Bombay High Court
Century 21 Real Estate Llc vs Century 21 Town Planners Pvt Ltd And Anr on 6 March, 2026
2026:BHC-OS:6096
902-COMP-36-2022
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
COMMERCIAL MISCELLANEOUS PETITION NO. 857 OF 2022
WITH
COMMERCIAL MISCELLANEOUS PETITION NO. 36 OF 2022
WITH
COMMERCIAL MISCELLANEOUS PETITION NO. 824 OF 2022
WITH
COMMERCIAL MISCELLANEOUS PETITION NO. 834 OF 2022
WITH
INTERIM APPLICATION NO. 2136 OF 2022
IN
COMMERCIAL MISCELLANEOUS PETITION NO. 36 OF 2022
WITH
INTERIM APPLICATION NO. 2132 OF 2022
IN
COMMERCIAL MISCELLANEOUS PETITION NO. 857 OF 2022
Century 21 Real Estates LLC ...Petitioner
Versus
Century 21 Town Planners Pvt. Ltd. & Anr. ...Respondent
_______
Ms. Shwetasree Majumder, Ms. Janhvi Chadha, Ms. Priya Adlakha, Mr.
Dhirendra Singh, Ms. Aishwarya Ambardekar i/b. Mr. Bimal Rajasekhar for the
Petitioner.
Ms. Pooja Jain, Ms. Bhavi Gada for the Respondent.
_______
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CORAM : ARIF S. DOCTOR, J.
RESERVED ON : 17th FEBRUARY 2026
PRONOUNCED ON : 6th MARCH 2026
JUDGMENT
1. The captioned Commercial Miscellaneous Petitions impugn the validity of the
following four registrations obtained by Respondent No. 1 viz.
Petition Trade mark Registration Dated Class User Claim
No. No.
824 of 2022 1941724 26.03.2010 16 09.04.2007
834 of 2022 1959526 03.05.2010 41 Proposed to
be used
857 of 2022 1957532 29.04.2010 36 09.04.2007
36 of 2022 1941725 26.03.2010 35 09.04.2007
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.
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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 .
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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 28th
December 2004.
ii. As per the online Acronym Finder Site, “C21” was a known
abbreviation of the “CENTURY 21” mark.
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902-COMP-36-2022iii. The Petitioner has executed “CENTURY 21” sub-franchise
agreements all over the world, including the first Asian sub-
franchise agreement in Japan on 16th June 1983, Hong Kong on 12th
August 1993, Indonesia on 24th September 1996, Taiwan on 17th
February 1997, Singapore on 21st August 1997 and China on 22nd
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 Petitioner has obtained registration of the domains
“century21.com” and “c21.com” since March 1995 and active
websites, which have over 4 million visits per month. Several
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902-COMP-36-2022websites operating in different jurisdictions, bearing the
“CENTURY 21” and “C21” trade marks.
vii. The Petitioner also made huge investments to popularise its
“CENTURY 21” brand throughout the world, through television,
radio and print and digital media, reaching millions of consumers
worldwide.
viii. The Petitioner has a major presence on Google and all
prominent social media platforms, where the distinctive logo ‘ ‘
is used as the brand icon.
ix. Over the last 5 decades, Petitioner has earned huge goodwill and
reputation in respect of the trade marks “CENTURY 21” and “C21”,
which is evident from the following:
➢ As per the 2015 Alexa Ranking, the Petitioner’s website
www.century21.com has ranked no. 3,129 with 87.8% visitors in
the USA; ranked 59,296 with 2.4% visitors in India.
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902-COMP-36-2022➢ As per Milward Brown’s (a leading global market search
organisation) 2009 study, Petitioner’s “CENTURY 21” brand
achieved 97% name recognition.
➢ As per the 2013 study of Milward and Brown, the Petitioner has
achieved a 95% brand awareness ranking. In the 2016 study,
Petitioner achieved a 92% brand awareness ranking. As per the
2017 study, the ranking remained the highest among the real
estate industry.
➢ The Petitioner has received several awards, including the reputed
JD Power & Associates Awards for customer satisfaction for a
number of years, including 2014 to 2017.
➢ The Petitioner was announced as the number one most visited
real estate website in 2013 by ComScore Inc.
7. Ms. Majumder then pointed out that the Petitioner even had statutory and
common law rights in India as established from the following:
i. The fact that the Petitioner had, as early as the year 1989, obtained
the following registrations, viz.:
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902-COMP-36-2022Trade Registration Dated Class Status
mark No.
CENTURY 506834 13.3.1989 16 Registered
21 (Rectification filed by R-1
dismissed by the Kolkata High
Court on 13th Nov. 2024 for non-
prosecution)
(Rectification filed by R-1
pending before the Trade Marks
Registry – Pleadings are complete)
506833 13.3.1989 16 Same as above
CENTURY 2855768 4.12.2014 35 Registered
21 (Rectification filed by R-1 pending
before the Trade Marks Registry)
C21 EDGE 2864553 17.12.2014 35, 38 Same as above
ii. Registered the Indian top-level domain “century21.co.in” on 29th
January 2006, which was redirected to Petitioner’s Indian website
www.century21.in (registered on 26th July 2011). Also operated
another website, www.c21.in (registered on 25th June 2010),
dedicated to the Indian market.
iii. Entered into a sub-franchise agreement through its authorised
licensee, ‘Realogy’, with an Indian entity, ‘DGS Realtors Pvt. Ltd.’,
in 2007 for expansion in India, granting DGS Realtors an exclusive
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licence to use the marks “CENTURY 21” and “CENTURY 21
System”
iv. Entered into a Master Franchise Agreement with Alchemist Ltd.
