The main legal point established in the judgment is that the rights of a registered proprietor, who acquired registration for a mark planned for future utilisation, cannot be nullified by someone who deployed a similar mark after the registration date, but prior to the date of actual use of the registered proprietor.

JUDGMENT

Sanjeev Narula, J.

I.A. No. 8773/2020 (u/Order XXXIX Rules 1 & 2 r/w Section 151 of the Code of Civil Procedure, 1908)

1. Plaintiff No. 2 - Mr. Prithvi Raj Batra, the founder of Plaintiff No. 1 firm namely, Worknest Business Centre LLP, is the registered owner of device mark/ logo "[IMG]" in classes 35 and 36, which is associated with real estate advertising, marketing, financing, investment, consultancy and other related services [hereinafter, "Plaintiffs' registered mark"]. Plaintiffs seek an interim injunction against Defendants' use of the mark "WORKNESTS" and domain name "www.worknests.com", pending final adjudication of the suit.

FACTS SET OUT IN THE PLEADINGS

2. In 2018, Mr. Prithvi Raj Batra coined the term "WORKNEST" with an aim to offer co-working spaces to budding businesses, freelancers etc. at affordable prices. Presently, they are running their business in Noida, Uttar Pradesh, but intend to expand pan-India and develop multiple co-working spaces in the coming years. The device mark "[IMG]" was entered into the register on 15th December, 2018, with deemed date of registration as 16th June 2018 in the name of Plaintiff No. 2 in classes 35 and 36.^{1[Under application Nos. 3861870 and 3861871, respectively.]} These registrations are operative pan-India, without any imposition of disclaimer/ condition/ limitation thereon. On 11th October, 2020, Plaintiff No. 2 filed an application for registration of word mark "WORKNEST" in class 36, claiming use since 21st April, 2018, which is currently pending.^{2[Bearing application No. 4697051]}

3. Plaintiffs have expended over Rs. 5 crores in developing co-working spaces under the name "WORKNEST" and have acquired tremendous goodwill and reputation in the industry, owing to world-class facilities provided by them. In order to garner more customers, they created a website with domain name "www.worknest.co.in", which has been in use since 21st April, 2018. In September, 2020, Plaintiffs first learnt of Defendants' impugned website when their property consultant enquired about the rates of their Worknest Kolkata property. They subsequently conducted an online search and discovered that Defendants are lending co-working spaces under a nearly identical mark - "WORKNESTS".

4. Defendants, on the other hand, claim to be well-renowned and established providers of real estate rental services, rental offices for co- working, brokerage, leasing and management of commercial property, consultancy services in respect of property investment and real estate etc. They contended that on 08th January, 2018, Mr. Rajesh Goyal [Director of Defendant No. 1 - WN Space Solutions P. Ltd.] conceptualised and adopted the brand/ trademark "WORKNESTS" and the logo "[IMG]" for their business of providing co-working spaces in Kolkata. The mark "[IMG]" is registered in favour of one GFS Consultancy Private Limited and jointly used by Defendant No. 1 [WN Space Solutions Pvt. Ltd.] and Defendant No. 2 [M/s Worknests Projects], with the registered proprietor's consent.^{3[The mark is registered under application No. 4060039]}

PLAINTIFFS' OPENING CONTENTIONS

5. Mr. Sachin Gupta, counsel for Plaintiffs, argued that the impugned mark is phonetically, visually, structurally, and conceptually similar to Plaintiffs' registered mark. The conflicting marks are identical, used for identical services, and target the same set of customers; there is a strong likelihood of public confusion and thus, infringement is clearly made out.

The test is not to compare the marks side-by-side but to see the overall impression conveyed to a person with average intelligence and imperfect recollection. Defendants' impugned use is bound to cause confusion and mislead the public and thus, plainly infringes Plaintiffs' registered mark, which was adopted and registered prior to Defendants' mark. Once infringement is established, injunction must follow.^{4[He relied on Midas Hygiene v. Sudhir Bhatia, (2004) 3 SCC 90.]}

DEFENDANTS' CONTENTIONS

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