Jumeirah Beach Resort Llc v. Designarch Consultants Private Limited & ANR.
$~48 & 49 *
IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision:19.09.2024 + FAO(OS)(COMM) 144/2021 & CM APPL. 40965/2021 DESIGNARCH CONSULTANTS PVT LTD AND ANR .....Appellants Through:
Ms Shwetasree Majumder, Ms Diva Arora Menon, Mr Rohan Krishna Seth and Ms Shilpi Sinha, Advocates.
versus JUMEIRAH BEACH RESORT LLC .....Respondent Through:
Mr Jayant K. Mehta, Senior Advocate with Mr Naqeeb Nawab, Ms Sejal Tayal, Ms Apurva Bhutani, Mr Ashutosh Ranga, Mr Rajat Sinha, Advocates.
+ FAO(OS)(COMM) 181/2021 & CM. 46584/2021 JUMEIRAH BEACH RESORT LLC .....Appellant Through:
Mr Jayant K. Mehta, Senior Advocate with Mr Naqeeb Nawab, Ms Sejal Tayal, Ms Apurva Bhutani, Mr Ashutosh Ranga, Mr Rajat Sinha, Advocates.
versus DESIGNARCH CONSULTANTS PRIVATE LIMITED & ANR. .....Respondent Through:
Ms Shwetasree Majumder, Ms Diva Arora Menon, Mr Rohan Krishna Seth and Ms Shilpi Sinha, Advocates.
CORAM:
HON'BLE MR. JUSTICE RAJIV SHAKDHER HON'BLE MR. JUSTICE AMIT BANSAL
[Physical Hearing/Hybrid Hearing (as per request)] AMIT BANSAL, J. (ORAL) 1.
The present cross-appeals have been filed against the impugned judgment dated 9th November, 2021 passed by the learned Single Judge in CS(COMM)124/2021. By way of the impugned judgment, the application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as the 'CPC') filed by the plaintiff/Jumeirah Beach Resort LLC (hereinafter referred to as "Jumeirah"), was decided. 2.
The learned Single Judge partly allowed the application filed by Jumeirah and restrained the defendants, Designarch Consultants Pvt. Ltd. and Designarch Infrastructure Pvt. Ltd. (hereinafter collectively referred to as "Designarch") from using the marks 'BURJBANGALORE', 'BURJMUMBAI', 'BURJDELHI', 'BURJGURUGRAM'
and 'BURJGURGAON' till the pendency of the said suit. However, since the residential project 'BURJNOIDA' was in construction for the last ten years, the learned Single Judge allowed the use of the mark 'BURJNOIDA' for the said project.
3.
During the course of hearing of the appeals, the terms of a possible settlement were discussed with the counsel appearing on behalf of the parties on 3rd September, 2024, 17th September, 2024 and 18th September, 2024. 4.
At the hearing today, i.e., 19th September, 2024, counsel for the parties, on instructions from their respective clients, have agreed to the following terms of settlement:
I.
Jumeirah acknowledges that Designarch are the owners of the
trademark "BURJNOIDA" and the logo '
'.
II.
Designarch acknowledge that Jumeirah is the owner of the trademark "BURJ AL ARAB" and the logo '
'.
III.
Designarch shall not make any modifications to the "BURJNOIDA" tower as depicted in the photograph dated 20th August, 2024, annexed herewith as Annexure-A.
IV.
Designarch undertake to withdraw the cancellation petitions filed against Jumeirah's mark within seven (7) working days, as detailed below: Application No.
Jumeirah Beach Resort LLC Marks BURJ AL ARAB 1253325 Cancellation filed by Designarch.
C.O.
(COMM.IPDTM)130/ 2023 Cancellation filed by Designarch.
C.O.
(COMM.IPDTM)131/ 2023 Cancellation filed by Designarch.
C.O.
(COMM.IPDTM)132/ 2023 Cancellation filed by Designarch.
C.O.
(COMM.IPDTM)133/ 2023 Cancellation filed by Designarch.
C.O.
(COMM.IPDTM)134/ 2023 V.
Jumeirah undertakes to withdraw the cancellation petitions filed against Designarch's marks within seven (7) working days, as set forth below: Application No.
BURJNOIDA 2093367 Cancellation filed by Jumeirah C.O.
(COMM.IPDTM) 124/2022 4112395 Cancellation filed by Jumeirah C.O.
(COMM.IPDTM) 315/2022
Designarch or their employees, agents and directors will not use the mark "BURJNOIDA" and the logo "
" to suggest any connection with or relation to Jumeirah, in any manner whatsoever. VI.
Designarch undertake to withdraw the oppositions filed against Jumeirah's marks within seven (7) working days, as per the details given below:
Application No.
BURJ 4880347 Opposition filed by Designarch Opposition No1108306 BURJ 4880351 Opposition filed by Designarch Opposition No1108307 BURJ 4880353 Opposition filed by Designarch Opposition No1269701 VII.
Designarch covenant and agree not to design, construct or develop any building that is identical and/or resembles the pictorial reference given in Annexure-B.
VIII. Jumeirah undertakes to withdraw the opposition filed against Designarch's mark within seven (7) working days, as per the details given below:
Application No.
4674363 Opposed by Jumeirah vide Opposition No.1106513 IX.
Designarch undertake not to apply for or use in any manner BURJ or any BURJ formative mark other than BURJNOIDA in the future. Designarch further undertake to withdraw their pending trademark applications, as detailed in the table below within seven (7) working days: Application No.
BURJBANGALORE 2093371 Objected BURJMUMBAI 3982207 Objected BURJGURUGRAM 4179766 Opposed X.
The settlement terms agreed by the parties are final and irrevocable. The settlement shall bind the parties, their successors, representatives and assigns.
5.
The appeals are disposed of in terms of the aforesaid settlement. 6.
All pending applications shall stand closed.
AMIT BANSAL, J RAJIV SHAKDHER, J SEPTEMBER 19, 2024/kd Click here to check corrigendum, if any
Annexure-A
ANNEXURE-B