Emaar Properties Pjsc vs Emaar Hospitality Services Pvt. Ltd. & ... on 10 November, 2023

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Delhi High Court - Orders

Emaar Properties Pjsc vs Emaar Hospitality Services Pvt. Ltd. & ... on 10 November, 2023

Bench: Prathiba M. Singh

                                    $~38
                                    *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                                    +    CS(COMM) 796/2023, I.As. 21835/2023, 21836/2023, 21837/2023,
                                         21838/2023, 21839/2023 & 21840/2023

                                                EMAAR PROPERTIES PJSC                 ..... Plaintiff
                                                            Through: Mr. Pravin Anand, Mr. Dhruv
                                                                      Anand, Ms. Udita M. Patro, Ms.
                                                                      Nimrat   Singh,       Advs.     (M.
                                                                      9313399860)
                                                            versus

                                                EMAAR HOSPITALITY SERVICES
                                                PVT. LTD. & ANR.                                                                 ..... Defendants
                                                                Through: None.
                                                CORAM:
                                                JUSTICE PRATHIBA M. SINGH
                                                          ORDER

% 10.11.2023

1. This hearing has been done through hybrid mode.

I.A. 21838/2023 (for exemption)

2. This is an application seeking exemption from filing originals/certified/cleared/typed or translated copies of documents, left side margins, electronic documents, etc. Original documents shall be produced/filed at the time of Admission/Denial, if sought, strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.

3. Exemption is allowed, subject to all just exceptions.

4. Accordingly, application is disposed of.

I.A. 21837/2023 (for additional documents)

5. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate CS(COMM) 796/2023 Page 1 of 8 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/11/2023 at 21:20:31 Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act'). The Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.

6. Application is disposed of.

I.A. 21840/2023 (u/S 12A of the Commercial Courts Act)

7. This is an application filed by the Plaintiff seeking exemption from instituting pre-litigation mediation under Section 12A of the Commercial Courts Act. Considering the facts and circumstances of the case, the Court is satisfied that in terms of the judgment of the Supreme Court in Yamini Manohar v. T.K.D Keerthi, 2023 LiveLaw (SC) 906, the suit contemplates urgent interim relief. In these facts, the exemption under Section 12A is granted to the Plaintiff. Accordingly, the application is disposed of. I.A.21839/2023 (for court fee)

8. This is an application for extension of time for filing court fees. Let the Court fee be deposited within a week, and the challan be placed on record. Application is disposed of.

CS (COMM) 796/2023

9. Let the plaint be registered as a suit.

10. Issue summons to the Defendants through all modes upon filing of Process Fee.

11. The summons to the Defendants shall indicate that the written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.

CS(COMM) 796/2023 Page 2 of 8

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/11/2023 at 21:20:31

12. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement(s). Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

13. List before the Joint Registrar for marking of exhibits on 12th January, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

14. List before Court on 27th March, 2024.

I.A. 21835/2023 (u/O XXXIX Rules 1 & 2 CPC) & I.A.21836/2023 (for discovery of documents)

15. Issue notice in both the applications.

16. The Plaintiff-Emaar Properties PJSC (hereinafter, 'the Plaintiff') has filed the present suit against the Defendant No. 1 - Emaar Hospitality Services Pvt. Ltd. and Defendant No. 2 - PDR Ltd seeking protection of its mark 'EMAAR'.

17. The Plaintiff's case is that it is one of the world's largest real estate companies. It is stated to have been constantly developing new competencies in hospitality & leisure and malls. It claims to be a Dubai- based Public Joint Stock Company, and is listed on the Dubai Financial Market. The Plaintiff claims to have a significant presence in the Middle East, North Africa and Asia.

18. It claims to have delivered over 67,000 residential units in Dubai and other global markets since 2002. The plaint avers that around 46 per cent of the Plaintiff's revenue is from its shopping malls & retail, hospitality & CS(COMM) 796/2023 Page 3 of 8 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/11/2023 at 21:20:32 leisure and international subsidiaries. The Plaintiff claims that its group is a pioneering force in shaping the hospitality sector (especially that of UAE) and has been awarded several awards and accolades for the same.

19. The Plaintiff claims to be associated with the Burj Khalifa, the world's tallest building, which houses a variety of facilities including a hotel, residences, commercial spaces, shopping areas, and tourist attractions.

20. It is averred that the Plaintiff commenced operations in India in 2005 through a joint venture called 'Emaar MGF Land Limited'. As per the plaint, the Plaintiff restructured its business through a demerger with the Indian company MGF Developments. Following the demerger, the company continued its operations in India under the name Emaar India Limited.

21. It is stated that in the year 1997, the Plaintiff adopted and started using the trade mark/name "EMAAR" as part of its business. Further, in the year 1998, the Plaintiff claims to have adopted and started using its domain name www.emaar.com in relation to its said business worldwide. In the US, the Plaintiff registered its service mark 'EMAAR' bearing Reg. no. 3,797,684 dated 1st June 2010 in classes 37 and 43 with a distinctive design above it.

22. The Plaintiff avers that its mark "EMAAR" is associated with significant goodwill, covering various international markets, India included. Furthermore, the Plaintiff's mark is recognized beyond its immediate geographical area of operation, with its reputation and use extending into India as well. Thus, it is claimed that the mark "EMAAR" enjoys transborder reputation as well.

23. In India, the Plaintiff has filed several applications for the mark "EMAAR", which are provided as follows:

CS(COMM) 796/2023 Page 4 of 8

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/11/2023 at 21:20:32

24. The Defendant No. 1 is a company, located in Pune, Maharashtra. Defendant No. 2 is the domain name registrar of the infringing domain name.

25. Sometime in September 2023, the Plaintiff is stated to have become aware that the Defendant No. 1 is infringing on the Plaintiff's trade mark "EMAAR", by using the mark "EMAAR" as part of their logo in the phrase "A Signature of Excellence," by incorporating the mark "EMAAR" within their trade name "Emaar Hospitality Services Pvt. Ltd.," and by operating CS(COMM) 796/2023 Page 5 of 8 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/11/2023 at 21:20:32 the domain "https://emaarhospitality.org/," which not only includes the Plaintiff's mark but is also alleged to be a direct imitation of the Plaintiff's subsidiary group's website, "https://www.emaarhospitality.com."

26. It is further averred that the Defendant No.1 is using a logo that infringes on the Plaintiff's registered mark "EMAAR." According to the Plaintiff, the Defendant No. 1's logo uses the exact same font as that of the Plaintiff's, and also features the image of the 'Burj Khalifa'. A comparison of the Plaintiff's and the Defendant No. 1's marks are as follows:

27. It has been also stated by the Plaintiff that the Defendant No. 1 appears to be listed on various third-party company websites.

28. Ld. Counsel for the Plaintiff - Mr. Dhruv Anand submits that the Plaintiff also has a subsidiary by the name 'EMAAR' hospitality. In addition, the Defendants are also using the mark https://emaarhospitality.org/ along with the name 'EMAAR' with a depiction of Burj Khalifa which is the property of the Plaintiff.

29. Heard. In the present case, the Defendant No. 1 has dishonestly adopted a trade name, logo, and domain name that incorporates the Plaintiff's registered "EMAAR" mark. Clearly, it is the Defendant No. 1's CS(COMM) 796/2023 Page 6 of 8 This is a digitally signed order.

30. Considering that both the Plaintiff and the Defendant No. 1 operate in the same real estate sector, catering to the same segment of consumers and both the marks are identical, triple identity test is satisfied in the present case.

31. Further, if the Defendant No. 1 is allowed to continue to provide services under the mark 'EMAAR', it would lead consumers/people to believe that it is Defendant No. 1's activities are associated with the Plaintiff.

32. Thus, the Plaintiff has made out the case for the grant of an ex-parte ad-interim injunction. Balance of convenience lies in favour of the Plaintiff, and irreparable harm would be caused to the Plaintiff, if the Defendants are not restrained from using the impugned identical 'EMAAR' mark. Therefore, the Defendant No. 1, its directors and all others acting for and on their behalf, are restrained from using the mark 'EMAAR' or any other similar mark, in relation to services that would amount to an infringement of the Plaintiff's proprietary rights in the registered marks as set out at paragraph 23 above.

33. The concerned Registrar shall lock and suspend the domain name https://emaarhospitality.org/and shall also deactivate the website of the Defendant. At this stage, ld. Counsel for the Plaintiff submits that an advance copy was served upon the DNR who has also confirmed that they have locked the impugned domain name.

34. Compliance of Order XXXIX Rule 3 CPC be effected within two weeks.

35. Reply to the applications be filed within four weeks from the service CS(COMM) 796/2023 Page 7 of 8 This is a digitally signed order.

36. List the application before the Court on 27th March, 2024.

37. Order Dasti.

PRATHIBA M. SINGH, J.

NOVEMBER 10, 2023 dj/dn CS(COMM) 796/2023 Page 8 of 8 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/11/2023 at 21:20:32

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Delhi High Court - Orders