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The Delhi High Court yesterday passed an injunction order in favour of Jumeirah Beach Resort LLC, restraining Designarch Consultants Pvt Ltd from in any manner using the trade mark BURJBANGALORE, BURJMUMBAI, BURJDELHI, BURJGURUGRAM and BURJGURGAON or any other similar trade mark.

Justice Jayant Nath awarded such relief to the international hotel chain and part of Dubai Holding in an application filed under Order 39 Rules 1 and 2 CPC seeking to restrain Designarch from using in any manner whatsoever in relation to any services, inter alia, construction services the impugned marks- THE BURJ, BURJ NOIDA/Burj Noida, BURJBANGALORE, BURJMUMBAI, BURJDELHI, BURJGURUGRAM, BURJGURGAON or any mark/ label/ sign/ device/ name or domain name, which is identical with and/or deceptively similar to the well-known, registered and earlier BURJ Marks [including BURJ AL ARAB].

Jumeirah submitted before the Court that it had secured registrations of BURJ Marks in major jurisdictions around the world and also held copyright for the artistic layout, get up, stylization, colour combination, and design of its Burj Al Arab building as well as BURJ Logos.

It was further the plaintiff's case that the impugned marks of Designarch were identical and deceptively similar to their prior and well-known BURJ Marks in each and every aspects.

The Court was also told that the impugned registration of BURJ Noida under class 37 for building construction have been obtained malafidely and by misrepresentation and are in contravention of section 11 of the Trademarks Act, given the prior BURJ Marks existing on the register.

The High Court held that prima facie, it appeared that the defendants' trademarks were deceptively similar to the marks of the plaintiff and that the essential features of the trade mark of the plaintiff had been copied.

"A strong plea was raised by the defendants that no relief should be granted to the plaintiff as the plaintiff cannot expropriate the word BURJ which is used in common language. It is stated that the plaintiff does not have any exclusive right over the word BURJ. Hence, merely because the defendants have used the word BURJNODIA does not amount to infringement of the plaintiff‟s trade mark.... In my opinion, the above plea of the defendants is misconceived....", the single-judge bench said.

While saying so, the bench relied on M/S. South India Beverages Pvt. Ltd. vs. General Mills Marketing INC. & Anr. wherein a Division Bench of the High Court while relying on Autozone, Inc. v. Tandy Corporation said that dominant features were significant because they attract attention and consumers are more likely to remember and rely on them for purposes of identification of the product.

On the other hand, the Court also said that the trade mark of the defendants was registered in 2011 whereas their construction project commenced in 2010 and the hoardings showing BURJNOIDA were taken out in 2011.

Since the defendants claim had been created since the last 10 years as far as the mark BURJNOIDA is concerned, the Court held that it would not be, at this stage, appropriate to restrain the defendant from using the trade mark BURJNOIDA for the residential project which is under construction in India for the last ten years.

However, the Court held, as the other projects of the defendant were yet to commence, it would be in the interest of justice that the defendant does not further develop the other projects. With this view, the Court ordered,

"An injunction order is passed in favour of the plaintiff and against the defendants, restraining the defendants, etc. from in any manner using the trade mark BURJBANGALORE, BURJMUMBAI, BURJDELHI, BURJGURUGRAM and BURJGURGAON or any other similar trade mark till the pendency of the present suit. The defendants are permitted to use the mark BURJNOIDA only for the present ongoing project. However, periodic accounts shall be filed on affidavit by one of the directors every six months before court. The first set of accounts will be filed within two weeks from today."

Cause Title: JUMEIRAH BEACH RESORT LLC v DESIGNARCH CONSULTANTS PVT LTD.& ANR