Designarch Consultants Pvt Ltd and Anr v. Jumeirah Beach Resort LLC

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: Mark Application No. Class Status Jumeirah Beach Resort LLC Marks BURJ AL ARAB 1253325 35 Cancellation filed by Designarch. C.O. (COMM.IPD- TM)130/ 2023

V. Jumeirah undertakes to withdraw the cancellation petitions filed against

Designarch’s marks within seven (7) working days, as set forth below: Mark Application No. Class Status BURJNOIDA 2093367 37 Cancellation filed by Jumeirah C.O. TM) 124/2022 4112395 37 Cancellation filed by Jumeirah C.O. TM) 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: BURJ 4880347 39 Opposition filed by Designarch Opposition No- BURJ 4880351 41 Opposition filed BURJ 4880353 43 Opposition filed

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: 4674363 06 Opposed by Jumeirah vide Opposition No.1106513