Delhi High Court rules in Kiranakart's favour in Zepto trademark dispute

The Delhi High Court recently ordered the removal of the trademark 'ZEPTO', registered in favour of a person called Mohammad Arshad, from the Register of Trade Marks..The order favours Kiranakart Technologies Private Limited, which runs the quick commerce app Zepto.Justice Amit Bansal held, "The petitioner has continuously and extensively been using the ZEPTO marks since July 2021 in India and, by virtue of their widespread advertisement and promotion, has acquired immense goodwill and reputation thereunder. On the other hand, the respondent no.1 has not made any use the impugned mark in relation to the aforesaid services in class 35. Despite the aforesaid, the respondent no.1 opposed the petitioner’s application for the mark ZEPTO in class 35. Considering the aforesaid, I am of the view that the petitioner is aggrieved by the continued subsistence of the impugned mark on the Register of Trade Marks.".Kiranakart Technologies, operating under the 'ZEPTO' brand, provides instant consumer goods delivery services across India..The dispute arose when Mohammad Arshad, the respondent, registered the 'ZEPTO' trademark in classes 9 and 35 in 2014, claiming use since 2011. Arshad’s registration covered services related to advertising, wholesale and retail outlets, and mobile phone accessories, among others. He later opposed Kiranakart’s application for the 'ZEPTO' trademark in class 35, prompting the startup to file a rectification petition seeking the cancellation of Arshad’s trademark..Kiranakart argued that the 'ZEPTO' mark is exclusively associated with its business due to extensive use, promotion and advertising. The company claimed that Arshad had never commercially used the trademark for the services listed in his registration, making it a mere "block" on the Register of Trade Marks. The petitioner also alleged that Arshad’s opposition to their trademark application was vexatious and aimed at delaying their registration..The Court noted that Arshad failed to file a reply to the petition or appear during the hearings, leading to the admission of Kiranakart’s averments. It emphasised that a trademark can be removed for non-use if it has not been utilised for a continuous period of five years. Justice Bansal observed that Kiranakart had provided substantial evidence of its widespread use and promotion of the 'ZEPTO' mark, while Arshad had failed to demonstrate any genuine use of the trademark since its registration in 2014..The Court concluded that the continued existence of Arshad’s trademark on the register was unjustified and posed an unnecessary hindrance to Kiranakart’s business."The petitioner, in the present case, has filed an affidavit of the authorised representative of an independent investigating agency to support its averments with regard to non-use of the impugned mark by the respondent no.1 for the aforesaid services in class 35 for nearly 8 years up to the date of filing of the present petition.".Kiranakart was represented by Advocates Shruti Baid, Aman Sagar and Anmol Kasana from Saikrishna & Associates..The Registrar of Trade Marks was represented by Advocates Radhika Bishwajit Dubey, Gurleen Kaur Waraich and Kritarth Upadhyay..[Read Judgment].Follow Bar and Bench channel on WhatsAppDownload the Bar and Bench Mobile app for instant access to the latest legal news.