(now known as Century 21 Properties India Pvt. Ltd.) in December
2012, granting an exclusive license to use the marks “CENTURY
21” and “CENTURY 21 System”.
v. The Petitioner’s marks had, since the year 2007, also been
extensively advertised and had also received wide press and media
coverage and featured in listings such as Reality Plus Magazine
(2007), MagicBricks (2007), Franchise Connect (2008), and
internship-related coverage in 2009. Advertisements issued by DGS
Realtors in 2009 and 2010. Articles and press releases in prominent
publications and platforms such as Business Line (10 th August
2013), World Property Journal (11th November 2014), Business
Wire, The Times of India (19th October 2013), and Ace Update (26th
November 2013). Also, multiple press releases dated 22nd May 2014
carried by Business Wire, India Notes, Investment Guru,
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NewsSuperFast, The Telegraph, AndhraNews and Ad Hoc News,
and a property listing under the “Century 21” brand on 99acres.com
(11th May 2015).
8. Ms. Majumder then pointed out that the Petitioner’s trade marks “CENTURY
21” and “C21” had also consistently received judicial recognition and protection
across various jurisdictions, including in India by adverting to the following viz.
i. Judgement dated 19th May 1988 by the US Courts of Appeal,
upholding the summary judgment in favour of the Petitioner in an
infringement Suit against an ex-franchisee.
ii. Ex-parte injunction Order passed by the Delhi High Court in the case
of Century 21 real estate LLC v. Sambit Basu and ors. 1 against an
infringing website “century21realty.com”.
iii. Judgement dated 23rd July 2018 passed by the Delhi High Court in
the above suit (named changed to Kangana Das), wherein the Delhi
High Court had recognised the worldwide goodwill and reputation
of the Petitioner and protected its marks in India.
1
[Delhi High Court] Order dated 28th May 2015 in CS(OS) 1671/2015.
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iv. INDRP Award in favour of the Petitioner concerning the domain
CENTURY21.
v. WIPO Award in favour of the Petitioner concerning the domain
century21bd.com.
vi. Judgement passed by the Delhi High Court in Century 21 Real Estate
LLC v. Alchemist Ltd. & Anr.2 in favour of the Petitioner.
vii. Judgement in the case Century 21 Real Estate v. Century 21
Builders and Promoters Private Limited.3
9. Ms. Majumder then pointed out that Respondent No. 1 was incorporated on
27th December 2006 by completely subsuming the Petitioner’s registered mark
“CENTURY 21” into the corporate name of Respondent No. 1 and obtaining
registration of the impugned marks “C21” (device mark), which was identical
to the Petitioner’s prior adopted, used and registered “C21” trade marks
worldwide, in respect of identical real estate business and allied and cognate
services. She submitted that this registration as also the conduct of Respondent
No. 1 was therefore clearly dishonest and in bad faith since the Petitioner was
2
[Delhi High Court] Order dated 24th January 2022 in CS(COMM) 416/2020.
3
[Delhi High Court] Order dated 25th September 2023 in CS(COMM) 637/2023 and I.A. 17762/2023.
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the prior adopter and user of “CENTURY 21” and “C21”, and in respect of
which the Petitioner had immense goodwill and reputation.
10. Ms. Majumder submitted that each of the defences (I to V below) taken by
Respondent No. 1 to justify the adoption and use of “C21” were not only
misconceived and legally untenable but, in fact, plainly dishonest. She then
dealt with each of the defences as follows:
I. Honest and bona fide adoption
11. Ms. Majumder submitted that the dishonesty of such a plea was writ large on
the face of the record, as Respondent No. 1 had not only adopted a mark
identical to the Petitioner’s prior adopted, used and registered “C21” word and
device marks but had also incorporated the Petitioner’s well-known trade mark
“CENTURY 21” into its corporate name.
12. Ms. Majumdar submitted that such adoption and incorporation of a company
whose corporate name entirely subsumes the Petitioner’s in its entirety could not
be coincidental but clearly was deliberate, calculated and dishonest from
inception since Respondent No. 1 was engaged in the same line of business as
the Petitioner, namely real estate. Ms. Majumder then took pains to point out
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that Respondent No. 1 had provided no explanation whatsoever for adopting the
impugned marks which fact she submitted by itself spoke volumes of the lack
of bona fides and dishonesty on the part of Respondent No. 1. Ms. Majumdar
submitted that it was well settled that in any event the defence of honest and
bona fide use was unavailable where the marks in question were identical.
13. Ms. Majumder also submitted that it was well settled that there can be only one
source and one proprietor of a trade mark and that a trade mark cannot have a
dual origin. She submitted that even long-standing use cannot legitimise a
dishonest adoption. In support of her contention, she placed reliance upon the
following decisions, MAC Personal Care Pvt. Ltd. v. Laverana GMBH 4,
Kanshiram Surinder Kumar v. Thakurdas Deomal Rohira 5, M/s. Turning
Point Institute Pvt. Ltd. v. Turing Point 6, and Power Control Appliances v.
Summet Machines Pvt. Ltd.7
4
2016 SCC OnLine Del 530.
5
MANU/MH/2069/1976.
