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IN THE
HIGH COURT OF DELHI AT NEW DELHI
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Date of decision: 17th April, 2020
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22nd November,
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2019
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CS(COMM) 74/2019
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KELLER WILLIAMS REALTY, INC.
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..... Plaintiff
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Through:Mr. Ajay
Sahni,
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Mr.
Himanshu
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Deora, Mr.
Sumit Kumar and
Mr.
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Naqeeb
Nawab, Advs.
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Versus
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DINGLE BUILDCONS PVT. LTD. & ORS.
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..... Defendants
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Through:Mr.
Akhil Sibal, Sr. Adv. with Mr.
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S.K. Bansal,
Mr.
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Ajay Amitabh
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Suman, Mr.
Shantanu Parasher and
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Ms.
Shriya Misra, Advs. for D-1.
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CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.2111/2019 (of plaintiff u/O
XXXIX R-1&2 CPC)
1.
The plaintiff has instituted this
suit for permanent injunction to restrain the three defendants namely (a)
Dingle Buildcons Pvt. Ltd., (b) KW Homes Private Limited and (c) KW Security
and Services Private Limited, from infringing the trade mark of the plaintiff
and passing off their services as that of the plaintiff, and for ancillary
reliefs.
2.
It is the case of the plaintiff,
(i) that the plaintiff, incorporated and existing under the laws of the State
of Texas, United States of America (USA), is an American International Real
Estate Franchisor, founded as far back as in the year 1983 and today having
approximately 900 franchisees with over 1,70,000 associates, worldwide; (ii)
that the plaintiff is one of the
CS(COMM) 74/2019 Page 1 of
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largest privately held global residential real
estate brokerages; (iii) that the plaintiff conducts and operates its real
estate affairs business on worldwide
basis,
under the famous and distinctive trade marks „KW‟,
and/or „KELLER WILLIAMS‟, through various
agents/entities including wholly owned subsidiaries, agents, franchisees and
associates; (iv) that the plaintiff is aggrieved from adoption by the
defendants of identical and/or deceptively similar marks in respect of
identical and/or similar services inter
alia of insurance, financial affairs,
monetary affairs, real estate affairs, advertising,
business management, business administration, office functions etc.; (v) that
the plaintiff honestly adopted the inherently distinctive trade mark „KW‟ as an
abbreviation for „Keller Williams‟ and the trade mark „KW‟ has become solely
associated with the plaintiff; (vi) that the plaintiff has been using the said
mark either in stand alone manner or in conjunction with its other marks; (vii)
that the plaintiff has got the said mark „KW‟ registered in a large number of
countries; (viii) that in India, the plaintiff applied for registration of „KW‟
and „KELLER WILLIAMS‟ in Classes 35 & 36, on 2nd March, 2012 and the said
registrations were granted; (ix) that the plaintiff also has common law rights
in the said „KW‟ marks; (x) that owing to extensive use and campaigns across
the public worldwide, „KW‟ marks have garnered immense goodwill and reputation
across Indian public staying abroad as well as in India; the plaintiff has
served various Non-Resident Indian (NRI) clients and has trained various agents
resulting in spillover of reputation in India as well; the plaintiff has various
real estate agents of Indian origin or NRI‟s, as Keller Williams Signature
Agents; (xi)
CS(COMM) 74/2019 Page 2 of
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that the plaintiff is also the owner of domain
names www.kw.com and www.kwworldwide.com, since the year 1995 and 2005 respectively; (xii) that the plaintiff
also has a worldwide presence on social networking sites;
(xiii)
that the defendant No.1 applied
for registration of its new logo in Class 08 and to which opposition was filed
