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 Court.
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.
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