6
2017 SCC OnLine Del 9765.
7
MANU/SC/0646/1994.
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II. Respondent’s prior use of “C21” in India and Petitioner’s non-use
14. Ms. Majumder submitted that the claim of prior user by Respondent No. 1 was
entirely false and was belied by the very documents relied upon by Respondent
No. 1. She then pointed out that while Respondent No. 1 had asserted a user
claim of the year 2007, the earliest invoice relied upon by Respondent No. 1
was dated 30th October 2010, and the earliest advertisement was of 25th February
2010. In contrast, she pointed out that the Petitioner had been using
“CENTURY 21” internationally since 1971 and has been the registered
proprietor thereof in the USA and Canada since 1977. She submitted that the
mark “C21”, being a well-known abbreviation of “CENTURY 21”, had also
been extensively and continuously used, including on the Petitioner’s website
“www.c21.com”, since at least 1995. She submitted that the “C21” logo had
also been prominently displayed on the Petitioner’s websites and social media
platforms and was exclusively associated with the Petitioner.
15. Ms. Majumder then submitted that the test of the “use of a mark” must be
construed in accordance with Section 2(2)(c) of the Act and that the Petitioners
Marks ‘Century 21’ and ‘C21’ and the logo having acquired immense goodwill
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and reputation in India, were liable to be protected against the dishonest
adoption by Respondent No. 1. She submitted that, given the immense global
presence of the Petitioner, Respondent No. 1 was fully aware of the Petitioner’s
rights or then was deemed to have constructive notice of the Petitioner’s rights,
given the prior statutory rights. In support of her contention, she placed reliance
upon the decision in Suzuki Motor v. Suzuki India Ltd. 8, N.R. Dongre v.
Whirlpool Corporation9, Milmet Oftho Industries v. Allergan Inc.10, Hardie
Trading Ltd. v. Addisons Paint & Chemicals Ltd. 11, MAC Personal Care Pvt.
Ltd. v. Laverana GMBH 12, S. Syed Mohideen v. P. Sulochana Bai 13, and
Cadbury UK Ltd. v. Lotte India Corporation Ltd.14
III. Conflicting Marks are different
16. Ms. Majumder submitted that the Respondent’s contention that the conflicting
marks were different was plainly untenable on the face of it. She submitted that
the marks are in fact virtually identical or then deceptively similar, and the
8
2019 SCC OnLine Del 9241.
9
(1996) 5 SCC 714.
10
(2004) 12 SCC 624.
11
(2003) 11 SCC 92.
12
2016 SCC OnLine Del 530.
13
(2016) 2 SCC 683.
14
2014 SCC OnLine Del 367.
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services offered by both parties, namely real estate services, were identical
and/or overlapping. She submitted that, therefore, a clear likelihood of
confusion and deception as to source or association was bound to arise in the
minds of consumers and on this ground alone the Petitioner was entitled to
relief. In support of her contention, she placed reliance upon the decisions in the
case of B.K. Engineering Co. v. Ubhi Enterprises15 and Laxmikant V. Patel v.
Chetanbhai Shah16.
IV. Petitioner has no right over “C21”
17. Ms. Majumder submitted that the contention that the Petitioner has no right
over the mark “C21” was also entirely without merit and plainly untenable. She
reiterated that the Petitioner enjoys both common law and statutory rights in the
mark “C21”, worldwide and in India, by virtue of long-standing use and
registration, as already pointed out. Ms. Majumder then submitted that it was
well settled that registration of a mark does not create a new or greater right
than what already existed in common law. In support of her contention, she
15
1984 SCC OnLine Del 288.
16
(2002) 3 SCC 65.
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placed reliance upon Consolidated Foods Corporation v. Brandon Co. Pvt.
Ltd.17 and Century Traders v. Roshan Lal Duggar & Co. 18
18. Ms. Majumder submitted that the Petitioner’s adoption of the mark ‘Century’
with the numeral “21” as well as ‘C21’ dates back to 1971. She thus submitted
that the contention of Respondent No. 1 that the impugned marks is taken from
the 21st Century is of no assistance to the Respondent and was plainly a bogus
attempt to attack the Petitioner’s mark. She submitted that even otherwise, when
Respondent No. 1 had itself obtained the mark C21 (device) and claimed it to
be coined, arbitrary and inventive, the defence of genericness is not even
available to it. She submitted that Respondent No. 1 could not approbate and
reprobate its stand on the basis of convenience. In support of this contention,
Ms. Majumder placed reliance upon the decision in the case of Anil Verma v.
R.K. Jewellers19, Peps Industries Pvt. Ltd. v. Kurlon Ltd. 20, and Jagdish Gopal
Kamath v. Lime & Chilli Hospitality Services.21
17
1961 SCC OnLine Bom 55.
18
MANU/DE/0153/1977.
19
2019 SCC OnLine Del 8252.
20
2022 SCC OnLine Del 3275.
21
2015:BHC-OS:3538.
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V. Use of “CENTURY” and “CENTURY 21” by various Third Parties
19. Ms. Majumder submitted that the Respondent’s reliance on third-party
registrations and alleged third-party use would also not legitimise the
Respondent’s adoption and use of the impugned mark. She submitted that the
mere presence of marks on the Register does not establish actual use, nor is a
registered proprietor required to initiate proceedings against every trivial or
insignificant infringer, as held in the case of Pankaj Goel v. Dabur India Ltd.22
and H&M Hennes & Mauritz AB v. HM Megabrands Pvt. Ltd.23
20. Basis the above, she submitted that the Petitions deserved to be allowed and
the impugned registrations be struck off the register of trade marks.