by the plaintiff and from reply of the defendant No.1 whereto, the plaintiff
learnt of uses by the defendants of the said mark; (xiv) however, the said use
by the defendants is very recent and miniscule and the defendant No.1 has
failed to file evidence to show use of the impugned marks since 2006, as
claimed in its application; (xv) that prior thereto, in March, 2013 also,
attention of the plaintiff was drawn to another application of the defendant
No.1 in Class 36 for registration of „KW‟, when
the said application was cited as a prior pending
application in the examination report dated 14th March, 2013 with respect to the
plaintiff‟s application for registration of the mark „KW‟ in Class 36; at about
the same time, the defendant No.1 filed another application which was also
cited in response to the plaintiff‟s application as a prior pending applications;
(xvi) that the said applications had been filed by the defendant No.1 on 5th November, 2009, claiming use
from 1st April, 2006; (xvii) that during research, the plaintiff learnt of the
other registrations applied for by the defendants on 5th November, 2009 and obtained by
the defendants, also claiming user since 1st April, 2006; however, since the plaintiff‟s application for registration
was accepted, the plaintiff did not then pursue the matter, especially since no
use by the defendants of the said mark was found; (xviii) that the plaintiff
has thereafter filed opposition to the other applications filed by the
defendants and filed Rectification Petitions to the registrations obtained by
the defendants; (xix) that the defendant No.1 claims to have
CS(COMM) 74/2019 Page 3 of
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current projects
by the name „KW SRISHTI‟, 
and
„KW
and
„KW
Delhi 6‟ 
in Ghaziabad; (xx) that the defendant No.2 KW
Homes Private Limited has been incorporated in the year 2012 and the defendant
No.2 and defendant No.3 claim to be part of KW Group; (xxi) that the plaintiff
has now learnt of the defendants having launched „KW Blue Pearl, a commercial complex
at Karol Bagh, New Delhi; (xxii) that the conduct of the defendants, of filing
multiple applications, shows a false claim of user; and, (xxiii) that adoption
and use by the defendants of the impugned „KW‟ marks which are identical and/or
deceptively similar to the plaintiff‟s marks, not only infringe the plaintiff‟s
mark but also convey the services of the defendants to be originating from the
plaintiff.
in Ghaziabad; (xx) that the defendant No.2 KW
Homes Private Limited has been incorporated in the year 2012 and the defendant
No.2 and defendant No.3 claim to be part of KW Group; (xxi) that the plaintiff
has now learnt of the defendants having launched „KW Blue Pearl, a commercial complex
at Karol Bagh, New Delhi; (xxii) that the conduct of the defendants, of filing
multiple applications, shows a false claim of user; and, (xxiii) that adoption
and use by the defendants of the impugned „KW‟ marks which are identical and/or
deceptively similar to the plaintiff‟s marks, not only infringe the plaintiff‟s
mark but also convey the services of the defendants to be originating from the
plaintiff.
3.
The suit first came up before
this Court on 11th February, 2019, when though the same was entertained but no ex-parte injunction sought granted.
4.
The
senior counsel for
the defendants, when
appeared on 25th
February, 2019 pointed out that the plaintiff, in
its response to the objection raised by the Registrar of Trade Marks with
respect to the prior pending applications of the defendants, took a stand that
there was no likelihood of confusion because the mark of the plaintiff was used
for services relating to franchising, namely, offering technical assistance in
the establishment and/or operation of real estate brokerages while the
defendants were engaged in advertising, business management, business
administration, office functions and due to difference in the nature of
services and absence
CS(COMM) 74/2019 Page 4 of
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of any commonality of trade channels, there was no
possibility of confusion. Though the senior counsel for the plaintiff on that
date stated that the plaintiff along with the documents filed with the plaint
had filed the documents in this regard but admitted that there was no reference
in the plaint to the explanation given by the plaintiff to the Registrar of
Trade Marks. In this view of the matter, it was felt that the application for
interim relief be heard after the pleadings are completed.
5.
