trademark under Section 47(1)(b) of the Trademark Act. The provision allows for cancellation if a trademark remains unused for five consecutive years and three months before a rectification petition is filed.