Whether the rights of a registered proprietor in a mark planned for future utilization can be nullified by someone who deploys a similar mark after the filing date of the first mark and before the date of actual use by the registered proprietor. The issue has been debated earlier and has come up in this case as well.

The rival marks in question are and . The Parties to the dispute are Worknest Business Centre LLP (Plaintiff) and WN Space Solutions P. Ltd. and, M/s Worknests Projects, collectively as Defendants.

Facts of the case:

• Worknest Business Centre LLP is the registered owner of the device mark “WORKNEST” under nos. 3861870 and 3861871 dealing in real estate advertising, marketing, financing, investment, consultancy, and other related services under classes 35 and 36 since June 16th, 2018. The Plaintiff also own the domain name www.worknest.co.in with a user date of April 21st, 2018.
• The Defendants claimed to be well-renowned and established providers of real estate rental services and consultancy services regarding property investment. The Defendants contended that on January 8th, 2018, the Director of Defendant no. 1, Mr. Rajesh Goyal, had conceptualised and adopted the trademark “WORKNESTS” and the logo for their business of providing co-working spaces in Kolkata. The mark under no. 4060039 registered in the name of GFS Consultancy Private Limited and is jointly used by Defendant Nos.1 and 2.
• On September 30th, 2020, at the time of admission of the case, the Court observed, the Plaintiffs and Defendants appear to be “concurrent users of the mark WORKNEST plaintiffs being registered owner of the mark/label mark and defendants label mark and using WORKNESTS along with its logo everywhere and at the moment the plaintiff is operating in Noida and the defendant is working in Kolkata, both are providing co-working spaces in different areas, at this stage this Court finds no ground to grant an ad interim injunction.”
• As per the order on April 18th, 2022, the Court held that the matter requires examination as to who would be construed as a prior user. Since Plaintiff claims prior user on account of the domain name “www.worknest.co.in” registration on April 21st, 2018, on the other hand, Defendant contends prior user based on GST registration obtained on December 7th, 2018, and incorporation of corporate entities prior to that of the Plaintiff. The Court directed that till the next hearing, to avoid any confusion, Defendants were directed not to extend beyond the state of West Bengal.

The court thereafter set the matter for hearing and examined the claims of the parties.

The contention of the parties

1. The Plaintiffs contend that the Defendants’ mark is not only phonetically, visually, structurally, and conceptually similar to the Plaintiffs’ registered mark but also operates in the same market sphere of real estate. The test is not to compare the marks side-by-side but to see the overall impression conveyed to a person with average intelligence and imperfect recollection. Moreover, the Plaintiff is the prior adopter and user of the registered mark .
2. The Defendants claimed prior user and contended that the earliest document of proof of use produced by Plaintiff is January 28th, 2019. Plaintiff did not produce their balance sheet for the financial year 2018-2019, which could be the sole proof of use of the mark. Furthermore, Plaintiff obtained GST registration on January 11th, 2019, thus confirming the contentions of the Defendants regarding their user date.
3. The Defendants contended that their commercial use is earlier to the mark, and the Defendants also got their domain name “worknests.com” registered on July 27th, 2018.
4. In their rejoinder submissions, Plaintiff submitted that the Defendants have wrongly interpreted the meaning of “use” to the commencement of business. Further, the adoption of the impugned domain name is dishonest as they were aware of the Plaintiffs’ existence.

Courts Decision

• The Court analysed that the word “WORKNEST” is a distinctive mark and thus can be considered a brand identifier. The rival marks are identical, with the addition of letter ‘S’ addition being the only difference, which is insufficient to distinguish the two marks.
• The services the parties offer under their respective marks are also identical, increasing the chances of confusion between the marks. The Court held that the Plaintiff’s trademark is a composite device mark, which must be viewed as a complete unit. However, to assess similarities between the contesting marks, one must focus on the dominant characteristics. Here, the word “WORKNEST” emerges as the distinctive, prominent feature.
• The Court held that the relevant date for determining prior rights in the present case would be the ‘date of registration’ of the mark and not when the Plaintiffs started using it. The Court held Defendants’ adoption and user of the impugned mark “WORKNESTS” subsequent to Plaintiff’s registration will not override their rights.
• The Court negated the submission of the Defendants that their use does not harm or injure Plaintiff as Defendants are based in Kolkata, West Bengal, and Plaintiff is operating in Noida, Uttar Pradesh alone. The Court opined that the registration in favour of Plaintiff is not confined to any particular area/ State. The Court cannot restrict the ambit of Plaintiff’s vested rights and impede the expansion of future business activities.

The court, therefore, restrained the Defendants from using the mark WORKNEST/WORKNESTS or any other mark similar thereto.

Key-Takeaways

• The registration of a mark serves as constructive notice, and the due diligence must be carried out before adoption to avoid adverse inference from the Court.
• A person who adopts a deceptively similar or identical mark after the registered proprietor’s mark is advertised and before registration is granted cannot be accepted as a prior user and accorded preferential rights.