Delhi District Court
Also At vs M/S Mehar Expo on 11 August, 2023
IN THE COURT OF MR. SATYABRATA PANDA, ADJ-04,
PATIALA HOUSE COURTS, NEW DELHI
CS (COMM) NO.387 OF 2019
Date of institution: 10.12.2013
Date of arguments: 05.07.2023
Date of judgment: 11.08.2023
M/s Inter IKEA Systems BV
Olof Palmstraat 2
2616 Delft
Netherlands
Also At:
C/o M/s Ikea Trading (India) Pvt. Ltd.
C-16, C Block Market,
Paschimi Marg,
Vasant Vihar, New Delhi- 110057 ........ Plaintiff
Versus
M/s Mehar Expo
No.11/2725
Kambohan Street, Dr. Asghar Compound
Pul Kambohan Street
Saharanpur-247001, UP
Indiamart Intermesh Ltd.
E-5, Second Floor,
opp. Andhra Bank
Kalkaji, New Delhi-110019 ...... Defendants
JUDGMENT
1. The plaintiff has filed the present suit seeking the relief of permanent injunction, delivery up and rendition of accounts in respect of infringement of the plaintiff's trademark.
CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 1
2. The case of the plaintiff as pleaded in the plaint is as follows. It is stated that the plaintiff is a company organized and incorporated under the laws of Netherlands. The plaintiff is the worldwide owner of the IKEA trademarks and the IKEA Concept which it franchises to its franchisees for the operation of the IKEA Stores in which are sold a wide range of furniture. accessories. bathrooms and kitchen fittings, home and office furnishing products; stationery including paper and paper articles; tools and implements, and running and managing of retail stores and offering full services in connection therewith and allied goods and services falling in Classes 2, 8, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 36, 39, 41, and 42 as detailed and described in Fourth Schedule appended to Trade Marks Act,1999 (hereinafter referred to as "the said goods and business"). The plaintiff is proprietor of their celebrated and internationally renowned Trade Mark IKEA (word per se, stylized, as a device, in Hindi and local languages) as also of their trade name M/s Inter IKEA Systems BV of which the word/mark IKEA forms a significant, material and a key constituent (hereinafter referred to as the "said trade mark/trade name"). The artworks involved in the various stylized and device formats of the said trade mark have been created over a period of time and the plaintiff owns the copyrights therein they being original artworks. All references to the plaintiff's said trade mark/trade name include the respective artworks involved. The representation of said Trade Mark of the Plaintiff as given in the plaint is extracted herein below:
CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 2
3. It is further stated in the plaint that the founder of the plaintiff coined, conceived and adopted the trade mark IKEA in about the year 1943. Ever since its bona fide and honest adoption in about the year 1943, the plaintiff since then has been honestly, commercially and in the course of trade using its said trade mark/trade name in relation to its said goods and business and has built up a globally valuable and enduring trade, goodwill and reputation thereunder. IKEA is a rare, coined, unique word having all the trappings of an invented mark and is an inherently strong mark. The plaintiff initially in about the year 1943 started using its said trade mark/trade name in relation to pens, wallets, picture frames, table runners, watches, jewellery and nylon stocking etc. and in about the year 1947 the plaintiff started using the same in relation to furniture. Ever since then the plaintiff has been expanding and extending the use thereof to a wide range of its goods and business and intends to expand further thereof over a period of time and to cover more and more countries of the world and across all regions and territories. That as of now the plaintiff's said goods and business under its said trade mark/trade name are branded and sold in over 75 countries of the world and across all continents and regions including in India where in addition to its actual CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 3 use the plaintiff also enjoys its transborder reputation and use. The plaintiff's said goods and business are sold and traded through its extensive marketing network including through retail, internet, e- commerce and its affiliates/subsidiaries.
