Trademark Registration is a must
for any entity seeking to carry on business. A non-registered mark
is protected by common law but the level of protection accorded to
such a mark is less than that for a registered mark. A registered
trademark protects the proprietor against third parties seeking to
ride on the coat tails of its mark. A trademark is infringed not
just by use of an identical or deceptively similar mark for goods
and services but also when the mark is used as a part of its trade
name by another entity.
In Zensar Technologies Ltd. v
Zensar Suppliers Pvt. Ltd. the Appellant (Zensar Technologies)
is the owner of the well-known mark ‘Zensar’ which has
been registered in classes 1-42, except classes 39 and 40. It was
argued by RKD's lawyer, representing the Appellant, that the
Respondent had used the well-known mark ‘Zensar’ as a
part of its corporate name and such use was likely to mislead the
consumers into believing that there was a nexus between the
Appellant and the Respondent. The Respondent argued that its goods
and services were different from those of the Appellant and that it
was not using the mark ‘Zensar’ for its goods
therefore; the appeal ought to be dismissed. The Pune District
Court, did not grant an interim injunction in favor of the
Appellant and therefore, an appeal was filed before the Bombay High
The High Court agreed with the
contentions of RKD's lawyer, that the mark ‘Zensar’
was a coined word and no definition of the word could be found in
the dictionary. Also, the Respondent could not explain the meaning
of the word ‘Zensar’ and therefore, no rationale for
using the said mark could be proved by the Respondent. The Court
held that, prima facie RKD's lawyer had succesfully
made out a case of infringement by showing its registrations and
use of the mark ‘Zensar’ hence, the balance of
convenience tilted in the favor of the Appellant. The Court granted
the relief of interim injunction to the Appellant.
This case clearly demonstrates that
corporate entities should be careful while adopting and registering
their names with the Ministry of Corporate Affairs. An omission to
conduct due diligence at the initial stages can result in severe
consequences at a later stage. Also, Corporates that have adopted
an arbitrary or coined word as a part of their trade name should
immediately register it as a trademark without any further ado.
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.
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This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
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