Century 21 Real Estate Llc. vs Kankgana Das & Ors.
2018 Latest Caselaw 4185 Del

$~
*      IN THE HIGH COURT OF DELHI AT NEW DELHI

+      CS(COMM) 506/2017 & I.A. 2583/2016

       CENTURY 21 REAL ESTATE LLC. ..... Plaintiff
                    Through  Ms. Shwetasree Majumder with
                             Ms. Tanya Varma, Ms. Eva
                             Bhiswhwal and Ms. Pritika
                             Kohli, Advocates

                                Versus

       KANKGANA DAS & ORS.                   ..... Defendants
                  Through             None


%                                  Date of Decision: 23rd July, 2018

CORAM:
HON'BLE MR. JUSTICE MANMOHAN

                           JUDGMENT

MANMOHAN, J:

1. Present suit has been filed seeking injunction to restraining infringement of trademark, passing off, rendition of accounts of profits, damages and delivery up. The prayer clause in the suit is reproduced hereinbelow:-

"27. It is, therefore, prayed that the following reliefs may be granted to the Plaintiff:

a) An order for permanent injunction restraining the Defendants, their partners, proprietors, servants, agents and all others in active concert or participation with them from selling, offering for sale, advertising, directly or indirectly

dealing in goods and services that are identical or deceptively similar to the services of the Plaintiff under the trademark and trade name "CENTRUY 21", as that being used by the Plaintiff or passing off their goods as those of the Plaintiff or doing business in a manner as may suggest a connection or association with the Plaintiff.

b) An order for permanent injunction restraining the Defendants, their partners, proprietors, servants, agents and all others in active concert or participation with them from selling, offering for sale, advertising, directly or indirectly dealing in goods and services which infringe the Plaintiff‟s trademark in the "CENTURY 21" mark, or any substantial part thereof.

c) An order for rendition of accounts of profits directly or indirectly earned by the Defendants from the infringing activities, passing off and wrongful conduct and a decree for the amount so found due to be passed in favour of the Plaintiff.

d) An order for delivery up to the Plaintiff by the Defendants of all printed matter, advertising material, etc. bearing the Plaintiff‟s trademarks for the purposes of erasure/destruction.

e) A sum of Rs.20,01,600/- for a decree of damages as valued for the purposes of this suit towards loss of sales, reputation and goodwill of the Plaintiff‟s trademarks caused by the activities of the Defendants.

f) An order as to the costs of the proceedings.

Any further order as this Hon‟ble Court may deem fit and proper in the facts and circumstances of the case."

2. At the outset, learned counsel for plaintiff gives up prayers 27

(c) and (d) of the prayer clause to the suit. The statement made by learned counsel for plaintiff is accepted by this Court and the plaintiff is held bound by the same.

3. Vide order dated 28th May, 2015 this Court granted an ex-parte ad interim injunction in favour of the plaintiff and against the defendants and the same was confirmed till disposal of the suit vide order dated 5th April, 2018. The relevant portion of the ex-parte ad interim injunction order is reproduced hereinbelow:-

"Till the next date of hearing, defendants, their partners, proprietors, servants, agents and all other in active concert or participation with them from selling, offering for sale, advertising, including their website, directly or indirectly dealing in goods and services that are identical or deceptively similar to the services of the plaintiff under trademark/trade name „CENTUARY 21‟ as that being used by the plaintiff or passing of their goods and services as those of the plaintiff."

4. Since despite service the defendants did not appear, vide order dated 5th April, 2018, they were proceeded ex parte.

5. In the plaint, it has been averred that the plaintiff company is a wholly owned subsidiary of Realogy group LLC and is a limited liability company organized and existing under the laws of State of Delaware, USA. It is stated in the plaint that the plaintiff is engaged in the business of franchising its brand for use in connection with real estate sales and is amongst the largest brokerage firms in the world.

6. It is sated that the plaintiff conceived and adopted the trademark/ trade name "CENTURY 21" in 1971 as its corporate name in the United States of America and the same has been continuously in use ever since. It is stated by virtue of its adoption over forty years ago, the trademark/ trade name "CENTURY 21" has become exclusively associated with the plaintiff.

