### Dishonest adoption of a mark identical to a prior well-known global brand precludes protection.

The Petitioner, a global real estate franchising multinational incorporated in 1971, sought the rectification and removal of four trademarks (Registration Nos. 1941724, 1959526, 1957532, and 1941725) for the mark ‘C21’ (device) registered by Respondent No. 1 in 2010.

The Petitioner claimed prior statutory and common law rights in "CENTURY 21" and "C21" worldwide since 1971 and in India since 1989.

Respondent No. 1, incorporated in 2006 under the name "Century 21 Town Planners Pvt. Ltd.", claimed use of the ‘C21’ device since 2007.

The Petitioner alleged that the Respondent’s adoption was dishonest, aimed at trading on the Petitioner's global reputation.

1. Whether Respondent No. 1 is the prior bona fide adopter and user of the mark ‘C21’ in India.

2. Whether the Petitioner possesses trans-border reputation and goodwill in the marks "CENTURY 21" and "C21" sufficient to invalidate the Respondent's registrations.

3. Whether the adoption of the impugned marks by Respondent No. 1 was dishonest and likely to cause confusion.

The court applied Section 2(2)(c) of the Trade Marks Act, 1999, which defines the "use of a mark" in relation to services as a reference to the availability or performance of such services.

It relied on the principle from N.R. Dongre v. Whirlpool Corporation and Milmet Oftho Industries v. Allergan Inc., establishing that a prior global user with trans-border reputation can succeed against a subsequent local adopter.

The court also applied Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd., confirming that domain names function as business identifiers and constitute "use" in trade mark law.

Additionally, it followed MAC Personal Care Pvt. Ltd. v. Laverana GMBH, holding that no amount of subsequent use can validate a dishonest adoption.

The court found Respondent No. 1’s claim of 2007 user status to be false, as its earliest documentary evidence was from 2010.

Conversely, the Petitioner proved "use" through Indian registrations dating back to 1989, Indian domain names registered in 2006, and franchise agreements from 2007.

The court determined that Respondent No. 1’s adoption was "by design and not coincidence," specifically noting that the Respondent not only took the ‘C21’ mark but also subsumed the Petitioner’s entire "CENTURY 21" name into its corporate identity.

Applying the 'trans-border reputation' doctrine, the court held that the Petitioner's five decades of global presence and active Indian web traffic created a "spill-over" of goodwill that the Respondent sought to exploit.

The court rejected the Respondent's technical challenges regarding the stamping of agreements, noting that in rectification (an in rem proceeding), the focus is on the purity of the register rather than private contractual validity.

The court ordered that Trade Mark Registration Nos. 1941724, 1941725, 1959526, and 1957532 be removed from the Register of Trade Marks.

The Petitions were allowed with no order as to costs.