The practice of trade marks getting the status of a 'well-known mark' has gained momentum with several renowned companies competing for the coveted status. Earlier, a mark could be declared well-known only by a competent Court or by the Registrar of Trade Marks; this would often result in proprietors of trademarks initiating civil suits/oppositions/rectification against an unauthorized party with the intention of restraining them from using the trade mark and also to be declared as a well-known mark. The new means to obtain the well-known mark status is to apply under the new Trade Mark Rules, 2017 which permit the proprietor of a trade mark too file an application for such declaration by the Registrar of Trade Marks.
Recently, Zensar Technologies a popular IT Company based in Pune filed separate suits against three entities namely, 'Zensar Media Pvt. Ltd', 'Zensar Suppliers Pvt Ltd.' and 'Zensar Mercantile' (also referred to as Defendants) for making unauthorised use of its registered trade mark 'Zensar'. It was the case of Zensar Technologies, that such unauthorised use of the trade mark 'ZENSAR' by the abovementioned three entities amounted to infringement; such use was capable of causing confusion in the minds of the purchasing public as to the origin of the goods/services provided by these entities. It was also the case of Zensar Technologies that since the mark 'ZENSAR' used by the entities respectively was identical to its registered trade mark, it was also capable of diluting the good will and reputation associated with it. Zensar Technologies through its counsel submitted that they had served copy of suit summons to the Defendants yet they did not appear before the Hon'ble District Judge.
The matter was heard by the Hon'ble Judge of Pune District Court and upon perusing the evidence produced and arguments of the counsel of Zensar Technologies, he passed a favourable order in all the three cases; thereby permanently injuncting the Defendants or its associates, distributors from using the trade mark 'ZENSAR'. He also declared the trade mark 'ZENSAR' as well known. In this case Zensar Technologies was represented by R.K. Dewan & Co. Indian IT Companies such as Zensar are globally renowned and therefore it is imperative for such companies to be vigilant against any infringement or violation of their IP rights. It is well understood that as a company earns popularity, the number of imitators will also increase and therefore, to prevent any confusion among the members of public and trade regular market checks should be done.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.