Submissions on behalf of the Respondent:
21. Ms. Jain, learned counsel appearing on behalf of Respondent No. 1, at the
outset submitted that the Petitioner had failed to establish any use of the
impugned marks in India prior to, or even around, the year 2007. In contrast,
22
2008 SCC OnLine Del 1744.
23
2018 SCC OnLine Del 9369.
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she submitted that Respondent No. 1 had established its prior and continuous
use of the impugned marks since 9th April 2007.
22. She submitted that Respondent No. 1 had adopted and commenced use of the
impugned marks through incorporation and secured registration under No.
1242781 in Class 35, with a user claim dating back to April 2000. She pointed
out that the registration covered services relating to advertising, business
management, business administration and office functions connected with real
estate affairs and building construction. Ms. Jain further submitted that the
adoption of the impugned marks was bona fide by Respondent No. 1 and was
duly supported by corporate records and statutory filings, which demonstrated
the continuous use of the impugned trade marks by Respondent No. 1 since the
year 2007. Basis this, she submitted that Respondent No. 1 was the prior adopter
and user of the impugned marks in India and therefore Respondent No. 1 enjoys
superior rights over the Petitioner under the provisions of Sections 34 and 33 of
the Trade Marks Act.
23. Ms. Jain submitted that the Petitioner had not produced any credible document
evidencing use of the marks “CENTURY 21” or “C21” in India in or prior to
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2007. She then submitted that in support of its claim of prior use, the Petitioner
had only annexed the first and last page of the franchise agreement of 2007, and
the same was neither stamped nor notarised. Similarly, she pointed out that the
sub-franchise agreement of 2012 upon which the Petitioner had placed reliance
was not notarised and was also unstamped. She therefore submitted that these
agreements could not be relied upon by the Petitioner since the same were
inadmissible in evidence. Ms. Jain additionally submitted that the Petitioner had
not produced any invoices, sales records, advertisements, customer data,
statutory filings, or other documentary evidence of commercial use of the trade
marks “CENTURY 21” or “C21” in India and that the few articles which were
relied upon by the Petitioner were third-party publications which did not
emanate from the Petitioner and therefore cannot establish the Petitioner’s
proprietary use or goodwill.
24. She further submitted that the Petitioner’s trade mark applications and
registrations relied upon in India were on a “proposed to be used” basis and thus
infact evidence non-use by the Petitioner of the Petitioners trade marks. She
then submitted that even on the Petitioner’s own showing, any material
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suggesting the Petitioner’s presence and use of the Petitioner’s trade marks in
India appeared to be only from 2014 onwards. She also submitted that the
website, i.e., “http://www.century21.in.co”, relied upon by the Petitioner, was
non-existent and that the Petitioner did not have an office of its own in India.
She thus submitted that Respondent No. 1 was clearly the prior user and that it
was well settled that the rights of a prior user are superior to and will prevail
over the rights of a registered proprietor of a trade mark. In support of her
contention, she placed reliance upon the decisions in S. Syed Mohideen v. P.
Sulochana Bai24, R.J. Components and Shafts v. Deepak Industries Ltd.25,
Exide Industries Ltd. v. Exide Corporation26, Rati Traders v. K.P. Pouches
Pvt. Ltd.27, Suttind Seeds Pvt. Ltd. v. Sutton & Sons India Pvt. Ltd.28 and Neon
Laboratories Ltd. v. Medical Technologies Ltd. 29
25. Ms. Jain further submitted that the Petitioner had also failed to establish any
trans-border reputation or spill-over goodwill in India prior to the adoption of
24
(2016) 2 SCC 683.
25
2017 SCC OnLine Del 11071.
26
2012 SCC OnLine Del 4645.
27
2004 SCC OnLine MP 480.
28
2010 SCC OnLine Del 2323.
29
(2016) 2 SCC 672.
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the impugned marks by Respondent No. 1. She submitted that the material upon
which reliance was placed by the Petitioner pertained largely to the Petitioner’s
operations in the United States and other foreign jurisdictions. She submitted
that there was no evidence of the Petitioners business operations, consumer
targeting, promotional campaigns, sales, or market recognition within India at
the relevant time. She reiterated that trade mark law is territorial in nature and
that global reputation or foreign use does not confer rights in India in the
absence of cogent evidence of goodwill having spilt over into the Indian market.
26. Ms. Jain then placed reliance upon the decision of the Delhi High Court in
Century 21 Real Estate L.L.C. v. Century 21 Main Realty Pvt. Ltd. & Ors. to
point out that the Petitioner had in that case been refused relief on the ground
that the Petitioner did not have any business or operations in India. She pointed
out that the Delhi High Court had held that mere registration or blocking of a
mark without use in India confers no advantage upon the Petitioner. Ms. Jain
then also placed reliance upon an extract from the book by Venkateswaran on
Trademarks & Passing off to point out that use of domain names would not
amount to use of a trade mark.