The three defendants have
contested the suit by filing a joint written statement pleading that, (i) the
plaintiff has based its rights on registered trade mark „KW‟ in Class 35 dated
2nd March, 2012; (ii) the defendants are also registered proprietor of
various KW formative trade marks in Classes 14, 16, 17, 20, 21, 28, 35, 36, 37,
41 & 42; (iii) the defendants have KW formative trade marks registered in
Class 35 effective since 8th August, 2011; (iv) thus, under Section 28(3) of the Trade Marks Act,
1999, the suit, insofar as for reliefs on the basis of infringement, is not
maintainable; (v) to be entitled to injunction on the claim of passing off, the
plaintiff has to establish not only prior user but also continuous extensive
user and tremendous goodwill and reputation and which the plaintiff has failed
to make out; (vi) the defendants are using various other words with KW, making
it quite distinctive from the impugned trade mark of the plaintiff; the
added matter in the defendants‟ trade mark / trade
name / label are sufficient to defeat any chance of confusion; (vii) the trade
mark applications filed by the plaintiff in India, since 2nd March, 2012 are on proposed to
be used basis, indicating that the plaintiff has no user at all in India;
(viii) neither the plaintiff has used the KW trade mark in India nor has any
intention to do so; (ix) the registration obtained by the plaintiff is invalid
on account of non-
CS(COMM) 74/2019 Page 5 of
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user thereof and is liable to be removed under
Section 47 of the Trade Marks Act, 1999; (x) there is no possibility of
deception or confusion; (xi) when the plaintiff applied for registration in
Class 35, the Trade Mark Registry raised objection in view of the prior trade
mark applications filed by the defendants; the plaintiff in reply to the said
objection of the Trade Mark Registry stated that its “proposed mark is used for
services relating to Franchising namely, offering technical assistance in the
establishment and/or operation of real estate brokerages. It is therefore
submitted that the services of the Applicant (plaintiff herein) are different
from the services as applied for, by the above cited party (the defendants
herein)”; (xii) in view of the said admission of the plaintiff, there is no
question of any confusion or deception or passing off; (xiii) the defendants
also have copyright registrations in their favour; (xiv) the plaintiff is
guilty of suppression of this material fact from this Court; (xv) the
plaintiff, in the plaint has also wrongly pleaded cause of action to have accrued
in last week of November, 2018, with a view to obtain ex-parte injunction against the defendants; the plaintiff, since objection
vide Examiner‟s Report dated 30th January, 2013 raised by the Registry citing the defendants‟ trade mark
application dated 5th November, 2019, is aware of the defendants‟ trade mark „KW‟ at least
since its reply dated 20th May, 2013; (xvi) the present suit is liable to be dismissed only on the
ground of suppression and wrong pleading; (xvii) the plaintiff has acquiesced
in the user of the defendants; (xviii) the defendants have adopted the trade
mark „KW‟ from surname of late Umadhar KesarWani;
(xix)
the defendants were not aware of
the trade mark of the plaintiff at the time of adoption and use of the said
trade mark since the year 2006; (xx) the trade mark applications filed by the
defendants in the year 2009 were
CS(COMM) 74/2019 Page 6 of
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abandoned owing to a communication gap between the
defendants and their lawyers; (xxi) the defendants never abandoned their rights
in the trade mark and again filed the trade mark applications in the year 2011
and 2016 respectively and most of them were registered; (xxii) the plaintiff
has filed Cancellation Petitions against the registered trade marks of the
defendants and which are pending; (xxiii) the defendants are the honest and
prior adoptor and continuous and extensive user of the subject mark; (xxiv) KW
is a brain child of Umadhar KesarWani who ventured in the real estate business,
initially as a broker in the year 1998 and, in the year 2001 got incorporated
Madhyam Constructions Co. Pvt. Ltd.; in the year 2003 incorporated Madhyam
Housing Solutions Pvt. Ltd.; Madhyam Housing Private Limited and in the year
2006 Accurate Infra Private Developers Private Limited, Becon Constructions
Private Limited and Dingle Buildcons Private Limited.; (xxv) In January, 2017,
a mall by the name of „KW Blue Pearl‟ was launched at a plot acquired by
Umadhar KesarWani in Delhi in the name of Madhyam Housing Pvt. Ltd.; (xxvi)
later on, Umadhar KesarWani launched various projects like „KW Srishti‟ and „KW
Delhi 6‟ and also various other companies comprising of the word „KW‟; (xxvii)
the word „KW‟ remains the most essential indicator of the various projects and
is used in relation to goods and services; (xxviii) in 2010, K World Developers
Private Limited, KW Power Private Limited, KW Securities and Services Private
Limited Ltd., KW Agro Pvt. Ltd. and K World Estate Private Limited, in the year
2012, KW Infrabuild Private Limited, KW Homes Private Limited and KW Buildcons
Private Limited, in the year 2015, KW Dream Homes Consortium Private Limited,
were incorporated; (xxix) the trade mark „KW‟ has been used by the defendants
as most
CS(COMM) 74/2019 Page 7 of
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essential feature of their trading style; and, (xxx) the defendants have
a large customer base over all their projects.
