Century 21 Real Estate Llc vs Century 21 Builders And Promoters ... on 25 September, 2023

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Delhi High Court - Orders

Century 21 Real Estate Llc vs Century 21 Builders And Promoters ... on 25 September, 2023

Bench: Prathiba M. Singh

                                    $~31
                                    *           IN THE HIGH COURT OF DELHI AT NEW DELHI
                                    +                 CS(COMM) 637/2023 and I.A. 17762/2023
                                                CENTURY 21 REAL ESTATE LLC                       ..... Plaintiff
                                                                   Through: Ms. Tanya Verma, Ms. Shwetasree
                                                                               Majumder & Mr. Rohan Krishna
                                                                               Seth, Advs. (M: 9999845680)
                                                                   versus
                                                CENTURY 21 BUILDERS AND PROMOTERS PRIVATE
                                                LIMITED                                          ..... Defendant
                                                                   Through: Mr. Akshay Dhawan, Adv.
                                                CORAM:
                                                JUSTICE PRATHIBA M. SINGH
                                                            ORDER

% 25.09.2023

1. This hearing has been done through hybrid mode.

I.A.17762/2023 (for stay)

2. The present suit has been filed by the Plaintiff-Century 21 Real Estate LLC, USA against the Defendant-Century 21 Builders and Promoters Private Limited, seeking protection of its mark and name 'CENTURY 21' along with device/logo mark.

3. The case of the Plaintiff is that it was founded in the year 1971 in the United States and it is a globally renowned franchisor in the field of real estate which offers comprehensive training and marketing support for the franchised real estate system under the mark 'CENTURY 21'. The evolution of the company from 1971 has been set out in the plaint.

4. The Plaintiff claims to have more than 50 years of experience with real estate brokerage services and it operates in 86 countries with over 14,000 brokerage offices across the world including in the United States of America (USA), Europe, Latin America, Middle East and Asia. It also claims to have CS(COMM) 637/2023 Page 1 of 8 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 23:40:17 brokers and sales associates in a large number of countries including Australia, Belgium, Canada, Central America, China, France, Hong Kong, Korea, Mexico, New Zealand, Singapore, Spain, United Kingdom, United States of America, India, etc.,

5. The Plaintiff operates its website under the domain name www.century21.com (registered since 2nd March, 1995), which has also acquired many awards and recognitions. It has promoted its services under the mark 'CENTURY 21' through various promotional and advertising campaigns across the world. Plaintiff is also the registrant of the global domain 'century21.com' since 1995.

6. The trademark 'CENTURY 21' is registered in several countries including in India. The earliest trademark registration in India dates back to 13th March, 1989 in class 16 and the said mark has also been registered in classes 35 and 36 in 2013 and 2014 respectively. The Plaintiff has an Indian collaborative business with one M/s Alchemist Ltd. which had also registered the domain names 'century21.co.in' and 'century21.in'. The Plaintiff was in litigation with the said company and finally vide judgment dated 24 th January, 2022, the suit was decreed in favour of the Plaintiff and all the domain names were transferred to the Plaintiff.

7. The Defendant is a private limited company engaged in the real estate services/business, operating out of Jaipur, Rajasthan and has started using the name 'Century 21 Real Estate Revolution' as also the website www.century21jaipur.com. Defendant has also applied for the trademark 'CENTURY 21' in a logo form on 12th February, 2022 on a 'proposed to be used basis'.

CS(COMM) 637/2023 Page 2 of 8

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 23:40:17

8. The case of the Plaintiff is that the mark and the name of the Defendant are identical as also services are identical/similar and thus, this is a case where an injunction ought to be granted by the Court.

9. The suit was listed on 14th September, 2023 wherein it was submitted by ld. Counsel for the Plaintiff that the Defendant's business was incorporated in 2020 and the domain name was registered on 26th December, 2020. A cease and desist notice was also issued by the Plaintiff on 1st March, 2023, which was replied to by the Defendant on 5th April, 2023. However, the Defendant failed to comply with the requisitions of the Plaintiff. After having perused the website, the Court had observed as under:

"14. The Court has perused the website which the Defendant is operating. It clearly shows that the mark and name 'CENTURY 21' is used quite prominently on the website. In fact, the images of the real estate project also bear the name 'THE CENTURY ELITE'.

