In response to a petition brought by Dubai's worldwide hotel chain, Jumeirah Beach Resort LLC, which features the Burj Al Arab as its flagship hotel, the Delhi High Court has barred a real estate developer from using the trademark 'Burj' in future projects.
However, Justice Jayant Nath approved the use of the mark 'BURJNOIDA' for an ongoing project, citing the fact that it had been under development in India for the previous 10 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 trademark BURJBANGALORE, BURJMUMBAI, BURJDELHI, BURJGURUGRAM and BURJGURGAON or any other similar trademark 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 further stated that periodic accounts must be presented before the court an affidavit by one of the directors every six months, with the first set of accounts to be produced within two weeks.
The plaintiff claimed that it had gained BURJ Marks registrations in important jurisdictions throughout the world, as well as copyright for the creative layout, get-up, stylization, colour combination, and design of its Burj Al Arab skyscraper and BURJ logos.
The plaintiff learned in August of last year that the defendant was conducting promotional operations for a new residential project called "BURJ NOIDA" and that the impugned marks had been adopted.
Given the earlier BURJ Marks on the register, the plaintiff argued that the defendant's contested registrations were obtained fraudulently and through deception, and so violated section 11 of the Trademarks Act.
"Prima facie, it appears that the defendants‟ trademarks are deceptively similar to the marks of the plaintiff have prima facie been copied," the Court observed.”
The defendant argued that the plaintiff should not be awarded a remedy because the plaintiff cannot expropriate the term BURJ (which means "tower" in common parlance).
Plaintiff's registration and use of the composite mark "Burj Al Arab" does not provide it with a right to use the word "BURJ" per se, according to the court. The High Court rejected this argument, citing M/S. South India Beverages Pvt. Ltd. vs. General Mills Marketing INC. & Anr., in which a Division Bench found that the concept of "anti dissection" did not exclude the examination of the constituent aspects of a composite mark.
The Court did take note, however, of the defendants' claim to have been in the business for the past ten years concerning the mark BURJNOIDA.
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 trademark 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.