6.
Though the plaintiff has filed
replication to the written statement aforesaid but need to refer thereto is not
felt.
7.
The counsels were heard on the application for
interim relief on 19th
November,
2019 and have been heard further today.
8.
The counsel for the plaintiff has
argued, that (a) the plaintiff adopted the mark in the year 1994 and has been
using the same for their business of rendering brokerage services in real
estate; (b) the plaintiff has no business in India but targets Indians for
projects; (c) the plaintiff has a website since the year 1995 and which appears
on the Indian section of the Search Engine Google and has a large number of
hits from India; (d) though the plaintiff, while applying for registration as
trade mark in Class 35 in the year 2012, applied on proposed to be used basis
but the affidavit accompanying the application for registration disclosed the
user of the mark by the plaintiff; (e) the defendants have registration of
2016, claiming user since 2006; (f) the defendants are builders and have used
KW in respect of three of their projects, of which two are under construction;
(g) the explanation offered by the defendants, of having adopted the mark „KW‟
from the surname
KesarWani of their promoter is contrary to the
representation made by the defendants to the Ministry of Corporate Affairs, on
8th May, 2010 when required to state the significance if any of the key or
coined word in the proposed name of K World Developers Pvt. Ltd., to the effect
that alphabet „K‟ stood for „Kesarwani‟ and „W‟ for „World‟; (h) the
explanation offered by the defendants in the written statement for adoption of
KW is also
CS(COMM) 74/2019 Page 8 of
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contrary to the brochure of the defendants, of the
alphabets „KW‟ having been taken from the mission of the defendants of “crafting
the world”; (i)
attention is invited to the logo 
used
by the defendants and it is stated that the plaintiff would have no objection
to use by the defendants of „KWK‟; (j) that the defendants were not using the
mark „KW‟ earlier and have started using the same now only; and, (k) that the
plaintiff is the prior adopter of the mark.
used
by the defendants and it is stated that the plaintiff would have no objection
to use by the defendants of „KWK‟; (j) that the defendants were not using the
mark „KW‟ earlier and have started using the same now only; and, (k) that the
plaintiff is the prior adopter of the mark.
9.
The counsel for the plaintiff,
after hearing, has handed over compilation of following judgments under the
following heads:
Trans-border reputation and
goodwill / Malafide adoption
1.
Mac Personal Care Pvt. Ltd. Vs.
Laverana Gmbh and Co. Kg. 2016 (65)
PTC 357 (DB)
2.
Staples Inc. Vs. Staples Paper
Converters Pvt. Ltd. 2015 (61) PTC 207 (Del)
3.
H&M Hennes & Mauritz AB
Vs. HM Megabrands Pvt. Ltd. 2018 (74)
PTC 229 (Del)
4.
Cadbury UK Limited Vs. Lotte
India Corporation Ltd. 2014 (57) PTC 422
5.
Icrave LLC Vs. Icrave Designs
Pvt. Ltd. 2013 (53) PTC 323 (Del)
Wrong date
of use in the registration is a ground for cancellation of registration
CS(COMM) 74/2019 Page 9 of
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6.
Suresh Kumar Jain Vs. Union of
India 2012 (49) PTC 287 (Del)
Infringement against registered
proprietor is maintainable
7.
Dabur India Ltd. Vs. Alka
Ayurvedic Pvt. Ltd. 2018 (73) PTC 517
8.
Raj Kumar Prasad Vs. Abbott
Healthcare Pvt. Ltd. 2014 (60) PTC 51 (Del)
Classification
of goods & services is merely for administrative purpose
9.
FDC Limited Vs. Docsuggest
Healthcare Services Pvt. Ltd. 2017 (69)
PTC 218 (Del)
10.
Allied Auto Accessories Ltd. Vs.
Allied Motors Pvt. Ltd. 2003 (27)
PTC 115 (Bom)
11.
Insecticides (India) Limited Vs.
Parijat Industries (India) Pvt. Ltd. 2018 (75)
PTC 238 (Del).
10.