4. It is further stated in the plaint that the plaintiff immensely values and guards its Intellectual Property Rights. The trade mark IKEA (word or stylized or design or label or device or in Hindi) is duly registered/pending registration in India under Trade Marks Act, 1999 in favour of the plaintiff or the plaintiff's affiliate/subsidiary in different classes for goods and services as per the following particulars:-
S.No. Trademark Application No. Class Logo Status 01 IKEA 772408 2 Registered 02 IKEA 772417 2 Registered 03 IKEA 772416 8 Registered LABEL 04 IKEA 772418 8 Registered 05 IKEA 1523575 11 Registered LABEL 06 IKEA 1523585 11 Registered (HINDI) 07 IKEA 616435 11 Registered (HINDI LABEL) 08 IKEA 772409 16 Registered 09 IKEA 772419 16 Registered CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 4 10 IKEA 772410 18 Registered 11 IKEA 772420 18 Registered 12 IKEA 1528939 18 Registered LABEL 13 IKEA 1528940 19 IKEA Pending 14 IKEA 343317 20 IKEA Registered 15 IKEA 616434 20 Registered 16 ILEA 1523574 20 Registered (LABEL) 17 IKEA 1523584 20 Registered 18 IKEA 471123 21 Registered 19 IKEA 1523563 21 IKEA Registered 20 IKEA 471125 24 Registered 21 IKEA 1523562 24 IKEA Registered 22 IKEA 1523573 24 Registered LABEL 23 IKEA 772411 25 Registered 24 IKEA 772421 25 Registered 25 IKEA 471124 27 Registered 26 IKEA 1523561 27 IKEA Registered 27 IKEA 1523572 27 Pending CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 5 LABEL 28 IKEA 772412 28 Registered 29 IKEA 772422 28 Registered LABEL 30 IKEA 1523569 28 IKEA Registered 31 IKEA 772413 29 Registered 32 IKEA 772423 29 Registered DEVICE 33 IKEA 772414 30 Registered 34 IKEA 772424 30 Registered LABEL 35 IKEA 772415 31 Registered 36 IKEA 772425 31 Registered 37 IKEA 1523568 35 IKEA Registered 38 IKEA 1523571 35 Registered LABEL 39 (DEVICE 1523576 35 Pending OF COLOUR) 40 (DEVICE 1523577 35 Registered OF COLOUR) CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 6 41 (DEVICE 1523578 35 Registered OF COLOUR) 42 (DEVICE 1523579 35 Registered OF COLOUR) 43 IKEA 1523583 35 Registered 44 IKEA 1523586 35 Registered LABEL 45 IKEA 1523567 36 IKEA Registered 46 IKEA 1523570 36 Registered LABEL 47 IKEA 1523566 39 IKEA Registered 48 IKEA 1523582 39 Registered LABEL 49 IKEA 1523565 41 IKEA Registered 50 IKEA 1523581 41 Registered LABEL 51 IKEA 1523564 42 IKEA Registered 52 IKEA 1523580 42 Registered LABEL 53 IKEA 2114738 43 IKEA Pending CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 7 54 IKEA 2114739 43 Pending LABEL 55 IKEA 2005848 43 IKEA Registered 56 IKEA 2005849 45 IKEA Pending
5. It is further stated in the plaint that the plaintiff's various registrations of trademark IKEA (word or stylized or design or label or device or in Hindi) are regular, renewed and valid and up-to-date. Further pending applications in respect of trademark IKEA (word or stylized or design or label or device or in Hindi) are likely to be allowed as per law. The plaintiff's trade mark IKEA is duly registered or pending registration in all major countries of the world and across all continents, and the list thereof along with copies of registration certificates, pending applications etc. is placed on record along with the plaint.
6. It is further stated in the plaint that the sales for the IKEA Group for the financial year 2004 (1 September 2004 - 31 August 2005) are 14.8 billion Euros and for the financial year 2006 (1 September 2005 - 31 August 2006) are 17.3 billion Euros. The sale of the plaintiff has been steadily increasing. The Plaintiff's said Trade Mark IKEA stood amongst the top 50th Brands in the BEST GLOBAL BRANDS 2010. That the Plaintiff is an international home products company whose franchisees sell ready-to-assemble furniture such as beds and desks, appliances and home accessories. The company's franchising network is the world's largest furniture retailer. Plaintiff's Corporate Social Responsibility (CSR) policy functions as a built-in, self-regulating mechanism whereby business monitors and ensures its active compliance with the spirit of the law, ethical standards, and international norms.
CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 8
7. It is further stated that the plaintiff has regularly and continuously been promoting its said distinctive trade mark/trade name and the goods and business thereunder through extensive advertisements, publicities, promotions and marketing & marketing research and the plaintiff has been spending enormous amounts of moneys, efforts, skills and time thereon. The plaintiff has been doing so through various means and modes including through the visual and print media, in leading Newspapers, trade literature & magazines, over the internet etc. and all of which have tremendous reach, availability and circulation world over including in India.
8. It is further stated in the plaint that in view of the aforesaid including the plaintiff's priority in adoption and use thereof, the plaintiff's said trade mark/trade name have acquired enviable and enduring IKEA features prominently on the plaintiff's website www.IKEA.com. The said website contains extensive information about the goods and goods rendered and provided by the plaintiff under its said trade mark/trade name IKEA. In fact, the website has hundreds of thousands of visits from people looking for information on the plaintiff's innumerable and wide spectrum of business and goods. The plaintiff is using the said impugned domain name not only to display its said products under the said trade mark/trade name but is also using it as a tool to carry out its business thereunder. The said domain name of the plaintiff is interactive in nature. The Plaintiff has been using the said domain name in the course of trade and as proprietor thereof globally in relation to its said goods and business and has built up a valuable trade, goodwill, reputation there under.
