Author: Intern - Bhavya Bhasin
In the matter of Jumeirah Beach Resort LLC vs Designarch Consultants Pvt Ltd. & Anr. [CS (COMM) 124/2021], Single Judge [Jayanth Nath, J.] of the High Court of Delhi, vide judgment dated November 9, 2021, ruling in the favour of the plaintiff granted an interim injunction against the defendant under order XXXIX R1&2 of CPC, holding effectively that the principle of anti-dissection and identification of dominant mark complement each other, hence using of the dominant part would amount to trademark infringement.
Section 17 of the Trademark Act, 1999 states “Effect of registration of parts of a mark. (1) When a trademark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trademark taken as a whole.” The question that arises for consideration is whether an infringing trademark would be determined strictly when ‘taken as a whole’ or if even the adoption of a dominant or essential part of the infringed trademark can be brought within the ambit of ‘taken as a whole’.
The plaintiff contends that the defendant’s marks are identical and/or deceptively similar to the plaintiff’s prior registered and well-known marks in which copyright also subsist. The plaintiff’s BURJ marks have been extensively, continuously, and uninterruptedly used on a worldwide basis including in India. Further, it is urged that the dominant part of the trademark of the plaintiff is infringed and hence, an injunction ought to be granted.
The defendant contended that using the composite mark BURJ AL ARAB by the plaintiff does not give the right over the word BURJ as it is a prefix and common to trade. Plaintiff is not permitted to claim infringement by inviting the court to dissect its mark and conferring right over BURJ per se. Further, the defendant owns the composite mark BURJNOIDA that has been in use since 2010 and has spent a huge amount of money for its ongoing construction.
The court accepted the plaintiff’s claim that their dominant part (BURJ) has been copied malafidely and held “that the principle of anti-dissection does not impose an absolute embargo upon the consideration of the constituent elements of a composite mark.” Further, the Court passed an injunction order in favour of the plaintiff and against the defendants, restraining the defendants from in any manner using the trademark BURJBANGALORE, BURJMUMBAI, BURJDELHI, BURJGURUGRAM, and BURJGURGAON or any other similar trademark.
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