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27. Ms. Jain then also placed reliance upon the decision of the Hon’ble Supreme
Court in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. 30, to
submit that even global goodwill must be shown to have existed in India at the
time of adoption by the Defendant and that foreign advertisements, internet
material, and international recognition were held insufficient absent proof of
Indian market penetration. Additionally, she also placed reliance upon the
decision in the case of Broad Peak Investment Holdings Ltd. v. Broad Peak
Capital Advisors LLP31 to point out that sporadic transactions and scattered
media articles were held to be insufficient to establish goodwill in India and that
continuous and substantial use must be demonstrated.
28. She further pointed out, from the decisions in Toyota Jidosha Kabushiki
Kaisha v. Tech Square Engineering Pvt. Ltd. 32 and Du Pont De Nemours &
Co. of USA v. Zip Industries Pvt. Ltd.33, that trans-border reputation cannot be
presumed in the absence of concrete, India-specific evidence of goodwill. In
both cases, she submitted that despite assertions of global publicity and
30
(2018) 2 SCC 1.
31
2025 SCC OnLine Del 196.
32
2023 SCC OnLine Del 583.
33
2004 (28) ptc 174.
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international recognition, the Courts held that the absence of commercial
presence, advertising, sales, or consumer recognition within India was fatal. Ms.
Jain submitted that these authorities consistently affirm that worldwide fame or
foreign publicity cannot satisfy the requirement of goodwill in India unless
accompanied by clear proof of use in India.
29. Basis the above, Ms. Jain submitted that the Petitioner had failed to
demonstrate any use of the Petitioner’s marks in India in 2006 and that the
Petitioner’s own material, at best, reflected alleged use of the Petitioner marks
in India only from 2014 onwards.
Submissions on behalf of the Petitioner in Rejoinder:
30. Ms. Majumder submitted that, on the one hand, Respondent No. 1 had
contended that the Petitioner’s proprietorship and use of the mark CENTURY
21 since 1989 cannot be treated as proprietorship or use of the mark “C21” while
on the other hand, Respondent No. 1 had relied upon its alleged use of the mark
CENTURY 21 TOWN PLANNERS to assert proprietorship over the
abbreviated form “C21” and, by extension, to claim use of the device marks in
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question. Ms. Majumder submitted that this amounts to a clear conflation of the
two marks by Respondent No. 1 and is an implicit admission that CENTURY
21 and C21 are not distinguishable.
31. She she submitted that, from Respondent No. 1’s own evidence, the earliest
document evidencing use of the C21 device dates back only to 1 st December
2010, and that there was no material demonstrating use of C21, much less the
impugned device marks, in 2007, as claimed by Respondent No. 1.
32. Without prejudice to the above, Ms. Majumdar submitted that Respondent No.
1’s registration for the mark CENTURY 21 TOWN PLANNERS was also liable
to be rectified under Rule 98 of the Trade Marks Rules, 2017, as Respondent
No. 1 had failed to file a counter-statement within the statutory period of three
months. She further submitted that the Petitioner has addressed a letter dated
16th December 2024 to the Registry seeking a formal abandonment of the said
registration.
33. On the question of priority, Ms. Majumder submitted that Respondent No. 1
was not the prior user of either CENTURY 21 or C21 in India, as was evident
from the agreements entered into by the Petitioner with DGS Realtors (October
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2007) and Alchemist Ltd. (December 2012), extracts from Realty Plus
Magazine (September 2007), listings on MagicBricks (2007), Franchise
Connect (2008), internship listings (April 2009), advertisements by DGS
Realtors, and various press releases and property listings. In respect of C21, she
relied upon extracts from the Petitioner’s Indian website, WHOIS records of the
domain c21.in, and the Petitioner’s use of CENTURY 21 and C21 on its social
media platforms, which she submitted was plain and clear evidence of the
Petitioner’s prior use in India.
34. She reiterated that the Petitioner is the registered proprietor of the CENTURY
21 and C21 marks in India and internationally, with Indian registrations dating
back to 1989 and subsequent registrations in Class 35 and other classes, in
addition to longstanding international registrations in the United States, EUIPO,
and Canada.
35. Ms. Majumder then submitted that the reliance placed by Respondent No. 1
upon the extract from the book by Venkateswaran on Trademarks & Passing
off to contend that use of a domain name does not amount to use of a trade mark
was archaic and contrary to the now settled legal position. In support of her
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contention, Learned Counsel placed reliance upon the decision of the Hon’ble
Supreme Court in Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd.34, which
inter alia held that a domain name functions as a business identifier and may
amount to use in relation to services. She thus submitted that the Petitioner’s
domain names and social media usage of CENTURY 21 and C21 demonstrate
use in India. She also referred to the registration of the Indian top-level domains
century21.co.in (on 29th January 2006), c21.in (on 25th June 2010), and
century21.in (on 26th July 2011).
36. She further submitted that the Petitioners Indian sub-franchisee operated
websites from some of these domains, and that subsequent litigation had
resulted in their transfer to the Petitioner pursuant to a decree of the Delhi High
Court in Century 21 Real Estate LLC v. Alchemist Ltd. & Anr., wherein the
Court expressly noted the immense reputation and goodwill of the Petitioner’s
mark in India. She also relied upon Century 21 Real Estate LLC v. Century 21
Builders and Promoters Pvt. Ltd. to point out that the Delhi High Court had
34
(2004) 6 SCC 145.
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taken judicial notice of the Petitioner’s registrations and domain names and
described CENTURY 21 as a “well-known brand.”