7. It is stated that the plaintiff with a view to expand its business in India entered into a master franchise agreement in October 2007 and operates under the name and style M/s. Century 21 Properties India Pvt. Ltd. It is stated that the plaintiff also operates the website http;//www.century21.in/., which was incorporated on 26th July, 2011.

8. It is stated that the plaintiff is the registered proprietor of the trademark "CENTURY 21" under class 16 of the Trade Marks Act, 1999.

9. Learned counsel for the plaintiff states that in May, 2015, the plaintiff received information from M/s. Century 21 Properties India Pvt. Ltd. about the use of CENTURY 21 REALTY as a corporate and trade name by the defendants. She states that a search on the internet revealed that the defendants also run and maintain a website www.centure21realty.in. She states that the said domain name has been directed to be transferred to the plaintiff vide order dated 27 th April, 2017 in OMP(COMM) 370/2016.

10. She states that a preliminary search on the internet revealed that the defendant nos.1 and 2, run and operate real estate brokerage services through defendant no.3 Company and provide services in Delhi and NCR region, Kolkata, Bhubaneshwar, Durgapur and Bangalore.

11. Learned counsel for the plaintiff states that the defendant no.3 has also applied for registration of the mark "CENTURY 21" under class 36 of the Trademarks Act, 1999.

12. Learned counsel for the plaintiff states that the defendants have adopted and started using the impugned mark trademark/trade name

dishonestly, fraudulently with a view to take advantage of and trade upon the established good will, reputation and proprietary rights of the plaintiff in their trade mark/ name "CENTURY 21".

13. The plaintiff has filed its ex parte evidence by way of affidavit of Mr. Vishal Vig (PW1) constituted attorney of the plaintiff company.

14. The plaintiff's witness (PW1) has proved trade mark registration as Ex.PW1/24. The plaintiff's witness has also proved goodwill and reputation in their trademark in the mark "CENTURE 21" through various third-party articles and newspaper reports as Ex PW1/26.

15. The plaintiff's have also filed a notarized copy of the master franchise agreement for India in their evidence as Ex PW1/9. The value of the franchise agreement is much higher than Rs 20,00,000/-.

16. Having heard learned counsel for plaintiff as well as having perused the papers, this Court is of the view that the defendants have adopted a similar mark to that of the plaintiff. Further this court is of the view that the possibility of confusion is greater as both the plaintiff and the defendants use the same mark for identical field of services.

17. As the plaintiff's evidence has gone unrebutted, said evidence is accepted as true and correct. The plaintiff has established reputation and goodwill in India. The Supreme Court in Ramesh Chand Ardawatiya Vs. Anil Panjwani, AIR 2003 SC 2508 has held as under:-

"33. .........In the absence of denial of plaint averments the burden of proof on the plaintiff is not very heavy. A prima facie

proof of the relevant facts constituting the cause of action would suffice and the court would grant the plaintiff such relief as to which he may in law be found entitled. In a case which has proceeded ex parte the court is not bound to frame issues under Order 14 and deliver the judgment on every issue as required by Order 20 Rule 5. Yet the trial court should scrutinize the available pleadings and documents, consider the evidence adduced, and would do well to frame the "points for determination" and proceed to construct the ex parte judgment dealing with the points at issue one by one. Merely because the defendant is absent the court shall not admit evidence the admissibility whereof is excluded by law nor permit its decision being influenced by irrelevant or inadmissible evidence."

18. Accordingly, present suit is decreed in accordance with the paragraph 27 (a) and (b) of the plaint along with the actual costs incurred by the plaintiff. The cost shall amongst others include the lawyers' fees as well as the amounts spent on purchasing the court fees. The plaintiff is also held entitled to compensation of Rs.20,00,000/-. Registry is directed to prepare a decree sheet accordingly. Consequently, the present suit and application stand disposed of.

MANMOHAN, J JULY 23, 2018 rn/sp