Jumeirah Beach Resorts LLC vs. Designarch Infrastructure Pvt. Ltd.

Introduction

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 argued that there was no infringement because “Burj” is an Arabic word that means “tower” and is a widely used dictionary term, making it publici juris. The Plaintiff further argued that the design of the BURJ NOIDA building it intends to construct is different from the Defendant’s BURJ AL ARAB structure.

The set of petitions filed by the Plaintiff includes requests for correction of the Defendant’s trademark and complaints of infringement that were forwarded to the court following the passage of the Tribunal Reforms Act. The defendant, however, countered that there are already five rectification requests for the cancellation of the plaintiff’s mark pending before the trademark’s registry. Considering this matrix, the court issued an order to combine all petitions related to this subject in order to resolve it completely.

[Image Sources : Jumeirah]

In Costa and Company Pvt Ltd vs. UoI And Ors (2012), the Delhi High Court came to a similar decision and determined that ordering the Registrar to transmit the rectification case to the IPAB was appropriate. The Supreme Court’s ruling in Tirupati Balaji Developers v. Bihar, which declared that powers of functioning as appellate jurisdiction carry auxiliary power to serve the principal purpose, was used by the court in examining the principles of appellate jurisdiction. The court determined that such a transfer was legal by relying on this reasoning and considering that the IPAB served as the appellate authority. Another intriguing point raised by the court was that, in accordance with (now removed) Section 92, IPAB is not subject to the rules and regulations included in CPC.

Analysis

“The Plaintiffs have additionally placed on record material to establish that the shape of defendant’s building is likewise not unique and that there are other structures with comparable shapes,” the Court stated. The plaintiff has established a prima facie case in its favour based on the claims in the plaint and the supporting documents. The Court ordered the Defendant to give the Plaintiff 7 days’ notice before starting any proceedings alleging infringement of the Defendant’s trademarks or form marks as a result. Until the next hearing, the Defendant cannot threaten the Plaintiff regarding the Plaintiff’s registered mark, logo, or building designs, the Court also granted an ex parte ad interim injunction.

Conclusion

In this regard, Rule 26 of the IPD Regulations does give the court some leeway when using the power to transfer under Section 24 of the CPC to combine proceedings pending before the IPD and the Commercial Court. But this authority only pertains to combining cases that are now before a court, not an executive body. This argument was brought up by the Plaintiff in the current case, but the court rejected it, stating that the intent and purpose of Order XXVI, howsoever it may be worded, is obviously to ensure that proceedings relating to the same or related IPR subject matters are heard together and that, if any such proceeding(s) are pending before the IPD of this Court, all connected and related proceedings should also be taken up by it. The notion of separation of powers is partially threatened by this “end justifies means” strategy.

Finally, it is important to note that the court determined that commercial matters call for a swift and meaningful conclusion of the litigation. Despite this, the court issued an order against the Registrar of Trademarks without adding it to the parties’ list of necessary parties or obtaining their consent to do so.

Author: Tanya Saraswat, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

References

• Praharsh Gour, Delhi High Court directs the Trademarks Registry to Transfer 5 Rectification Applications SpicyIP (2022), https://spicyip.com/2022/12/delhi-high-court-assumes-the-power-to-direct-trademarks-registry-for-transferring-rectification-applications.html (last visited Mar 16, 2023).
• Rajalakshmi R & Anoop Verma, Do the trademarks provisions permit registrar to transfer pending petitions to IPD of the Court? Lexology (2023), https://www.lexology.com/library/detail.aspx?g=c74f3081-457b-4cb1-8134-b1dff926f0ff (last visited Mar 16, 2023).