37. Ms. Majumder submitted that the Respondent’s contention that the Petitioner
did not have a physical office in India was of no consequence since there was
no such requirement under Indian trade mark law. She reiterated that the
Petitioner operates a franchise-based model and had thus entered into franchise
and sub-franchise agreements with Indian entities such as DGS Realtors (2007)
and Alchemist Ltd. (2012), which agreements had already been recognised in
judicial proceedings.
38. She further submitted that the objection of Respondent No. 1 to the franchise
agreements on the ground of alleged lack of stamping and notarisation were
hyper-technical objections taken only because Respondent No. 1 did not have
any answer on merits. She pointed out that the present proceedings concern
rectification and involve adjudication of rights in rem, not private contractual
disputes. Objections, even if valid, could only be raised by the parties to the
agreements in any private dispute arising from those agreements, and certainly
not by Respondent No. 1. She reiterated that the Petitioner’s rights flowing from
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such agreements had already been recognised and upheld in multiple judicial
decisions, as already pointed out.
39. Ms. Majumder submitted that the argument of Respondent No. 1 that third-party
publications cannot constitute proof of use was also untenable. She pointed out
that under Section 2(1)(c)(ii) of the Trade Marks Act, use of a mark in relation
to services includes reference to the availability or provision of services in India.
In support of her contention, she placed reliance upon the decisions in Hardie
Trading v. Addisons Paint & Chemicals Ltd., and Trustees of Princeton
University v. Vagdevi Educational Society and Ors.,35 which recognised that
use of a trade mark need not be confined to actual sales. She further pointed out
that Respondent No. 1 had itself relied upon third-party publications to claim
use of the impugned C21 device marks from 2010. Learned Counsel thus
submitted that Respondent No. 1 cannot insist upon a higher evidentiary
threshold for the Petitioner while applying a different standard to itself. She
submitted that Respondent No. 1 cannot be permitted to approbate and reprobate
its stand according to its convenience.
35
2025 SCC OnLine Del 6296.
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40. Ms. Majumder then also submitted that Respondent No. 1 had relied on extracts
of the Petitioner’s website as it stood on the date of hearing. She submitted that
the relevant date for assessing priority was not the date of hearing but the date
when Respondent No. 1 claims to have commenced use of C21, and it was thus
that the current website extracts were irrelevant to the determination of priority.
41. In dealing with the judgements relied upon by Learned Counsel for Respondent
No. 1 Ms. Majumder submitted that the judgements in the case of S. Syed
Mohideen v. P. Sulochana Bai, R.J. Components and Shafts v. Deepak
Industries Ltd., and Neon Laboratories Ltd. v. Medical Technologies Ltd., all
pertain to infringement and passing-off proceedings and not to rectification
proceedings. She thus submitted that the same were wholly inapplicable to the
facts of the present case. She submitted that the issue at hand was one of priority
of use and as to which party would have better rights in law. It was this she
submitted that would have to be considered. In support of her contention she
placed reliance upon the decision in the case of Le Shark Apparel Limited v.
Anil Shah & Ors.36
36
2025 SCC OnLine Bom 4006.
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42. In dealing with the decision of the Delhi High Court in Century 21 Real Estate
LLC v. Century 21 Main Realty Pvt. Ltd., Ms. Majumder pointed out that the
said decision was of the year 2010 and was passed at the interlocutory stage and
thus does not constitute binding precedent. She submitted that the observations
therein were only prima facie and that subsequent decisions of the Delhi High
Court in the year 2015, 2017, 2022, and 2023 had recognised the Petitioner’s
goodwill and reputation in CENTURY 21 and C21 in India, on the basis of
which the Court had granted the Petitioner protection. Ms. Majumder therefore
submitted that the Petitioner had established priority of use, statutory
registrations, judicial recognition, and goodwill in India, and that the
Respondent’s claims of prior use are unsupported by credible evidence. She thus
submitted that the Petitions be allowed as prayed for.
Reasons and Conclusions:
43. After having heard learned counsel for the Parties and having considered the
rival contentions and the material upon which reliance has been placed, as also
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the case law cited, I find that the Petitions deserve to succeed for the following
reasons:
A. At the outset, and crucially, though the burden to prove the bona fide use
and adoption lies squarely upon Respondent No. 1, I find that Respondent
No. 1 has made no attempt to justify or explain the basis on which it
adopted the impugned marks, i.e., “C21”. In my view, this silence on the
part of Respondent No. 1 speaks volumes about the lack of bona fides and
honesty in adoption.
B. Additionally, the dishonesty and lack of bona fide on the part of
Respondent No. 1 is manifest from the fact that Respondent No. 1 has, in
addition to adopting the impugned mark, also incorporated the Petitioner’s
well-known trademark “CENTURY 21” in its entirety into its corporate
name, i.e., Century 21 Town Planners Pvt. Ltd. The adoption of an identical
mark and appropriation of “CENTURY 21” into the corporate name of
Respondent No. 1, more so when both the Petitioner and Respondent No.
1 are in the same field/business. Therefore, clearly such adoption and use
of the impugned trade marks is by design and not coincidence. In my view,
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clone the Petitioner and nothing more.
C. The claim of prior use by Respondent No. 1 is also plainly untenable and
is belied by the very documents upon which Respondent No. 1 has placed
reliance. I say so because, although Respondent No. 1 has claimed user of
the impugned marks from the year 2007, the earliest invoice produced by
Respondent No. 1 is dated 30th October 2010, and the earliest
advertisement relied upon is dated 25th February 2010. Thus, on
Respondent No. 1’s own showing, the earliest use of the impugned marks
is of the year 2010 and not 2007 as claimed. Clearly, therefore, Respondent
No. 1 has made a false claim of prior user.
