TEJAS KARIA, J. (ORAL)

FACTUAL BACKGROUND:

1. The present Rectification Petitions are filed under Sections 47 and 57 of the Trade Marks Act, 1999 (“Act”) seeking rectification of the Register of Trade Marks (“Register”) by cancellation / removal of the Marks ‘Elante Residencies’ , ‘Elante Group’ and ‘Elante Residencies’ / ‘ ’ (“Impugned Marks”) registered in Class 37 bearing Registrations Nos. 4288558, 4394146 and 4558370 respectively.

SUBMISSIONS ON BEHALF OF THE PETITIONER:

2. The learned Counsel for the Plaintiff made the following submissions:

2.1. The Petitioner is, inter alia, engaged in the business of real estate affairs, management and operations, shopping malls, office complexes bearing the Mark ‘ELANTE’ / ‘ ’ (“Petitioner’s Mark”). The Petitioner has developed a commercial complex which has a multi-purpose use, housing a shopping mall named ‘ELANTE’, an office building named ‘ELANTE OFFICE SUITES’ and a hotel on the same plot. The entire commercial complex of the Petitioner is operational under the Mark ‘ELANTE’. The Petitioner has also allowed its group companies to use the Petitioner’s ‘ELANTE’ Formative Marks along with their respective Trade Names such as ‘NEXUS ELANTE’. The

Petitioner’s Mark has become distinctive of the Petitioner’s services and is exclusively associated by the relevant trade and public with the Petitioner.

2.2. The Petitioner is the registered proprietor of the Petitioner’s Mark bearing No. 2000006 dated 28.07.2010 in Class 35 for services being advertising, business management, business administration, office functions as well as in Class 36 bearing No. 2000008 for the services being Insurance, financial affairs, monetary affairs, real estate affairs, both filed on a proposed to be used basis.

2.3. The Petitioner adopted the Petitioner’s Mark in the year 2010 and has been using the same continuously and uninterruptedly since the year 2011 till date. By virtue of quality, sales, promotion of the Petitioner’s Mark, and long, continuous, and uninterrupted use since the year 2011, the Petitioner has acquired the goodwill and reputation as well as the common law rights arising thereto.

2.4. In and around August 2024, the Petitioner came across the Impugned Marks being used by one Elante Residences Ltd. (“ERL”) where Respondent No. 1 is one of the Directors, for services being real estate development services as that of the Petitioner. The Impugned Marks are identical to the Petitioner’s Mark wherein the prominent and essential feature is ‘ELANTE’. Upon a preliminary desktop investigation, the Petitioner also came across the use of the Impugned Marks on social media accounts such as Instagram, Facebook, LinkedIn and YouTube.

2.5. In pursuance to the above, the Petitioner’s Real Estate Investment

Trust Manager, Nexus Select Mall Management Pvt. Ltd. issued a Legal Notice dated 09.08.2024 (“Legal Notice”) to ERL requestioning ERL to cease and desist from the use of the Impugned Marks and requisitioning Respondent No. 1 to cancel the Trade Mark Registrations of the Impugned Marks. Thereafter, ERL through Respondent No. 1, vide reply dated 18.09.2024 (“Reply”), refused to comply with the requisitions mentioned in the Legal Notice and further refused to cease use of the Impugned Marks. It has also been stated in the Reply that the Petitioner is using the Petitioner’s Mark within the retail business and that ERL is using the Impugned Marks in the business of real estate development.

2.6. Thereafter, in an attempt to amicably resolve the dispute, the Petitioner instituted a Pre-litigation Mediation in accordance with Section 12A of the Commercial Courts Act, 2015 before the Delhi High Court Legal Services Committee in February 2025. On 29.05.2025, when the Pre-litigation Mediation was listed, the Petitioner submitted that ERL wherein Respondent No. 1 is one of the Directors was using the Impugned Mark ‘ELANTE’ which is identical to the Petitioner’s Mark for services similar to the services provided by the Petitioner