Dishonest adoption of a well-known mark and its corporate name expansion warrants trade mark rectification.

The Petitioner, a global real estate franchising multinational incorporated in 1971, sought the rectification of the Register of Trade Marks by removing four registrations for the mark 'C21' (Device) in Classes 16, 35, 36, and 41 obtained by Respondent No. 1 in 2010.

The Petitioner asserted prior statutory and common law rights in 'CENTURY 21' and its abbreviation 'C21' worldwide and in India, including Indian registrations dating back to 1989.

Respondent No. 1, incorporated in 2006 under a name subsuming the Petitioner’s mark, claimed user of the impugned marks from 2007.

However, the Respondent’s evidence showed commercial use only from 2010.

1. Whether Respondent No. 1 is the prior adopter and user of the mark 'C21' in India as per Sections 33 and 34 of the Trade Marks Act.

2. Whether the Petitioner established trans-border reputation and prior use of the marks 'CENTURY 21' and 'C21' in India.

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, which defines "use" of a mark in relation to services as a reference to their availability or performance.

It relied on the principle of trans-border reputation from N.R. Dongre v. Whirlpool Corporation and Milmet Oftho Industries v. Allergan Inc., establishing that global reputation can protect a mark in India even without physical operations.

The court applied the rule from Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd. that domain names function as business identifiers.

It further followed MAC Personal Care Pvt. Ltd. v. Laverana GMBH, holding that no amount of subsequent use can validate a trademark adopted dishonestly.

The court found Respondent No. 1’s adoption of 'C21' and the incorporation of 'CENTURY 21' into its corporate name to be a "deliberate, calculated, and dishonest" attempt to clone the Petitioner, especially as both parties operate in the same real estate field.

The court rejected the Respondent’s claim of prior use, noting that while they claimed user from 2007, their documentary evidence only commenced in 2010.

Conversely, the Petitioner proved prior use and reputation in India through 1989 registrations, domain registrations from 2006 (century21.co.in), and franchise agreements from 2007.

The court determined that the abbreviation 'C21' was inextricably linked to 'CENTURY 21' and that the identical nature of services made consumer confusion inevitable.

Technical objections regarding the stamping of agreements were dismissed as irrelevant to rectification proceedings involving rights in rem.

The court answered the issues in favor of the Petitioner, confirming that global goodwill had effectively spilled over into India before the Respondent’s adoption.

Final Order: The Petitions were allowed, and the Trade Marks Registry was directed to remove Registration Nos. 1941724, 1941725, 1959526, and 1957532 from the Register.