Facts
The Petitioner, a global real estate franchising multinational incorporated in 1971, sought rectification of the Register of Trade Marks to remove four registrations for the mark ‘C21’ (Device) in Classes 16, 35, 36, and 41 obtained by Respondent No. 1 in 2010.
Source reference: p. 2, para. 1The Petitioner claimed prior statutory and common law rights in "CENTURY 21" and its abbreviation "C21" worldwide since 1971 and in India since 1989.
Source reference: p. 7-8, para. 6-7Respondent No. 1, incorporated in 2006 under a name subsuming the Petitioner’s mark, claimed user from 2007; however, its earliest documentary evidence of use dated only to 2010.
Source reference: p. 19, 33, para. 21, 43(C)The Petitioner alleged Respondent No. 1's adoption was dishonest and aimed at trading on the Petitioner's global reputation.
Source reference: p. 11, para. 9Issues
Whether Respondent No. 1 is the prior bona fide adopter and user of the impugned marks in India under Sections 33 and 34 of the Trade Marks Act.
Source reference: p. 19, para. 22Whether the Petitioner has established prior use, trans-border reputation, and goodwill in the marks "CENTURY 21" and "C21" in India.
Source reference: p. 14, 21, para. 15, 25Whether the impugned registrations are liable to be removed from the Register due to dishonest adoption and likelihood of confusion.
Source reference: p. 11, 32, para. 9, 43(B)Law Applied
The court applied Section 2(2)(c) of the Trade Marks Act, 1999, which defines "use" of a mark in relation to services as a reference to their availability or provision in India.
Source reference: p. 14, 42It relied on the principle that "well-known" marks with trans-border reputation are protected in India even without a physical office, as established in N.R. Dongre v. Whirlpool Corp. and Milmet Oftho Industries v. Allergan Inc.
Source reference: p. 15, 36The court followed Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd. regarding domain names as business identifiers.
Source reference: p. 27, 39The court followed the doctrine from Power Control Appliances v. Sumeet Machines that subsequent use cannot Fetch legitimacy for a dishonest adoption.
Source reference: p. 13, 37Reasoning
The Court found Respondent No. 1's adoption of "C21" and the incorporation of "Century 21" into its corporate name to be a deliberate attempt to "clone" the Petitioner.
Source reference: p. 33, para. 43(B)While Respondent No. 1 claimed user since 2007, its evidence (invoices and ads) only began in 2010, rendering the claim false.
Source reference: p. 33, para. 43(C)Conversely, the Petitioner proved Indian registrations dating back to 1989 and the registration of the ".co.in" domain in 2006, along with franchise agreements from 2007.
Source reference: p. 35-36, para. 43(E)The Court rejected the Respondent's technical objections regarding the stamping of franchise agreements, noting these were rectification proceedings involving rights in rem.
Source reference: p. 40, para. 43(K)Applying the law on trans-border reputation, the Court held that the Petitioner’s extensive global presence and Indian market engagement via digital media and franchising constituted sufficient "use" to establish priority over a dishonest subsequent adopter.
Source reference: p. 41-42, para. 43(L-M)Holding
The Court allowed the Petitions, holding that the Petitioner established prior statutory and common law rights and that Respondent No. 1's adoption was dishonest.
The Court ordered the removal of Trade Mark Registration Nos. 1941724, 1941725, 1959526, and 1957532 from the Register of Trade Marks.
Source reference: p. 43, Order clause iiNo order was made as to costs.
Source reference: no citationOriginal Court PDF
Century 21 Real Estates LLC v. Century 21 Town Planners Pvt. Ltd. & Anr. [Commercial Miscellaneous Petition No. 36 of 2022 and connected matters; 2026:BHC-OS:6096]
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