D. Conversely, the Petitioner has, in support of its prior use, reputation and
goodwill in “CENTURY 21” and “C21”, inter alia placed reliance upon
the fact that (i) the Petitioner was originally incorporated in 1971 in
California as “Century 21 Real Estate Corporation”, later restructured and
incorporated in Delaware in 1979, and renamed “Century 21 Real Estate
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LLC” in 2004; (ii) over the past five decades, the Petitioner has expanded
globally through an extensive network of franchise and sub-franchise
agreements, including early expansion into Asia beginning with Japan in
1983, followed by Hong Kong, Indonesia, Taiwan, Singapore and China;
(iii) the mark “CENTURY 21” is registered in at least 140 countries and
territories worldwide, with registrations in the United States and Canada
dating back to 1977, and the mark “C21” registered in jurisdictions such as
the United States, Canada and the European Union, with first use claims
tracing back to 1982; (iv) the Petitioner also owns and operates the domain
names “century21.com” and “c21.com” since 1995, with substantial global
web traffic and multiple jurisdiction-specific websites; (v) significant
investments have been made in global brand promotion through television,
radio, print and digital media, resulting in high brand recognition, as
reflected in independent studies indicating awareness levels exceeding
90% across several years; (vi) the Petitioner’s online presence is reinforced
by substantial global rankings and visibility, including measurable traffic
from India. All these factors collectively establish that over five decades
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the Petitioner has built substantial international goodwill and reputation in
the marks “CENTURY 21” and “C21”, which is not even really disputed
by Respondent No. 1.
E. The Petitioner has also placed on record material which clearly
demonstrates that “CENTURY 21”, “C21” and the logo have also acquired
immense goodwill and reputation in India. The Petitioner pointed out that
(i) the Petitioner has, as early as 13th March 1989, secured registrations in
India for “CENTURY 21” in Class 16, which continue to remain on the
Register; (ii) obtained subsequent registrations in Class 35 for “CENTURY
21” and “C21 EDGE”; (iii) obtained registration of the domain name
“century21.co.in” in January 2006, followed by “c21.in” in June 2010 and
“century21.in” in July 2011, all directed toward the Indian market; and (iv)
entered into franchise arrangements in India, including a 2007 sub-
franchise agreement with one DGS Realtors Pvt. Ltd. and a 2012 Master
Franchise Agreement with one Alchemist Ltd. (subsequently renamed as
Century 21 Properties India Pvt. Ltd), granting exclusive rights to use the
“CENTURY 21” marks in India; (v) from 2007 onwards, the Petitioner’s
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marks received consistent advertising, listings, and media coverage on
Indian platforms and in various Indian publications (both online and in
print), including Realty Plus Magazine, MagicBricks, Franchise Connect,
The Times of India, Business Line, World Property Journal, and other
widely circulated media outlets, as well as property listings under the
“CENTURY 21” brand on Indian real estate portals.
F. Hence, from what is set out in paragraphs (D) & (E) above, it is clear that
the Petitioner’s marks “CENTURY 21” and “C21” and the logo have
acquired immense goodwill and reputation, including in India, which the
Petitioner is entitled to seek the benefit of and protect. Also, given what
has been set out in (D) and (E) above, Respondent No. 1 is deemed to have
notice of the Petitioner’s statutory and common law rights in the said marks
which makes the adoption of the impugned marks plainly dishonest and
lacking in bona fides. In this regard, the Petitioner’s reliance upon the
decision in N. R. Dongre v. Whirlpool Corporation and Milmet Oftho
Industries v. Allergan Inc. is entirely apposite.
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G. Furthermore, and in my view crucially, the Petitioner’s rights in
“CENTURY 21” have been expressly recognised and protected by the
Courts in India. The Petitioner has in support of this, placed reliance upon
the decisions in Century 21 Real Estate LLC v. Sambit Basu & Ors.,
Century 21 Real Estate LLC v. Kangkana Das, Century 21 Real Estate
LLC v. Century 21 Builders and Promoters Pvt. Ltd., and Century 21 Real
Estate LLC v. Alchemist Ltd. & Anr. to point out that the Delhi High Court
has recognised the Petitioner’s mark “CENTURY 21” as a well-known
mark. Therefore, the reliance placed by Respondent No. 1 upon the
decision of Delhi High Court in Century 21 Real Estate LLC v. Century
21 Main Realty Pvt Ltd., is of no relevance since the said decision firstly
predates the several decisions upon which the Petitioner has placed
reliance and secondly, and also the observations contained therein were
merely prima facie factual observation made on the basis of the material
then before the Court at the interlocutory stage.
H. The Petitioner’s reliance upon the decisions in Power Control Appliances
v. Summet Machines Pvt. Ltd., MAC Personal Care Pvt. Ltd. v. Laverana
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GMBH, Kanshiram Surinder Kumar v. Thakurdas Deomal Rohira, and
M/s. Turning Point Institute Pvt. Ltd. v. Turning Point, which holds that
no amount of subsequent use can legitimise dishonest adoption, especially
when the marks are identical, is entirely apposite to the facts of the present
case.
