"Use Of A Mark" Not Limited To Direct Sales: Bombay High Court Directs Removal Of ‘C21’ Trademarks Registered By Century 21 Town Planners
Court holds respondent’s claim of prior use since 2007 untenable, noting the earliest evidence of use dated only to 2010 while the petitioner had established longstanding global reputation and prior rights in the marks "CENTURY 21" and "C21"
The Bombay High Court has ordered the removal of four trademarks containing the mark “C21” registered by Century 21 Town Planners Pvt. Ltd., holding that the marks were dishonestly adopted and infringed upon the prior rights of the global real estate brand Century 21 Real Estate LLC.
The Court observed that “use of a mark” is not confined to instances of direct sales, and in the context of services includes references to the availability or provision of such services in India, thereby extending to demonstrable market presence through advertisements, media coverage, websites, and other commercial engagement.
The Court rejecting the respondent’s claim of prior use since 2007, noted that the earliest documentary evidence produced by it, such as invoices and advertisements dated only from 2010, thereby contradicting its assertion of earlier use. Conversely, the petitioner demonstrated longstanding global use of the marks since 1971, international registrations in more than 140 countries, and evidence of goodwill and market presence in India through domain registrations, franchise agreements, and media coverage.
Justice Arif S. Doctor observed, “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 are identical and overlapping, and thus the likelihood of confusion and deception”.
“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 Bench further observed.
The Bench allowed a series of commercial miscellaneous petitions filed by the multinational real estate franchising company, which sought rectification of the trademark register on the ground that it possessed prior statutory and common law rights in the marks “CENTURY 21” and its abbreviation “C21”.
Advocate Shwetasree Majumder appeared for the petitioner and Advocate Pooja Jain appeared for the respondent.
In the matter, the petitioner contended that it 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 Court found that the respondent had incorporated the petitioner’s well-known mark “CENTURY 21” in its corporate name and adopted the mark “C21” while operating in the same field of real estate services. Observing that the respondent had failed to explain the basis for adopting the mark, the Court held that the conduct indicated a lack of bona fides and appeared to be a deliberate attempt to clone the petitioner’s brand and trade upon its reputation.
The Court rejected the respondent’s objections regarding the alleged lack of stamping and notarisation of the franchise agreements relied upon by the petitioner. It held that such technical objections were untenable and irrelevant to the issue under consideration, which was whether the petitioner possessed statutory and common law rights in the marks “CENTURY 21” and “C21” in India.
The Court observed that the franchise agreements, when read alongside other material on record demonstrating the petitioner’s reputation, registrations, and commercial presence in India, sufficiently established its rights in the marks, and therefore the absence of stamping or notarisation did not undermine the petitioner’s case.
Therefore, holding that the petitioner had established prior rights and significant goodwill in the marks “CENTURY 21” and “C21”, the Court directed that the respondent’s four trademark registrations be removed from the trademark register, while making no order as to costs.
Cause Title: Century 21 Real Estates LLC v. Century 21 Town Planners Pvt. Ltd. & Anr. [Neutral Citation: 2026:BHC-OS:6096]
Appearances:
Petitioner: Shwetasree Majumder, Janhvi Chadha, Priya Adlakha, Dhirendra Singh, Aishwarya Ambardekar, Bimal Rajasekhar, Advocates.
Respondent: Pooja Jain, Bhavi Gada, Advocates.