Century 21 Real Estates LLC …Petitioner Vs. Century 21 Town Planners Pvt. Ld. & Anr. …Respondent
Commercial Misc. Petition Nos. 36, 824, 834 & 857 of 2022, with IA No. 2136/2022 (in CMP 36/2022) and IA No. 2132/2022 (in CMP 857/2022) (SJB, Arif S. Doctor, J.)
Overview
The matter came before the Bombay High Court as a dispute concerning trademark rights over the marks “CENTURY 21” and “C21.” The petitioner, Century 21 Real Estate LLC, is a well-known company which operates through various franchise offices, providing real estate services across several countries. It approached the court asking for removal of trademark registration by the respondent for “C21” device mark.
It was argued by the petitioner that it had been using their mark for several decades and had secured trademark registration in different parts of the world, including India. As per the petitioner, the mark “C21” is understood as a short form of “CENTURY 21.” Therefore, the respondent’s adoption of the mark for similar real estate services can create serious confusion.
The court had to determine whether the respondent had adopted the mark with clear intentions or whether the mark was obtained with the intent of using the petitioner’s reputation and goodwill.
Facts
The petitioner began its operations in 1971 and expanded its business in several countries through a franchise-based model. Over the time, it built a strong presence, with thousands of franchise offices, operating in various territories. The company obtained the trademark registration for “CENTURY 21” in the United States from 1977 onwards.
In India, the petitioner obtain the trademark registration in March 1989 and in January 2006, it got registered under the domain name “century21.co.in.” The petitioner began establishing a presence in India through sub-franchise agreements with the local partners, such as DGS Realtors.
The respondent company, Century 21 Town Planners Pvt. Ltd., got incorporated in India in December 2006. Later in 2010, it applied for and obtained four trademark registrations for “C21” device marks as to the real estate services. It was claimed by the respondents that it had been using the mark since April 2007.
The court examined the evidence and observed that the respondents documents only showed use of the mark from 2010. While the petitioner produced extensive evidence, such as trademark registration, domain name records, brand recognition studies showing the international reputation, and franchise agreements.
Legal Issues
- Whether the petitioner had established prior rights in the marks “CENTURY 21” and “C21” by using it earlier through registration.
- Whether the respondent’s adoption of the mark honest, or was made with the intention to use the petitioners brand name and goodwill.
- Whether the similarity of the marks and the similar nature of the services were likely to confuse the consumers.
- Whether the petitioners global reputation had extended to India and deserved legal protection.
Decision
The Bombay High Court observed that the respondent failed to give any proper reasoning for adoption of the mark “C21 “ and including “Century 21” in its company name. Since both the parties operated in the same sector, the court concluded that the similarity was intentional. The ruling was made in the favour of the petitioner, mentioning that the petitioner had prior rights based on the trademark registration, domain name ownership, franchisee activities in India, and the online presence.
The court also concluded that websites and domain names today can be considered as trademark use. As it was proved that the respondent had been using the mark from 2010, its claim as to prior use of the mark from 2007 was rejected, and all four trademark registrations as to “C21” were directed to be removed.
