Dishonest adoption of identical abbreviated mark in same field, without bona fides explanation and false prior use claim, defeated by prior global/India rights via registrations, franchises, domains, media; domain use qualifies as trademark use.

JUDGMENT :

ARIF S. DOCTOR, J.

1. The captioned Commercial Miscellaneous Petitions impugn the validity of the following four registrations obtained by Respondent No. 1 viz.

The Petitioner has impugned the aforesaid registrations of the trade mark ‘C21’ (“the impugned registrations") and has sought rectification of the register of trade marks on the basis that the Petitioner has prior rights, both statutory and common law in ‘CENTURY 21’ and ‘C21’ word as well as device mark worldwide and also in India.

The Facts and Challenge in Brief:

2. The Petitioner is a multinational company engaged in the business of franchising its brand for use in connection with real estate.

3. The Petition sets out that the Petitioner operates more than 6,900 independently owned and operated franchised broker offices across 78 countries and territories worldwide, with independent sales associates in numerous jurisdictions, including India. The Petition also sets out that, by virtue of the Petitioner's extensive global presence and longstanding operations, the Petitioner has acquired significant goodwill and reputation in the real estate industry, such that the trade mark “CENTURY 21” has become closely associated with and is synonymous with the Petitioner.

4. The Petition also sets out that the Petitioner owns rights in the mark "C21" which is a well-known abbreviation of “CENTURY 21", and that the Petitioner has used the mark “C21” on a standalone basis as well as in conjunction with other terms such as C21 EDGE, C21 TAP IN, and C21 SOCIAL XCHANGE. The Petitioner is also currently using C21 COMMERCIAL, C21 FINE HOMES AND ESTATES, C21 UNIVERSITY, and

5. It is the Petitioner's case that Respondent No. 1, who operates in the same field of business as the Petitioner, has dishonestly adopted the impugned marks only to trade upon the Petitioner's immense reputation and goodwill. It is thus that the Petitioner has sought rectification of the register by filing the present Commercial Miscellaneous Petitions.

Submissions on behalf of the Petitioner:

6. Ms. Majumder, the Learned Counsel appearing on behalf of the Petitioner at the outset, in order to demonstrate the Petitioner’s common law and statutory rights in “CENTURY 21” & “C21” trade marks, globally, adverted to the following:

i. The Petitioner was incorporated in 1971 in California, USA, as ‘Century 21 Real Estate Corporation’, and after mergers and restructuring, the Petitioner was incorporated in Delaware in 1979 and thereafter was renamed ‘Century 21 Real Estate LLC’ on 28^th December 2004.

ii. As per the online Acronym Finder Site, “C21” was a known abbreviation of the “CENTURY 21” mark.

iii. The Petitioner has executed “CENTURY 21” sub-franchise agreements all over the world, including the first Asian sub- franchise agreement in Japan on 16^th June 1983, Hong Kong on 12^th August 1993, Indonesia on 24^th September 1996, Taiwan on 17^th February 1997, Singapore on 21^st August 1997 and China on 22^nd March 2000.

iv. The Petitioner has obtained registration of the “CENTURY 21” mark in at least 140 countries and territories around the world, including India, with the earliest registration in the United States of America (USA) dating back to 1977.

v. The Petitioner also owns the registration of the “C21” mark in the USA, Canada and EUIPO, with the earliest registration in the USA at least since 2005, with a first user claim since 1982.

vi. The