Per contra, the senior counsel for the defendants
has contended (i) that
the plaintiff, while applying on 2nd March, 2012 for registration of
the word mark „KW‟, against the column, “User Detail” stated “proposed to be
used” and sought registration for the service of “franchising, namely offering
technical assistance in the establishment and/or operation of real estate
brokerages”; (ii) that since then no business has been initiated by the
CS(COMM) 74/2019 Page 10
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plaintiff, the proposal for use has not come into
effect; (iii) that the matter at this stage has to be considered from the
aspect of one registered proprietor against other; (iv) that the registrations
in favour of the defendant No.1 of
the device mark 
dated
17th October, 2016 with user since 1st April, 2006 in Class 36, is in the services of insurance, financial
affairs, monetary affairs, real estate affairs and dated 17th October, 2016 with user since 1st April, 2006 in Class 37 is for
the services of building constructions, repair, installation services including
builders and developers, land developments, property development, construction
and civil interior, repairs and civil works; (v) therefore while the
plaintiff‟s registration is limited in scope, the defendants‟ is wider; (vi)
that once both, plaintiff and the defendants have registration per se, there is
no invalidity; (vii) that the plaintiff does not have a case of infringement
under Section 29(1)&(2) and Section 30(2)(e) of the Trade Marks Act; (viii)
that under Section 124 of the Trade Marks Act, a suit for infringement is
maintainable provided the registrations are challenged; (ix) however the Court
has to prima facie go into the
question of validity; (x) that the plaintiff has not used the mark in India
till now; (xi) that the defendants are a prior user of the mark, notwithstanding
the registration in favour of the plaintiff being earlier in point and time;
(xii) attention is drawn to page 1581 of defendants documents, being an
advertisement in newspaper published on 26th August, 2010, of KW Srishti, Ghaziabad as well as to other newspaper
advertisements published at that time, of KW Srishti; (xiii) attention is
similarly drawn to the advertisements in the newspaper of KW Srishti
dated
17th October, 2016 with user since 1st April, 2006 in Class 36, is in the services of insurance, financial
affairs, monetary affairs, real estate affairs and dated 17th October, 2016 with user since 1st April, 2006 in Class 37 is for
the services of building constructions, repair, installation services including
builders and developers, land developments, property development, construction
and civil interior, repairs and civil works; (v) therefore while the
plaintiff‟s registration is limited in scope, the defendants‟ is wider; (vi)
that once both, plaintiff and the defendants have registration per se, there is
no invalidity; (vii) that the plaintiff does not have a case of infringement
under Section 29(1)&(2) and Section 30(2)(e) of the Trade Marks Act; (viii)
that under Section 124 of the Trade Marks Act, a suit for infringement is
maintainable provided the registrations are challenged; (ix) however the Court
has to prima facie go into the
question of validity; (x) that the plaintiff has not used the mark in India
till now; (xi) that the defendants are a prior user of the mark, notwithstanding
the registration in favour of the plaintiff being earlier in point and time;
(xii) attention is drawn to page 1581 of defendants documents, being an
advertisement in newspaper published on 26th August, 2010, of KW Srishti, Ghaziabad as well as to other newspaper
advertisements published at that time, of KW Srishti; (xiii) attention is
similarly drawn to the advertisements in the newspaper of KW Srishti
CS(COMM) 74/2019 Page 11
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published in the year 2012; (xiv) that therefore
Section 34 of the Trade Marks Act saving the rights of the first user, applies
in the present case; (xv) attention is invited to Section 47 of the Act
providing for removal from registration of the mark, for non-user thereof;
(xvi) that though the plaintiff has not shown trans-border reputation in India
in 2010, but even if were to be held so, prima
facie, the plaintiff has not shown any goodwill with respect to the same
and which is sine qua non for an
action for passing off;
(xvii)
that having a reputation is
different from having a goodwill; (xviii) that goodwill can be culminated only
from carrying on business and the plaintiff has no business in India; (xix)
reliance is placed on (a) Kerly’s Law
of Trade Marks and Trade Name, 15th Edition (b) Wadlow’s Law of Passing Off:
Unfair Competition by Misrepresentation 4th Edition (c) Starbucks (HK) Limited Vs. British Sky Broadcasting Group PLC 2015 UKSC
31 (d) Toyota Jidosha Kabushiki Kaisha Vs. Prius Auto Industries Limited
(2018) 2 SCC 1 (e) Intex Technologies (India) Ltd. Vs. AZ Tech
(India) 2017 SCC OnLine Del 7392 (DB) (f) Veerumal Praveen Kumar Vs.
