The central legal point established in the judgment is the application and interpretation of various provisions of the Trademarks Act, 1999 in determining the similarity of trademarks, dishonest adoption, proprietorship, prior user rights, and the potential for confusion in the market.

JUDGMENT :

Amit Bansal, J.

1. The present rectification petition has been filed on behalf of the petitioner seeking cancellation/removal of the trademark bearing registration number 3187803 and registered in the name of respondent no.1 in respect of real estate services in Class 36 under Sections 57 and 125 of the Trademarks Act, 1999 (hereinafter ‘Act’).

Case set up by the petitioner

2. The case set up by the petitioner in the petition is as follows:

2.1 The petitioner, Alpha Corp Development Private Limited, is engaged in the business of real estate development including development of malls, hotels, townships, multiplexes and complexes and provides facility management services such as maintenance, building automation, security services among others, since 2003.

2.2 The petitioner is the registered proprietor of the mark ALPHA through its predecessor-in-interest, M/s Grandeur Estates Private Limited, bearing registration no. 1483826 and 1483827 in Classes 36 and 37 of the Act. Several other registrations have also been obtained by the petitioner in respect of the mark ALPHA and its formative marks. The earliest registration was granted on 1st September, 2006.

2.3 The petitioner has successfully delivered several real estate projects under the mark ALPHA, such as Alpha International City, Karnal (Haryana), Alpha International City, Fatehabad (Haryana), GurgaonOne-84 among others.

2.4 The petitioner has also won several real estate awards and accolades over the years. Due to long and extensive use of the mark ALPHA, the petitioner has acquired vast goodwill and reputation. The annual sales of the petitioner in the year 2018 amounted to Rs. 988,145,000/- and the petitioner has also incurred expenditure of Rs.6,241,000/- towards advertisement and promotions in the said year.

2.5 The respondent no.1 has obtained registration of the mark (hereinafter ‘impugned mark’) in respect of similar services as that of the petitioner, in the name of the respondent no.1 under application no. 3187803 in Class 36 of the Act. The letter 'A' and the word ALPHA in the impugned mark are written in black colour, which shows the intention of the respondent no. 1 to give prominence to the mark ALPHA in the impugned mark. The colour scheme adopted by the respondent no.1 for the impugned mark is also similar to that of the petitioner’s ALPHA marks.

2.6 The malafides of the respondent no.1 is evident from the fact that the respondent no.1 company was incorporated by the ex-employees of the petitioner and its subsidiary company, Alpha G: Corp Management Services Pvt. Ltd., on 23rd July, 2015, which is prior to the date of resignation of the said employees. The said employees had complete access to the records and data of the petitioner and its subsidiary company.

2.7 Public caution notices were published by the petitioner's subsidiary company in various newspapers when it came to know that its ex-employees had incorporated a new company with confusingly similar name for providing identical services of facility management. Thereafter, the respondent no.1 filed a defamation complaint before Tis Hazari Courts, New Delhi. Against the summoning order dated 14th May, 2016 passed in the aforementioned defamation complaint, the petitioner filed a CRL.M.C. No.297/2017 before this Court, which is pending adjudication.

2.8 The petitioner filed an application being SRN G43969063 dated 6th February, 2017 before Ministry of Corporate Affairs (MCA) under Section 16 of the Companies Act, 2013 seeking a direction to the respondent no. 1 to rectify its deceptively similar/identical trade name. The Regional Director, MCA held that the trade name of the respondent no.1 closely resembles the name of the subsidiary company of the petitioner and directed them to change the name of their company vide order dated 1st August, 2017.

2.9 The impugned mark was published in the Trade Mark Journal on 18th September, 2017. However, the respondent no. 1 concealed the factum of passing of the aforemen