‘ZEPTO’ trademark was registered in the name of Mohd. Ashraf since 2014 under TM No. 2773518 in Classes 9 and TM No. 2773519 in Class 35 with a user claim dating back to 01.04.2011. Is such a user claim sufficient to sustain the mark on record? The Hon’ble Delhi High Court decided otherwise in a case filed by Kiranakart Technologies (P) Ltd, the owner of the Zepto App against Mr. Mohd. Ashraf.

As a prior registrant Mohd. Ashraf had opposed Zepto’s Trademark Application No. 5079706 in Class 35. This led to Kiranakart Technologies (P) Ltd filing a rectification petition against Mohd. Ashraf’s registered mark in Class 35 seeking cancellation of the same on ground of non-use.

In the said case of Kiranakart Technologies v. Mohd Ashraf[1], the Petitioner successfully demonstrated extensive use and promotion of its mark ZEPTO since 2021. Petitioner showed that within 5 months of commencement of its business operations, the Petitioner’s valuation of its business under ZEPTO mark reached USD 570 million. The Petitioner also showed that it has widely advertised and promoted its trademark and in 2021-2022 and 2023-2024 spent over Rs. 187 crores for the aforesaid. The Petitioner also proved that the Defendant had failed to use its mark for over 8 years. According to Section 47(1)(b) of the Trade Marks Act, 1999, a trademark shall be removed from the Register if it is not used for a continuous period of at least 5 years. While Mohd. Arshad initially appeared before the Court after issuance of notice on 25th September 2024, he failed to appear later and also did not submit any evidence to prove use of the trademark by him. While placing reliance on precedents such as Russel Vorp Australia Pty Ltd. v. Shri Ashok Mahajan[2], the Hon’ble High Court observed that unless the non-use is explained by way of special circumstances, the mark would be liable to be removed for non-use. Accordingly, it was ordered that the Trade Marks Registry remove the Defendant’s mark bearing No. 2773519 from the Register of Trademarks.

This case serves as a caution against ‘defensive trademark registrations without bonafide intention to use the mark. The judgement also underscores the importance of  maintaining the purity of the Trade Marks Register by removing marks that have not been in use for a prolonged period. In many jurisdictions like the USA, active use in commerce is required to maintain trademark rights. While Indian law currently allows for renewal of registrations without proof of use, adopting a system that emphasizes active use will ensure that trademarks are linked to economic activity rather than being registered without purpose.

[1] C.O. (COMM. IPD-TM) 62/2024

[2] 2023 SCC OnLine Del 4796

By Aamna Khan

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