Needle Industries (India) Ltd. (2001) 93 DLT 600 (g) Neon
Laboratories Limited Vs. Medical Technologies Ltd. (2016) 2 SCC 672 (h) L.D.
Malhotra Industries Vs. Ropi Industries 1975 SCC OnLine Del 172 (i) S.
Syed Mohideen Vs. P. Sulochana Bai (2016) 2 SCC 683 (j) Roca
Sanitario S.A. Vs. Naresh Kumar Gupta 2010 SCC OnLine Del 1135 (k)
judgment dated 2nd May, 2012 in Roca Sanitario S.A. Vs. Naresh Kuamr Gupta
(FAO(OS) 289/2010) and (l) judgment dated 22nd October, 2019 in Roca Sanitario S.A. Vs. Naresh Kumar
Gupta (CS(COMM) No.172/2018), to contend that, a passing off action
cannot be maintained in the absence of the mark having sufficient goodwill or
reputation in India, no injunction has
CS(COMM) 74/2019 Page 12
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been granted where the plaintiff is not using the
mark in India and that, the principle of „owner or prior user worldwide‟ of the
mark is not relevant for passing off; and, (xx) that an action for passing off
is not concerned with the rights in the mark but with possibility of confusion
and deception.
11.
The counsel for the plaintiff, in
rejoinder has (a) drawn attention to the emails received by the plaintiff from
Indians in India wanting to become franchisee / agent of the plaintiff and has
contended that the same shows that people in India know of the plaintiff; (b)
drawn attention to the summary of the hits from India on the website www.kw.com of the plaintiff; (c) contended
that the Division Bench of this Court in Mac Personal Care Pvt. Ltd. supra
held (i) that anything done at a commercial level should suffice to achieve
the prima facie satisfaction unless
it can be called de minimis or
trivial; (ii) that trans-border reputation essentially means that a plaintiff
wishing to enforce its unregistered trade mark in India need not necessarily
have a commercial use in the Indian market in order to maintain an action for
passing off; international reputation and renown may suffice if the same spills
over to India; (iii) that registrations in multiple jurisdictions create
stronger presumption of reputation in favour of the plaintiff; and, (iv) that
if user inception is dishonest, subsequent concurrent user will not purify
dishonest intention; (d) stated that though the registration of the defendants
is KW Srishti but the defendants are using KW Group; (e) drawn attention to Suresh
Kumar Jain supra where a Division Bench, of which I was a part,
dismissed an appeal against the order of Intellectual Property Appellate Board
(IPAB) of cancellation of registration owing to lack of evidence to show that
the mark of which registration with earlier user was obtained, was not in use;
(f) argued that though the defendants, at the time of obtaining
CS(COMM) 74/2019 Page 13
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registration claimed user since 2006, but have been
unable to produce a single document of use since 2006; and, (g) argued that
Section 28 of the Trade Marks Act is subject to other provisions of the Act.
12.
I have considered the rival
contentions, only for the purposes of the application for interim relief, and
am of the opinion that the plaintiff is not entitled to any interim relief for
the following reasons:
(A)
Though, the Supreme Court in Neon
Laboratories Ltd. supra and in Milmet Oftho Industries Vs. Allergan Inc.
