Delhi High Court Restrains Developer From Using 'Burj' Trademark In Upcoming Projects, On Plea By Dubai Based Company

The Delhi High Court has restrained a real estate developer from using the trademark 'Burj' in the upcoming projects in a plea filed by Dubai's international hotel chain, Jumeirah Beach Resort LLC, having Burj Al Arab as its flagship hotel.

Justice Jayant Nath however allowed the use of the mark 'BURJNOIDA' for an ongoing project observing that it was under construction in India for the last ten years.

"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," the Court ordered.

The Court added that periodic accounts shall be filed on affidavit by one of the directors every six months before court and the first set of accounts has been directed to be filed within two weeks.

It was the case of the plaintiff 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.

In August last year, the plaintiff became aware that certain promotional activities were being undertaken for an upcoming residential project "BURJ NOIDA‟ by the defendant and also about the adoption of the impugned marks THE BURJ, BURJ NOIDA.

It was thus the case of the plaintiff that the impugned registrations of the defendant were obtained malafidely and by misrepresentation and therefore were in contravention of sec. 11 of the Trademarks Act, given the prior BURJ Marks existing on the register.

"Prima facie, it appears that the defendants‟ trademarks are deceptively similar to the marks of the plaintiff. The essential features of the trade mark of the plaintiff have prima facie been copied," the Court observed.

The defendant had contended that no relief should be granted to the plaintiff as the plaintiff cannot expropriate the word BURJ (meaning 'tower') which is used in common language. It added that plaintiff's registration and use of the composite mark "Burj Al Arab" does not give it a right over the word "BURJ" per se.

This contention was rejected by the High Court while relying upon M/S. South India Beverages Pvt. Ltd. vs. General Mills Marketing INC. & Anr., where a Division Bench had held that the principle of „anti dissection‟ does not impose an absolute embargo upon the consideration of the constituent elements of a composite mark.   

The Court however took note of the fact that the defendants claim to have been around the business for the last 10 years as far as the mark BURJNOIDA was concerned.

In this backdrop, the Court said:

"Given the above noted facts, in my opinion, 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, as the other projects of the defendant are yet to commence, it would be in the interest of justice that the defendant does not further develop the other projects."

Accordingly, the application under Order 39 Rules 1 and 2 CPC was disposed of.

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

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