recently, International real estate franchisee based in the United States Keller Williams Realty Inc. Claiming that an internationally used trademark had been counterfeited by an Indian company. In this interesting case, The Delhi High Court reiterated Prius case［ (2018) 2 SCC 1］Case law. The court stated that, The party claiming prior international use and having a cross-border reputation in India has an obligation to prove that it has in India "goodwill" and "reputation" , Only in this way can trademark counterfeiting be successfully claimed.

        plaintiff Keller Williams Realty Inc. Founded in 1983 years. Company pair Dingle Buildcons Pvt Ltd And other parties to Sue, Seeking a permanent injunction against the defendant's trademark infringement "KW" "968078a. jpg" and (or) "KELLER WILLIAMS" And counterfeit their services. The plaintiffs said they operated residential real estate brokerage and real estate businesses under these trademarks. 2012 years 3 month, Plaintiff obtained in India "KW" and "KELLER WILLIAMS" trademark, In control 35 Class sum 36 Class registration. In addition, The plaintiffs also claim that their trademarks are widely used and advertised worldwide, It acquired the common law right to a trademark, It said it had built up a huge goodwill and reputation in India, because:

        －It has been used by many non-resident Indians (NRI) Customer service, And trained various agents, It became widely known in India;

        －It has a number of real estate agents from India or NRI agent;

        －1995 years, It becomes www. kw. com Owner of domain name, 2005 years, It becomes www. kwworldwide. com Owner of domain name; and

        －It starts from 1999 Began appearing on social networking sites around the world in 2000 (Including its own website) on, It also appears in Google's search engine in India, And got a lot of hits from India.

        For all the reasons above, The plaintiff objected to the defendant's use "KW" mark: 968078b. jpg and 968078c. jpg.

        The defendant cited in his plea 2011 Over the years 14, 16, 17, 20, 21, 28, 35, 36, 37, 41 and 42 Class that was registered earlier "KW" trademark. The defendant stated that, Its trademark "KW" Derived from the late founder's surname Umadhar Kesar Wani. Umadhar Kesar Wani in 1998 Started in the real estate business in 2000, And he started out as a broker. The defendant also argued that, The plaintiff's claim of passing off does not hold water, Because the plaintiff can neither prove that he was the prior user, Nor does it prove that it is in India "KW" It has been widely used continuously and has gained great goodwill and reputation. The plaintiff's registration shall be expunged from the register on grounds not used.

        The court examined the documents submitted by both parties, And point out that, Despite the fact that the plaintiff was the prior international user of the trademark, But the plaintiffs did not use the trademark in India. The court held that, The defendant was the prior user of the trademark, There are few reports of plaintiffs using the trademark outside India for the first time.

        The court stated that, The plaintiff has no business in India, customer, Agent or franchisee, Nor did it set up a peace in India (or) To operate any real estate brokerage business. In addition to providing some e-mails expressing interest in being the plaintiff's agent in India, The plaintiff could not prove goodwill and reputation in India.

        As the plaintiff could not prove that it had already enjoyed a reputation in the Indian market before the defendant began to use the trademark, Therefore, The court was unable to grant temporary injunctive relief in this sham action.

        The court further stated that, The real estate brokerage business is very different from the real estate development and construction business. The Plaintiff does not claim to have carried out the construction and development business of real estate or to have goodwill or reputation in that regard.

        The Court further notes that, The plaintiffs used only letters "KW" , It is entirely possible for other parties to use the same letter.

        although "Indian trade marks act" Recognition of cross-border reputation, But foreign brand owners must provide sufficient documentary evidence to prove their cross-border reputation in India when exercising their rights, It is necessary for them to protect their common law rights, The mere possession of a registered trademark does not prevent a legitimate prior registered user in India from using the contested mark. (Compiled from www. lexorbis. com)

translation: Rason group　proofread: Wang Dan

        Reprinted from China Intellectual Property Network

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