(2004) 12 SCC 624 applied the „first in the market‟ test and held that the mere
fact that the plaintiff had not been using the mark in India would be
irrelevant if they were first in the world market, but the same, in Milmet
Oftho Industries supra was held in the context of drugs and medicinal products
and after holding the field of medicine to be of an international character and
in Neon
Laboratories Ltd., again in the context of drugs and medicinal products,
and after finding, the defendant, though to be a prior registrant having not
used the mark till
after registration and commencement of use of the
mark by the plaintiff therein. Thereafter, in Toyota Jidosha Kabushiki Kaisha
supra, after noticing the view in Milmet Oftho Industries supra, final
decree in a suit for permanent injunction restraining passing off was declined,
holding (a) that the plaintiff was first worldwide user of the mark but the
defendants were the first user of the mark in India; (b) that the first use by
the plaintiff outside India of the mark did not have much reportage in India;
(c) that the territoriality doctrine (a trade mark being recognised as having a
separate existence in each
CS(COMM) 74/2019 Page 14
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sovereign country) holds the field; (d) that prior
use of the trade mark in one jurisdiction would not ipso facto entitle its owner or user to claim exclusive rights to
the said mark in another dominion; (e) that it is necessary for the plaintiff
to establish that its reputation has spilled over the Indian market prior to
the commencement of the use of the trade mark by defendants in India and which
was not established in that case; (f) the test of possibility/likelihood of
confusion would be valid in a qua timet action and not at the stage of final
adjudication of the suit, at which stage the test would be one of actual
confusion and in which respect no evidence had been led by the plaintiff; (g)
that it is essential for the plaintiff in a passing off action, to prove his
goodwill, misrepresentation and damages; the test is whether a foreign claimant
has a goodwill in India; if there are customers for the product of the foreign
claimant in India, then the foreign claimant stands in the same position as a
domestic trader; and, (h) else what has to be seen is whether there has been a
spill over of the reputation and goodwill of the mark used by the foreign
claimant, into India; if goodwill or reputation in India is not established by
the plaintiff, no other issue really would need any further examination to
determine the extent of plaintiff‟s right in an action for passing off.
(B)
Applying the aforesaid law, (i)
the present case is not concerned with field of medicine, which was held to be
of an international character; (ii) the plaintiff herein, till date has no
business, customers, agents or franchisees in India and has not been
instrumental in establishment and/or operation of any real estate brokerage in
India; (iii) save for producing e-mails from some Indians
CS(COMM) 74/2019 Page 15
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expressing interest in becoming agents of the
plaintiff in India, the plaintiff has not been able to show spill over of its
reputation and goodwill in India; (iv) the business of brokerage in real
estate, in India is very different from the said business in USA; a distinct
from USA, in India, no qualifications or permissions are required for setting
up a business of real estate brokerage and the said business is not regulated;
(v) though certain foreign brands as Coldwell Banker, RE/MAX, Jones Lang
LaSalle, Cushman and Wakefield have entered the business of real estate
brokerage in India but the plaintiff, in spite of obtaining registration of its
trade mark in India nearly 8 years back in the year 2012 with intention to set up
business in India, has till date not entered India; (vi) there are no rights in
a trade mark without use/utilization thereof; (vii) mere ownership or even
registration of a mark does not lead to any presumption of the mark having a
reputation and goodwill, even in the territories where the mark is being used;
the plaintiff, while applying for registration of the mark, did not claim any
use, in India, of the mark, by spill over of reputation and goodwill from
another territory to India; the plaintiff has not made out any case of any use
or spill over of goodwill and reputation, since registration; and, (viii) the
plaintiff, even at this stage, without establishing before this Court
reputation and goodwill outside India and such reputation and goodwill having
spilled over to India, prima facie, cannot restrain the defendants
from passing off their services as that
of the plaintiff or infringing its trade mark. The plaintiff has failed to make
out a prima facie case.
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(C)
The business of real estate
brokerage is very different and distinct from the business of development and
construction of real estate. The plaintiff does not claim to be in business of
or having reputation and goodwill in the construction and development of real
estate. Rather the plaintiff does not even claim to be carrying on business of
real estate brokerage. The plaintiff describes itself as a real estate
franchisor. The plaintiff itself on 20th May, 2013 while responding to the objections in the examination report
of the Trade Mark Registry to the application of the plaintiff for registration
of the mark, took a stand that the business of advertising, business
management, business administration and offices functions for which the
defendant no.1 had applied for registration of the same mark prior to the
plaintiff was very distinct and different from the business of
franchising/offering technical assistance in the establishment and/or operation
of real estate brokerage for which the plaintiff had applied for registration.
