The Delhi High Court last week allowed a rectification petition filed by Kiranakart Technologies, a company that provides quick commerce service under the ‘Zepto’ mark. While allowing the petition, Justice Amit Bansal noted that the respondent had failed to use the mark for nearly 8 years.
The petitioner sought the cancellation/removal of the trade mark ‘Zepto’ in the name of one Mohammad Arshad (Respondent No.1), from the Register of Trade Marks. The impugned mark has been registered in respondents’ name since 2014 in Class 35.
Facts Of The Case
The petitioner company has obtained trade mark registrations for the ZEPTO marks in classes 29, 30, 31, 32, 34, 39 and 43. Moreover, the petitioner is recognized as a renowned Company in India and has acquired immense goodwill and reputation under the ZEPTO marks.
On the other hand, the respondent no.1 has registered the mark ZEPTO in classes 9 and 35. The impugned mark has been registered in the name of the respondent no.1, with effect from July 14, 2014 with a user claim since April 1, 2011, in Class 35.
Submissions
The petitioner’s counsel submitted that as per their client’s knowledge and findings of a third-party independent investigator supported by an affidavit, the impugned mark is neither in use at present nor was ever put to commercial use in relation to the services in class 35 for which the impugned mark has been registered. The Respondent no.1’s user claim of April 1, 2011 in the impugned registration is therefore false and misleading.
It was further argued that respondent no.1 has no bona fide intention to use the impugned mark in relation to the services claimed in the impugned registration. Nearly 8 years have passed since the date when the impugned mark was entered on the Register of Trade Marks, however, the respondent no.1 has failed to use the impugned mark in relation to the aforesaid services in class 35 till date. Therefore, the impugned mark is merely a block on the Register of Trade Marks, the petitioner’s counsel.
Court was also informed that, in July 2024, respondent no.1 reached out to the petitioner indicating his willingness to settle the matter. Between July 23, 2024 and September 12, 2024, the parties were negotiating amongst themselves, however, the respondent no.1 was merely attempting to extort money under the garb of amicable resolution. Accordingly, the settlement did not mature.
Court’s Findings
After hearing the submissions and examining the facts, Court observed-
“Respondent no.1 has not filed his reply to the present petition, which indicates that he has nothing substantial to put forth on merits by way of a response to the averments made in the petition. It is trite law that in the absence of any denial of the averments made in the petition, the same have to be taken as admitted. In view of the above, the averments made in the petition are deemed to be admitted.”
Justice Bansal then referred to the case of DORCO Co. Ltd. v. Durga Enterprises and Another, 2023 SCC OnLine Del 1484, wherein he had ordered for removal of the impugned mark therein on the ground of non-use.
Furthermore, a perusal of Section 47(1)(b) of the Act would reveal that a registered Trade mark is liable to be taken off the Register of Trade Marks if up to a date three months prior to the date of filing of the rectification petition, the same is not used in relation to those goods/services in respect of which it is registered for a continuous period of at least five years from the date on which the mark is entered in the Register of Trade Marks.
Finally, after due consideration, the Court was of the view that the petitioner is aggrieved by the continued subsistence of the impugned mark on the Register of Trade Marks. Thus, the Court directed the impugned mark to be removed from the Register of Trade Marks under the provisions of Section 47(1)(b) of the Act.
Author: Nitish Kashyap