15. The Plaintiff having statutory rights mark in the 'CENTURY 21' and having had a presence in India since the 1990, is aggrieved by the said infringing use of the said mark and name. In view of the fact that the Defendant is in the business of real estate, it is deemed appropriate to direct the Plaintiff to serve a copy of the suit papers to the counsel who had replied to the legal notice i.e., Mr. Garvit Agarwal (Office at: 402, 4th Floor, Okay Plus Square, Madhyam Marg, Mansarovar, Jaipur-302020 (Rajasthan), Mob:

9549991728). The Registry is also directed to inform the ld. Counsel for the Defendant on the above mobile number and on the e-mail address -

[email protected].

16. If there is no appearance on behalf of the Defendant, the Court would proceed to consider the prayer for interim relief."

CS(COMM) 637/2023 Page 3 of 8

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 23:40:18

10. Today, the Defendant has been served and enters appearance through Mr. Akshay Dhawan, ld. counsel , who has made submissions virtually. The said counsel's video is also not on and when asked specifically as to what is the stand of the Defendant in the present case, he merely seeks an adjournment on the ground that he only had intimation of the suit and does not have the suit papers.

11. Heard.

12. A perusal of the record would show that 'CENTURY 21' is a mark, which belongs to the Plaintiff since 1971 and more than 50 years have passed since then. The mark 'CENTURY 21' has been registered in large number of countries, including in India and the Plaintiff also has collaborations within Indian partners.

13. The Defendant in the present case is using the mark/name 'CENTURY 21' with and without any suffix or prefix. The website of the Defendant is www.century21jaipur.com where Defendant uses its logo and name but undue prominence is given to the name/mark 'CENTURY 21'. The Defendant also claims to be involved in the development of various real estate projects in cities across the country including Jaipur, Ajmer, Jodhpur, Mansarovar etc. The website describes the Defendant as 'CENTURY 21 Jaipur - The Real Estate Revolution'.

14. The Defendant is also using various other names such as BSG Prime, Eco World and variants thereof such as Eco World 1, Eco World 2 etc. The Defendant also uses the names 'The Century Elite', 'City Home Century One', 'The Century Garden'. As for the Defendant's domain name is concerned, it was registered in 2020 but the trademark application was filed in 2022 on a 'proposed to be used basis'. The record shows that the CS(COMM) 637/2023 Page 4 of 8 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 23:40:18 Defendant's adoption of the mark 'CENTURY 21' is quite recent. It is in the process of developing various projects and is also collecting bookings under the name 'CENTURY 21'.

15. The Plaintiff's 'CENTURY 21' is a globally renowned name, in the real estate business. It is possible for the consumers and people, who want to book apartments/spaces in the Defendant's projects, to presume some affiliation, connection, sponsorship and collaboration with the Plaintiff. There is, therefore, an urgent need to stop any further misuse of the brand and name 'CENTURY 21' by the Defendant. This is a case where the mark is identical, the services are identical and the class of customers would be identical.

16. The Defendant was given an opportunity to put forth a defence opposing the ad-interim relief, however, apart from seeking an adjournment, no submission is made by ld. Counsel for the Defendant. The Plaintiff's registered trademarks are being violated unlawfully and indiscriminately.

17. Accordingly, this Court is of the opinion that a prima facie case is made in favour of the Plaintiff for grant of ad-interim injunction. Balance of convenience also lies in favour of the Plaintiff considering that it is a well- known brand in identical/similar business, and customers are being deceived as they are booking and paying substantial amount in Defendants projects. If ad-interim injunction is not granted in favour of the Plaintiff, then irreparable loss/harm will be caused to them.

