Author: Andri Shukla
In the matter of Designarch Consultants Pvt. Ltd. & Anr. v. Jumeirah Beach Resort LLC [I.A. No. 7792/2020 in CS(COMM) 366/2020], the Delhi High Court, vide its order dated September 10, 2020, has granted an ex parte ad interim injunction restraining Jumeirah Beach Resort LLC (Defendant) from threatening Designarch Consultants Pvt. Ltd. (Plaintiff) with respect to the shape of the Plaintiff’s building.
The Plaintiff is engaged in the construction business and is the proprietor of trademark BURJNOIDA in class 37 (for building and construction services) as of February 2, 2011, which it claims to have been using since December 24, 2010. The Plaintiff is in the process of constructing the “Burj Noida” tower and owns several copyright registrations for BURJNOIDA, including for the shape of the planned building, as well as a trademark registration for.
The Defendant issued a legal notice to the Plaintiff on August 13, 2020, alleging infringement of its trademarks BURJ AL ARAB and
and its copyright in the shape of the ‘Burj Al Arab’ hotel building located in Dubai, UAE. The Defendant owns various trademark registrations for its mark BURJ AL ARAB in India, but allegedly not in respect of construction services. The Plaintiff had filed the instant suit seeking a permanent injunction against the Defendant, to restrain it from making allegedly groundless threats of trademark and copyright infringement.
The Plaintiff contended that there is no infringement as the word ‘Burj’ means ‘tower’ in Arabic and it is a commonly used dictionary term, thereby being publici juris. The Plaintiff further contended that the shape of its planned BURJ NOIDA building is dissimilar to the shape of the Defendant’s BURJ AL ARAB building.
The Court held that “the Plaintiffs have also placed on record material to show that the shape of defendant’s building is also not unique and there are other buildings with similar shapes. Considering the averments in the plaint and the documents filed therewith, the plaintiff has made out the prima facie case in its favour”. Accordingly, the Court directed the Defendant to give the Plaintiff 7 days’ notice before initiating any proceeding claiming infringement of the Defendant’s trademarks or shape marks. The Court also granted an ex parte ad interim injunction restraining the Defendant from extending any threat to the Plaintiff in respect of the Plaintiff’s registered mark/ logo or designs of the Plaintiff’s building until the next hearing.
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