I. The contention that the marks are dissimilar needs only to be stated to be
rejected. This contention once again brings to the fore the dishonesty and
inconsistency in the conduct of Respondent No. 1, since Respondent No.
1 has itself relied upon “CENTURY 21 TOWN PLANNERS” to assert
rights in “C21”, thereby acknowledging the association between the two.
In any event, the Petitioner has, as noted in (D) and (E) above,
demonstrated global and Indian registrations and use of “C21” as both a
formative and standalone mark, Respondent No. 1 cannot therefore
approbate and reprobate by drawing artificial distinctions for its defence
while relying on the association for its benefit. In my view, given that it is
clear that Respondent No. 1 is using “C21” as an abbreviation of
“CENTURY 21” and the services offered by both parties, i.e., real estate,
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are identical and overlapping, and thus the likelihood of confusion and
deception, the decisions in the case of B.K. Engineering Co. v. Ubhi
Enterprises and Laxmikant V. Patel v. Chetanbhai Shah upon which
reliance was placed by the Petitioner, would squarely apply. Also, as held
in the case of Consolidated Foods Corporation v. Brandon Co. Pvt. Ltd.
and Century Traders v. Roshan Lal Duggar & Co. registration does not
create new rights but recognises and protects pre-existing common law
rights, which clearly the Petitioner has established both in “CENTURY 21”
and also in “C21”, in addition to the statutory rights the Petitioner has in
both.
J. It is also now well settled that domain name registration and use constitutes
recognised use of a trade mark as confirmed by the Hon’ble Supreme Court
in Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd., which held that a
domain name functions as a business identifier and may amount to use in
relation to services. In the present case, the Petitioner has set out use of the
domain names internationally, “century21.com” and “c21.com” since the
year 1995, and in India, “century21.co.in”, “c21.in”, and “century21.in”
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since 2006, 2010, and 2011, respectively, which clearly amounts to use as
a trade mark, given this and also for the reason stated in (E) above, I find
that the Respondent’s reliance upon the extract from the book by
Venkateswaran on Trademarks & Passing off is entirely misplaced.
K. The objections with regard to the alleged lack of stamping or want of
notarisation of the franchise agreements, in my view, are clearly untenable
and devoid of substance given the issue which falls for determination,
namely whether the Petitioner has statutory and common law rights in
“CENTURY 21” and “C21” in India. The agreements, when read in
conjunction with the wealth of other material referred to in (E) and (G)
above, sufficiently establish the Petitioner’s presence and commercial
engagement in India. Thus, the question of inadequacy of stamping or want
of notarisation, even if valid, would be of no relevance. Such contention,
if valid, might assume relevance in a civil lis between the parties to the said
agreements but not for the purpose for which they have presently been
relied upon by the Petitioner. Equally untenable is the contention that the
franchise and sub-franchise agreements cannot be relied upon on the
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ground that only the first and last pages thereof have been produced. The
Petitioner has produced the Franchise Agreements for the perusal of the
Court alongwith the Petitioner’s note. The Petitioner cannot reasonably be
expected to disclose detailed commercial terms of such agreements to a
competitor, particularly one whose adoption of the impugned marks has
been found to be dishonest.
L. I find that the decisions in Toyota Jidosha Kabushiki Kaisha v. Prius Auto
Industries Ltd., Broad Peak Investment Holdings Ltd. v. Broad Peak
Capital Advisors LLP, Toyota Jidosha Kabushiki Kaisha v. Tech Square
Engineering Pvt. Ltd., and Du Pont De Nemours & Co. v. Zip Industries
Pvt. Ltd. upon which reliance was placed by Respondent No. 1, would not
apply to the facts of the present case. Firstly, as I have already noted in (A)
and (B) above, the adoption of the impugned marks is dishonest.
Additionally, as already noted in (D), (E) and (J) above, the Petitioner has
placed substantial material on record demonstrating (i) international use
since 1971; (ii) statutory registrations in India dating back to 1989; (iii)
India-specific domain registrations from 2006 onwards; (iv) franchise and
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sub-franchise arrangements operating in India since 2007; and (v) media
presence and listings on Indian platforms from 2007 onwards. Those
decisions, which concerned cases where only stray or sporadic references
to foreign reputation were produced, have therefore no application to the
facts of the present case.
M. Also, the expression “use of a mark” as contemplated under Section
2(2)(c) of the Trade Marks Act is of wide import. In the context of services,
it includes reference to the availability, provision, or performance of
services in India. “Use” is therefore not confined to instances of direct sales
but extends to demonstrable market presence and the offering of services
within India, both of which the Petitioner has sufficiently established. The
decisions in R.J. Components and Shafts v. Deepak Industries Ltd. and
Exide Industries Ltd. v. Exide Corporation, relied upon by Respondent
No. 1, would be of no assistance to Respondent No. 1 since those cases
arise in the context of infringement and passing-off actions and not actions
for rectification.
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44. Therefore, for the reasons set out in (A) to (M) above, the captioned Petitions
deserve to succeed. Hence, the following Order is passed.
ORDER
i. The captioned Commercial Miscellaneous Petitions are allowed.
ii. The trade marks registered under No. 1941724 and 1941725 dated 26 th
March 2010, No. 1959526 dated 3rd May 2010 and No. 1957532 dated
29th April 2010 be removed from the trade marks register.
iii. There shall be no order as to costs.
iv. Interim Applications if any are accordingly disposed of.
[ARIF S. DOCTOR, J.]
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