HIGHLIGHTS OF THE MONTH
The Delhi High Court cancels the registration of the mark 'ZEPTO' for non-use, granting relief to Kiranakart Technologies Private Limited
[Kiranakart Technologies (P) Ltd. vs. Mohd. Arshad, C.O. (COMM.IPD-TM) 62 of 2024]
The Delhi High Court granted relief to Kiranakart Technologies Private Limited (Petitioner), which has been operating under the trademark/ brand 'ZEPTO', by cancelling an identical mark registered by an individual back in 2014 with the claim of use since 2011 but was found to be not in use.
The Court noted that the Respondent did not file a response to the Petitioner's petition, which was interpreted as an implicit admission that the 'ZEPTO' mark was wrongfully maintained on the Trade Marks Register. The Court observed that the Respondent appeared to have registered the mark without any intent or action showing actual use, while the Petitioner had been actively using the 'ZEPTO' mark since 2021.
The High Court also observed that the Petitioner continued to be aggrieved by the wrongful existence of the identical mark since the Respondent had opposed the Petitioner's trademark application in Class 35 but again, there was no use found to substantiate the Respondent's opposition.
Accordingly, by exercising its powers under Section 47(1)(b) of the Trade Marks Act, 1999, the High Court allowed the present petition and directed removal of the Respondent's identical mark from the Trade Marks Register.
"DIAMOND" vs. "GREEN DIAMOND" – the Delhi High Court settles the dispute
[Diamond Modular Pvt. Ltd. v. Yash Arora trading as Siddhi Vinayak Traders and Anr. (Neut. Cit. No. - 2025:DHC:37)]
Recently, the Delhi High Court dealt with a trademark dispute concerning the infringement of the "DIAMOND" trademark. The Plaintiff, Diamond Modular Pvt. Ltd., a manufacturer of electrical goods, particularly modular switchgear, has used the "DIAMOND" mark since 1975. The Plaintiff claimed significant goodwill in the electrical goods industry.
The Defendant, Yash Arora, a former distributor for the Plaintiff, registered and began using the "GREEN DIAMOND" mark for his own products. . The Plaintiff argued that the mark was deceptively similar, causing potential consumer confusion. The Plaintiff further argued that the Defendant had adopted the "GREEN DIAMOND" mark in bad faith, attempting to exploit the Plaintiff's established reputation for financial gain.
The Hon'ble High Court noted that the Plaintiff had used the "DIAMOND" mark for over four decades, building significant goodwill. It found that the "GREEN DIAMOND" mark could confuse consumers into associating the Defendant's products with the Plaintiff's. The court highlighted that the Defendant, aware of the Plaintiff's business as a distributor, adopted the mark in bad faith to exploit the Plaintiff's goodwill. The court issued an injunction, restraining the Defendant from using the mark, ordered the cancellation of the "GREEN DIAMOND" trademark, and awarded costs to the Plaintiff.
The Delhi High Court examines the question of similarity of trademarks on the basis of visual and phonetic similarities
[Jangeer Singh Trading as Jangeer Singh Kabulshah Agriculture Works vs. Yogesh Jangid Trading as Jangid Agro Engineering & Anr. (Neut. Cit. No.: - 2025:DHC:1587)]
Recently, the Delhi High Court addressed a trademark dispute between two entities engaged in manufacturing and trading agricultural implements. The Plaintiff, operating under the name 'Jangeer Singh Kabulshah Agriculture Works,' has been using the trademark 'JANGEER' since 1984 and holds a registered device mark since 2013. The Defendant, 'Jangid Agro Engineering,' uses the marks 'JANGID' and 'JANGIR' in their business.
The Plaintiff sought a permanent injunction, alleging that the Defendant's use of the marks 'JANGID' and 'JANGIR' infringed upon their 'JANGEER' trademark and amounted to passing off. The Plaintiff argued that the similarities between the marks could lead to consumer confusion.
The Delhi High Court examined the visual and phonetic aspects of the marks in question. It observed that the Plaintiff's mark 'JANGEER' and the Defendant's mark 'JANGID' differ significantly in spelling, with the Plaintiff's mark using 'EE' and the Defendant's mark replacing 'EE' with 'I' and ending with 'D' instead of 'R'. Additionally, the style and manner of writing the marks were found to be distinct. These differences, both in spelling and presentation, led the court to conclude that there was no deceptive similarity between the two marks.
Furthermore, both parties held registered trademarks and had been using their respective marks for several decades. The court noted that the Defendant's use of the mark 'JANGID' was bona fide, reflecting a surname adopted by the Defendant's family in 1980. Given these circumstances, the court ruled that the Plaintiff's claim of infringement was not substantiated.
However, as an interim measure, the court directed that during the pendency of the suit, the Defendant should not use the marks 'JANGIR' or 'JANGEER' on a standalone basis.
The Delhi High Court awards IHCL's 'Taj' brand the status of a 'wellknown' trademark
[The Indian Hotels Company Limited v. Gaurav Roy Bhatt & Anr., (CS(COMM) 717/2023)]
The Delhi High Court recently ruled that "Taj" is a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999, for the hotel and hospitality industry. The decision followed a lawsuit by IHCL, part of the Tata Group, against individuals for trademark infringement, copyright violations, and passing off.
The Court acknowledged that IHCL's "Taj" brand had been widely used for years, gaining significant public recognition, goodwill, and revenue both in India and globally. IHCL met the criteria for a well-known trademark under Sections 11(6) and 11(7) of the Trade Marks Act, which include factors like the duration of use, advertising efforts, and distinctiveness.
This ruling strengthens IHCL's legal position, building on its previous successes in protecting trademarks like "VIVANTA."
The Delhi High Court grants permanent injunction against defendants for infringing Volvo's 'PENTA' trademark
[Aktiebolaget Volvo & Ors. v. R. Venkatachalam and Anr., (CS (COMM) 346/2018 & I.A. 3177/2007)]
The plaintiffs, Aktiebolaget Volvo (AB Volvo) and its subsidiaries, are part of the well-known Swedish VOLVO Group. They are the registered proprietors of the trademarks "PENTA" and "VOLVO PENTA," with "PENTA" first adopted in 1913 and "VOLVO PENTA" used since 1965. The plaintiffs manufacture and supply marine and industrial engines globally, including in India, and their "VOLVO" trademark is well-known in India.
The defendants, who had been using "PENTA" as part of their business name since 2001, applied to register the "PENTA" trademark in 2006 for machine tools. Despite receiving a cease-and-desist notice from AB Volvo, they continued using the mark, prompting the lawsuit filed in March 2007 for infringement and passing off.
While the defendants admitted knowledge of the mark's registration, however they challenged its validity. The Court rejected their claim, emphasizing that a trademark's validity can only be challenged through rectification proceedings before the Intellectual Property Appellate Board (Now Intellectual Property Division), not in a suit. The defendants had not initiated such proceedings, so they could not dispute the validity.
The Court found that the defendants' use of "PENTA" caused confusion and infringed on the plaintiffs' trademarks under Sections 29(1), (2), (3), and (5) of the Act. These sections address confusion, misrepresentation, and the likelihood of confusion caused by the use of a similar mark. As a result, the Court granted a permanent injunction against the defendants and awarded the plaintiffs actual costs under the Commercial Courts Act, 2015.
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