Delhi High Court restrains local construction projects from using Burj Al Arab trademark

The Delhi High Court on Tuesday restrained local real estate projects from prospectively using the trademark of the Dubai-based hotel chain Jumeirah group, owners of luxury hotel Burj-Al Arab [Jumeirah Beach Resort LLC v. Designarch Consultants Pvt Ltd & Anr]..Justice Jayant Nath, however, did not find it appropriate to restrain one of the projects, which had been under construction for the last 10 years.“In my opinion, it would not be, at this stage, appropriate to restrain the defendant from using the trade mark BURJ NOIDA 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,” the Court held..As a result, an injunction was passed restraining the defendants from using the trade mark “BURJ BANGALORE, BURJ MUMBAI, BURJ DELHI, BURJ GURUGRAM and BURJ GURGAON” or any other similar trade mark till the pendency of the present suit..The defendants, in the meantime, were permitted to use BURJ NOIDA 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,” the Court highlighted..The Court was acting on a plea filed by the Jumeirah Group seeking to restrain the defendants from using its registered trademark. The plaintiff argued that its trademark was “highly distinctive” and well-known in India and worldwide..“The adoption and use of the identical and/or deceptively similar impugned marks THE BURJ, BURJ NOIDA/Burj Noida, BURJ BANGALORE, BURJ MUMBAI, BURJ DELHI, BURJ GURUGRAM and BURJ GURGAON and the impugned domain name by the defendants is illegal and detrimental to the distinctive character of the plaintiff’s well-known, registered and earlier BURJ marks,” submitted the plaintiff’s counsel.It was also stressed that the defendants obtained the trademark registrations “malafidely” and through “misrepresentation” in contravention of Section 11 of the Trade Marks Act..The defendants, on the other hand, argued that the plaintiff neither had a registration nor any common law use anywhere in the world of any logo that resembles the defendant’s logo. Regarding the word mark Burj-Al Arab, it was stated that the plaintiff was not the proprietor of the word “Burj” in the country of origin, Dubai.“There are number of buildings using the prefix Burj including Burj Khalifa. The plaintiff has no legal or factual basis to claim right over the prefix Burj per se in India,” it was argued..The Court consequently observed, “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 verdict also reasoned that the defendants’ plea that the plaintiff did not have an exclusive right over the word Burj and the mere use of “BURJ NODIA” did not amount to infringement of the trademark, was misconceived..Senior Counsel Amit Sibal and Advocates Anirudh Bakhru, Abhishek Singh, Naqeeb Nawab, Himanshu Deora, Raghav Vig, Shashwat Rakshit and Tejaswini Chandrasekhar represented the plaintiff.Senior Counsel Parag P Tripathi and Advocates Shwetasree Majumdar, Diva Arora, Eva Bishwal, Apoorv Tripathi and Mishika Bajpai appeared for the defendants..[Read Order]