18. In Laxmikant V. Patel v. Chetanbhat Shah & Ors., MANU/SC/0763/2001, the Supreme Court categorically observed that in cases where passing off is made out, the Court ought to grant an immediate ex-parte injunction and also appoint Local Commissioners to ensure that the infringing products are not permitted to be sold. The relevant extract of the CS(COMM) 637/2023 Page 5 of 8 This is a digitally signed order.

"14. [.....Once a case of passing off is made out the practice is generally to grant a prompt ex-parte injunction followed by appointment of local Commissioner, if necessary....]"

17. We are conscious of the law that this Court would not ordinarily interfere with the exercise of discretion in the matter of grant of temporary injunction by the High Court and the Trial Court and substitute its own discretion therefore except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the order of the Court under scrutiny ignores the settled principles of law regulating grant or refusal of interlocutory injunction. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion [(see Wander Ltd. v. Ant ox India P. Ltd.

MANU/SC/0595/1990 and N.R. Dongre v. Whirlpool Corporation and Anr.: MANU/SC/1223/1996 :

(1996)5SCC714 . However, the present one is a case falling within the well accepted exceptions. Neither the Trial Court nor the High Court have kept in view and applied their mind to the relevant settled principles of law governing the grant or refusal of interlocutory injunction in trade mark and trade name disputes. A refusal to grant an injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff as would not CS(COMM) 637/2023 Page 6 of 8 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 23:40:18 be capable of being undone at a latter stage. The discretion exercised by the Trial Court and the High Court against the plaintiff, is neither reasonable nor judicious. The grant of interlocutory injunction to the plaintiff could not have been refused, therefore, it becomes obligatory on the part of this Court to interfere."

19. In Midas Hygiene Vs. Sudhir Bhatia, (2004) 3 SCC 90, the Supreme Court observed that if a prima facie dishonest intention to pass off one's goods as those of appellant is proved and even if there is mere delay, then also interim injunction is ought to be granted. The relevant extract of the order is set out below:

"5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.

6. ....

7. In our view on the facts extracted by the learned Single Judge, this was a fit case where an interim injunction should have been granted and should have been continued. In our view the Division Bench was entirely wrong in vacating that injunction merely on the ground of delay and laches. Under the circumstances, the impugned order is set aside and that of the trial court is restored. It is clarified that all observations made by the High Court and by this Court are prima facie and shall not be taken into consideration at the time of the trial of the suit."

20. Thus, in terms of the judgement extracted above as also the decision in Midas Hygiene (supra) and Laxmikant Patel (supra) it is clear that in cases relating to trade mark violations and passing off, if the evidence establishes a CS(COMM) 637/2023 Page 7 of 8 This is a digitally signed order.

21. Accordingly, the Defendant and anyone else acting for or on its behalf shall stand restrained from using the mark/name 'CENTURY 21' for any of its real estate projects. The Defendant is also restrained from using the domain name 'www.century21jaipur.com' and shall forthwith take down the website hosted on the said domain name. The Defendant shall also not accept any further real estate bookings under the name 'CENTURY 21'. This order is necessary in order to protect the consumers and users, who may make bookings and pay substantial sums of money to the Defendant under the presumption that the Defendant is associated with the Plaintiff.

22. Insofar as the corporate name as also the word 'CENTURY' used as a name for the projects and 'CENTURY 21' being used as a part of the corporate name, is concerned, this Court is of the opinion that the said relief would be considered after the pleadings are complete. Let a reply to this injunction application be filed within four weeks. Rejoinder thereto within four weeks thereafter.

23. Insofar as the listings of the Defendant on third party websites such as Real Estate India, Magic Bricks, Housing.Com, Makaan, etc. and other social media platforms are concerned, the said platforms, upon receiving the copy of the order passed by this Court today, along with the specific URLs, shall take down the said listings within 72 hours.

24. List before the Joint Registrar on 13th October, 2023.

25. List before the Court on 19th January, 2024.

26. Dasti.

PRATHIBA M. SINGH, J.

SEPTEMBER 25, 2023/dk/ks CS(COMM) 637/2023 Page 8 of 8 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 23:40:18

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