9. It is further stated that the plaintiff's said goods and business are known, recognized, demanded, sold and traded world over with reference to its CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 9 said trade mark/trade name. The members of the trade, industry, the consumers and general public at large in India and world over are well aware of the plaintiff, the plaintiff's said trade mark/trade name and the plaintiff's said goods and business thereunder. The plaintiff's said trade mark/trade name are well known Trade Marks within the meaning of Section 2 (1) (zg) of the Trade Marks Act, 1999. The true representation of the plaintiff's product bearing the said trade mark has been given as:
10. It is further stated in the plaint that the plaintiff's said trade mark/trade name has all become distinctive, associated with the plaintiff and plaintiff's said goods and business only. The purchasing public, the trade and industry at large in India and world over identify and distinguish the plaintiff's said goods under the said trade mark/trade name with the plaintiff and from the plaintiff's source and origin alone and regard them as a high-quality product exclusively as that of the plaintiff.
11. It is further stated in the plaint that with the advent of e-commerce, the internet and trade there under, in the year 1996 the Plaintiff adopted the said Trade Mark IKEA as an essential and material part of its Domain CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 10 Name viz. www.IKEA.com. For promoting, advertising and popularizing its business & services under the said trade mark/trade name IKEA, the plaintiff maintains a formidable presence on the internet.
12. It is further stated in the plaint that M/s Ikea Trading (India) Pvt. Ltd., is an Indian subsidiary/affiliate of the plaintiff in India at DLF Infinity Tower A, 8th Floor Cyber city, Sector 25, Gurgaon, Haryana, India and also at 1st & 2nd Floor, Radisson Commercial Plaza, NH marketing network including through retail, Internet, E-commerce and its franchisees. The complete range of business activities of the plaintiff under the said trade mark/trade name is available on their web site www.IKEA.com. A large number of Indians traveling overseas, foreign and Indian newspapers and magazines widely read in India wherein the trade mark IKEA earned kudos and rave reviews account for a widespread reputation and goodwill of IKEA brand of range of products in India. The products as well as the information of the plaintiff with reference to its said trade mark/trade name are available to Indians including the Indian Tourists, trade and industry both in India and overseas. The said Indian subsidiary of the plaintiff is one of the 40 odd superstar trading houses in India. This is a special status accorded by the Government for companies with trading activities in excess of INR 7 billion (USO 140 million) per year. IKEA INDIA is a major regional buying center for the IKEA GROUP, specializing in purchases of textiles and fabrics from South Asia comprising India, Pakistan, and Sri Lanka. The Company's purchases and subsequent exports to other parts of the Group total USO 350 million per year, which account for 6% of the Group's purchases. IKEA INDIA currently sources their supplies from 85 vendors spread across South Asia. India alone accounts for 70% of the region purchases.
CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 11
13. It is further stated in the plaint that plaintiff's said IKEA trade mark/trade name enjoys a very strong presence in India. In addition to its trans- border reputation and use the plaintiff enjoys the actual use of its said trade mark/trade name in India. The plaintiff has been commercially and in the course of trade has been using his said trade mark/trade name in India. The plaintiff has been enforcing and protecting its said trade mark/trade name against its pirate use/applications in India. The plaintiff's said goods and business are sold and traded through extensive of world-renowned trade mark IKEA.
14. It is further stated that the plaintiff is a market leader and is a global player and manufacture and marketer. The plaintiff company besides maintaining excellent quality of its said goods lays tremendous emphasis on innovation and through consistent research and development efforts, on which tremendous amounts of moneys and efforts are spent, the plaintiff has consistently been improving the quality of its. products and services with the view to enhance customer satisfaction and increase its profits. The plaintiff's products are known for their superior quality and reliability. It is further stated that there are a grand total of 250 IKEA stores in 34 countries/territories. The IKEA Group itself owns 221 stores in 24 countries (as of December 2006). The other 29 stores are owned and run by franchisees outside the IKEA Group in 15 countries/territories. That the IKEA Group has 90,000 co-workers and operates in 44 countries. The Co workers by region are: Asia + Australia 3,500; North America 11,000; Europe 89,000. That the brandchannel.com - the world's only online exchange about branding products - in their brand channel Readers Choice Awards 2005 ranked IKEA among the top five global brands. Moreover, the brand idea has found mention in different magazines and articles wherein it was CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 12 profusely mentioned and written about. That the said trade mark/trade name/domain name is one of the oldest, most prominent and valuable trade mark/trade name/domain name of the plaintiff. The plaintiff is the proprietor thereof as also of its goodwill and reputation under the statutory and common law. That in view of the plaintiff's proprietary rights both statutory and common law in its said trademark/trade name/domain name, its goodwill and reputation, the plaintiff has the exclusive rights to the use thereof and nobody can be permitted to use the same or any other deceptively similar trade mark/trade name/domain name thereto in any manner whatsoever, in relation to any specification of goods without the leave and license of the plaintiff.
15. It is further stated in the plaint that the Defendant No. 1 M/s Mehar Expo, No. 11/2725, Kambohan Street, Doctor Asghar Compound, Pul Kambohan Street, Saharanpur - 247 001, UP, India is apparently engaged in the goods and business of selling of IKEA tables and allied and cognate goods (hereinafter referred to as "the impugned goods and business") and the Defendant No.2 , Indiamart Intermesh Ltd., E-5, