The Delhi High Court has clarified that where a defendant’s mark wholly incorporates the plaintiff’s registered and distinctive trademark “CITYWALK” as its essential and dominant feature, and the rival marks are used in the same field of business, the addition of a house mark or prefix such as “GLOBAL” does not sufficiently distinguish the defendant’s mark. In such circumstances, if the plaintiff shows long prior use, registration, goodwill, and likelihood of confusion to a consumer of average intelligence and imperfect recollection, the Court may prima facie hold the defendant’s conduct to amount to infringement and passing off and grant interim injunctive relief.
The Court also held that exemption from pre-institution mediation under Section 12A of the Commercial Courts Act may be granted where the suit contemplates urgent interim relief. Accordingly, the Court restrained the defendants, their directors/promoters, servants, agents, franchisees and anyone acting on their behalf from using “GLOBAL CITYWALK”, “CITYWALK”, or any identical or deceptively similar mark as a trademark, service mark, trading style, trade name, logo, keyword, meta tag, hashtag, domain name, or in any other manner in relation to any goods or services, whether in print, electronic, online, digital or any other form. The Court also restrained them from registering any further domain names containing “CITYWALK” or “GLOBAL CITYWALK”, and any other domain name identical or deceptively similar to the plaintiffs’ trademark.
A Single Judge Bench of Justice Tushar Rao Gedela observed that the competing marks were deceptively similar. It held that “CITYWALK/SELECT CITYWALK” is a coined and distinctive mark, in use since 2004, and exclusively associated with the plaintiffs’ commercial real estate and retail business. It further observed that “GLOBAL CITYWALK” wholly incorporates the plaintiffs’ registered trademark “CITYWALK” as its essential and dominant feature, with only the prefix “GLOBAL” added. On that basis, the Bench found visual, phonetic and conceptual similarity, and held that a consumer of average intelligence and imperfect recollection was likely to be misled into believing an association, affiliation or endorsement by the plaintiffs.
The Bench recorded a prima facie finding that the plaintiffs had established a strong case. It held that the plaintiffs’ mark had been in continuous and extensive use since 2004, was covered by multiple registrations, and had acquired goodwill and reputation. It also held that the defendants’ use of the deceptively similar mark in relation to a real estate project in the same line of business was likely to cause confusion and deception and was prima facie an act of infringement and passing off. The Bench further found that the balance of convenience lay in favour of the plaintiffs and that refusal of injunction would cause irreparable loss and injury to their reputation and goodwill.
Briefly, the plaintiffs asserted that the mark “CITYWALK” was adopted in 2004, that plaintiff no. 2 developed a commercial project under the mark “CITYWALK/SELECT CITYWALK” in October 2007, and that plaintiff no. 1 became owner of the trademark by an assignment deed dated 15.07.2022. The plaintiffs hold multiple trademark registrations for “CITYWALK/ SELECT CITYWALK” and related marks across different classes, and that they also registered the domain name ‘www.selectcitywalk.com’ in 2004. The plaintiffs had a case that they had used the marks extensively since 2004, including through a “CITYWALKER” magazine/newsletter since 2009, and that the mall/commercial complex at Saket had substantial scale, customer footfall, brand presence, and advertisement spend. The plaintiffs further claimed that the mark had acquired strong goodwill and the status of a well-known trademark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.
As against this, the defendants had filed an application for the mark “GLOBAL CITYWALK” in Class 36 on 09.03.2023 on a proposed-to-be-used basis, and that the Trade Marks Registry had issued an examination report objecting to that application, which remained pending. The plaintiffs had also sent a legal notice dated 20.02.2026 demanding cessation of use, but the defendants, by letter dated 24.02.2026, refused to stop using “CITYWALK”. The defendants then purchased the domain ‘www.globalcitywalk.com’ on 02.03.2026 and began advertising their services/project under the impugned mark on the website and social media, though the order records that actual use had not yet commenced and the project was shown on the UP RERA portal as to be completed by 30.06.2027.
Appearances:
Kapil Midha, Garv Singh, Yadavi Malhotra, Sindhoora Ravichandran and Vartika Gautam, Advocates, for the Plaintiff
NA, for the Defendant