The defendants even today are not pleaded to be in the business of franchising
or providing technical assistance for real estate brokerage. The position thus
remains the same as on 20th May, 2013. When the plaintiff then had not objection to defendants also
using the „KW‟ marks, there is no reason, why today. From the response dated 20th May, 2013 aforesaid of the
plaintiff, it is clear that the plaintiff had no objection to use by the
defendants or by others of the same mark as the plaintiff i.e. KW, as long as
for businesses other than the business for which the plaintiff intended to use
the said mark. The plaintiff cannot be entitled to restrain the defendants
without establishing by evidence how today there is a possibility of confusion
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and deception by the defendants, in the business of
real estate development and construction, using the KW formative marks
registered in favour of the plaintiff, as part of their device/logo mark.
Without the plaintiff establishing the tort, of the defendants, by confusing
the customers, passing off the properties developed by the defendants as those
from the plaintiff, cannot be entitled to any relief on the ground of passing
off.
(D)
The marks of the defendants, to
which objection is taken by the plaintiff, at least at this stage, cannot be
said to be similar or deceptively similar to the marks of the plaintiff. While
the plaintiff is using merely the alphabets „KW‟ or together with Keller
Williams, the defendants are using the same in conjunction with, either „Blue
Pearl‟ or „Srishti‟ or „Delhi-6‟ or in corporate names, in conjunction with „Power
Pvt. Ltd.‟ or „Securities and Services Pvt. Ltd.‟ or „Agro Pvt. Ltd.‟ or „Infrabuild
Pvt. Ltd.‟ etc. and which is sufficient to distinguish the two.
(E)
When the plaintiff chose to use
bare alphabets „KW‟ as its mark, the possibility of another using the same
alphabets, is inherent, as the plaintiff also conceded in its reply dated 20th May, 2013 supra. The plaintiff
then, on learning of the same, did not feel the need to oppose the application
of the defendants for registration or to restrain the defendants from, even if
then not in use, commencing use thereof, specially since the plaintiff also,
though then not using, proposed to use identical mark. The same is sufficient
to deny interim relief of plaintiff.
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(F)
At least, at this stage it
appears that the plaintiff is also guilty of delay and latches. The plaintiff,
in the plaint admits knowledge in March, 2013 of the claim of the defendants of
use of the mark since 2006 and the application filed by the defendants prior to
the plaintiff for registration of the said mark. However the plaintiff, instead
of opposing the said application of the defendants or immediately suing the
defendants in 2013 itself to restrain the defendants from using the said mark,
was content with obtaining registration in its own favour. The defendants have
placed before this Court advertisement published in Delhi newspapers of their
project KW Srishti in the years 2010 and 2012 i.e. prior to 2013 when the
plaintiff admits to have become aware of the defendants. There is no
explanation why the plaintiff, on becoming so aware in March 2013, did not
enquire into the operations and extent of operations and which would have
revealed the project KW Srishti of the defendants, even if the plaintiff was
not aware of the same earlier. The plaintiff has thereby allowed the defendants
to launch other projects with KW brand and thereby acquiesced in use of the
mark at least from 2013 till 2019, by the defendants. The same also disentitles
the plaintiff to any interim injunction.
(G)
Since the plaintiff till date has
no business in India, the question of the plaintiff suffering any irreparable
loss and injury does not arise and the balance of convenience is also in favour
of the defendants. The consumers of the projects of the defendants under the KW
brand, who use the same as their address, would also be affected by any
injunction granted and all of which cannot be reversed in the event of the
plaintiff ultimately failing in the suit. On the contrary, if the
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plaintiff ultimately succeeds in the suit, the
defendants can always be injuncted then and the mere fact that the defendants
during the pendency of the suit have continued use of the mark, would not be of
any avail, as the expansion if any by the defendants of use of the impugned
marks, would be at their own peril.
(H)
Though the explanation of the
defendants of the reason for the use of alphabets „KW‟ does not inspire
confidence and is also contrary to the stand of the defendants themselves, of
KW standing
for “Kesarwani World”, however the same alone would
not entitle the plaintiff to injunction without making out at least a prima facie case for infringement or
passing off.
13.
Resultantly, the application of
the plaintiff being IA No.2111/2019 for interim relief is dismissed.
CS(COMM) No.74/2019
14.
List for framing of issues if any
and for consideration of other pending applications, on 27th July, 2020.
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APRIL 17, 2020
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RAJIV SAHAI ENDLAW, J.
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NOVEMBER 22, 2019
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„bs/ak‟
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