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 and word) obtained by Respondent No. 1 in Classes 16, 35, 36, and 41
Source reference: p. 2, para 1The Petitioner claimed prior statutory and common law rights in ‘CENTURY 21’ and ‘C21’ worldwide (since 1971) and in India (registration since 1989)
Source reference: p. 4, 7-8Respondent No. 1, incorporated in 2006, adopted the Petitioner’s mark into its corporate name and registered the impugned ‘C21’ marks with a user claim of 2007
Source reference: p. 11-12However, the Respondent's evidence of actual use only surfaced from 2010
Source reference: p. 33The Petitioner alleged dishonest adoption and likelihood of confusion
Source reference: p. 12Issues
1. Whether Respondent No. 1 is the prior adopter and user of the mark ‘C21’ in India under Sections 33 and 34 of the Trade Marks Act
Source reference: p. 19, para 222. Whether the adoption of the impugned marks by Respondent No. 1 was dishonest and intended to trade upon the Petitioner’s global and Indian reputation
Source reference: p. 32, para 43-B3. Whether the Petitioner has established "use" and trans-border reputation in India sufficient to maintain a rectification action
Source reference: p. 14, para 15; p. 35, para 43-ELaw Applied
The court applied Section 2(2)(c) of the Trade Marks Act, 1999, defining "use" in relation to services as including references to their availability or provision in India
Source reference: p. 14, 42It relied on *Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd.*, establishing that domain names function as business identifiers
Source reference: p. 27, 39The "trans-border reputation" doctrine from *N.R. Dongre v. Whirlpool Corporation* and *Milmet Oftho Industries v. Allergan Inc.* was invoked to protect marks with global goodwill that spills into India
Source reference: p. 15, 36Furthermore, the court applied the principle from *MAC Personal Care Pvt. Ltd. v. Laverana GMBH* that subsequent use cannot't validate a dishonest adoption
Source reference: p. 13, 37Reasoning
The Court found Respondent No. 1’s adoption of the marks dishonest because it not only used ‘C21’ but subsumed the Petitioner’s entire ‘CENTURY 21’ mark into its corporate name while operating in the same field
Source reference: p. 32-33While Respondent claimed use since 2007, its own documents (invoices and ads) only dated back to 2010, whereas the Petitioner proved Indian registrations from 1989 and India-specific domain registrations from 2006
Source reference: p. 33, 35-36The Court rejected the Respondent’s argument that global fame lacks territoriality in India, noting the Petitioner’s specific Indian franchise agreements (2007, 2012) and media coverage
Source reference: p. 35-36The Court held that "use" is not limited to physical sales but includes domain presence and service availability
Source reference: p. 39, 42Consequently, because the marks were identical and the services overlapping, a high likelihood of confusion existed
Source reference: p. 38Holding
The Court allowed the Commercial Miscellaneous Petitions, holding that Respondent No. 1’s adoption was dishonest and that the Petitioner held superior prior rights
The Court answered the issues by confirming the Petitioner’s trans-border reputation and prior statutory rights in India
Source reference: p. 35-36It ordered the removal of Trade Mark Registration Nos. 1941724, 1941725, 1959526, and 1957532 from the Register of Trade Marks
Source reference: p. 43, para 44No order as to costs was made
Source reference: p. 43Original Court PDF
Century 21 Real Estates LLC v. Century 21 Town Planners Pvt. Ltd. & Anr. [2026:BHC-OS:6096]
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