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2021 Supreme(Del) 660
IN THE HIGH COURT OF DELHI AT NEW DELHI
JAYANT NATH, J.
Jumeirah Beach Resort LLC – Appellant
Versus
Designarch Consultants Pvt Ltd & Anr. – Respondent
CS(COMM) 124 of 2021
Decided on : 09-11-2021
Advocate Appeared:
For the Respondent: Mr.Amit Sibal, Sr.Adv. with Mr.Anirudh Bakhru, Mr.Abhishek Singh, Mr.Naqeeb Nawab, Mr.Himanshu Deora, Mr.Raghav Vig, Mr.Shashwat Rakshit and Ms.Tejaswini Chandrasekhar, Advs.
For the Respondent: Mr.Parag P.Tripathi, Sr.Adv. with Ms.Shwetasree Majumdar, Ms.Diva Arora, Ms.Eva Bishwal, Mr.Apoorv Tripathi and Ms.Mishika Bajpai, Advs.
The court emphasized the essential features of the trade mark and the likelihood of confusion, considering the plaintiff's monopoly over the trade mark for services it does not offer, and the spill-over reputation of the plaintiff's mark in the Indian market.
Headnote:
Infringement - Trademark - Order 39 Rules 1 and 2 CPC - [BURJ Marks] - [Building Construction Services] - [Trade Marks Act, 1999, Section 11, Section 17] - The court discussed the similarity between the plaintiff's BURJ Marks and the defendant's impugned marks, emphasizing the essential features of the trade mark and the likelihood of confusion. The court also considered the plaintiff's monopoly over the trade mark for services it does not offer, and the spill-over reputation of the plaintiff's mark in the Indian market. The court granted an injunction restraining the defendants from using certain similar trade marks, while permitting the use of the mark BURJNOIDA for the ongoing project.
Fact of the Case:
The plaintiff, an international hotel chain, sought to restrain the defendants from using impugned marks identical or deceptively similar to the plaintiff's well-known BURJ Marks in relation to construction services. The plaintiff claimed to have acquired various trademark registrations and copyright for its BURJ Marks and Burj Al Arab building. The defendants, engaged in building construction, claimed to have adopted the impugned marks for a residential project 'BURJ NOIDA' and other projects.
Finding of the Court:
The court found the defendants' impugned marks to be deceptively similar to the plaintiff's marks, emphasizing the essential features of the trade mark and the likelihood of confusion. The court also considered the plaintiff's monopoly over the trade mark for services it does not offer, and the spill-over reputation of the plaintiff's mark in the Indian market. The court granted an injunction restraining the defendants from using certain similar trade marks, while permitting the use of the mark BURJNOIDA for the ongoing project.
Ratio Decidendi: The court held that the defendants' impugned marks were deceptively similar to the plaintiff's marks, emphasizing the essential features of the trade mark and the likelihood of confusion. The court also considered the plaintiff's monopoly over the trade mark for services it does not offer, and the spill-over reputation of the plaintiff's mark in the Indian market.
Final Decision: The court granted an injunction restraining the defendants from using certain similar trade marks, while permitting the use of the mark BURJNOIDA for the ongoing project.
JUDGMENT :
JAYANT NATH, J.
IA No.4212/2021
1. This is an application filed under Order 39 Rules 1 and 2 CPC seeking the following reliefs:
“a) Restraining the Defendants, their directors, partners, principals, employees, agents, distributors, franchisees, representatives, assigns and/or all those connected with them in their business from providing, marketing, trading, selling and/or using in any manner whatsoever in relation to any services, inter alia, construction services the impugned marks-THE BURJ, IMAGE BURJ NOIDA/Burj Noida, IMAGE 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 Plaintiffs well-known, registered and earlier BURJ Marks [including BURJ AL ARAB and IMAGE] in any manner whatsoever without the permission, consent, license of the Plaintiff thereby infringing the rights of the Plaintiff in its registered trademarks amounting to infringement thereof;
b) Restraining the Defendants, their directors/proprietor/partners, principals, employees, agents, distributors, franchisees, representatives, assigns and all those connected with them in their business from reproducing, communicating or copying in any manner whatsoever, in relation to any goods/services (inter alia, construction services), the artistic features, including the get-up and/or layout and/or stylization and/or colour combination and/or arrangement, shape and design of the Plaintiff s distinctive BURJ Logos [including the logos/devices namely- IMAGE and IMAGE and Burj A1 Arab building/IMAGE in any manner whatsoever without the permission, consent, or license of the Plaintiff, thereby infringing the copyright of the Plaintiff in its artistic work/creations amounting to infringement thereof;
c) Restraining the Defendants, their directors/proprietor/partners, principals, employees, agents, distributors, franchisees, representatives, assigns and all those connected with them in their business from constructing any structure/building based on the Plaintiffs architectural design drawings in any manner whatsoever, without the permission, consent, or license of the Plaintiff, thereby infringing the copyright of the Plaintiff in its artistic work/creations amounting to infringement of the Plaintiffs Copyright;
d) Restraining the Defendants, their directors, partners, principals, employees, agents, distributors, franchisees, representatives, assigns and/or all those connected with them in their business from providing, marketing, trading, selling and/or using in any manner whatsoever in relation to any services, inter alia, construction services, the impugned marks- THE BURJ, BURJ NOIDA/Burj Noida, Noida, IMAGE BURJBANGALORE, BURJMUMBAI, BURJDELHI, BURJGURUGRAM, BURJGURGAON or any mark/label/sign/device/name/shape or domain name, which is identical with or deceptively similar to the Plaintiff’s well-known and earlier BURJ Marks amounting to passing off their services as and for the services of the Plaintiff, or in any manner whatsoever, using or incorporating the Plaintiff’s well-known BURJ Marks or any other mark/device/logo/name/shape/domain name, which is deceptively or confusingly similar to the Plaintiff s prior and famous BURJ Marks and from taking benefit of the reputation and goodwill of the Plaintiff in any manner whatsoever; and
e) Restraining the Defendants from disposing of or dealing with its assets including their premises at the addresses mentioned in the Memo of Parties and their stocks-in-trade or any other assets as may he brought to the notice of the Hon'ble Court during the course of the proceedings and/or the Defendants' disclosure thereof and which the Defendants are called upon to disclose and/or on their ascertainment by the Plaintiff as the Plaintiff is not aware of the same, as provided under Section 135(2)(c) of the T
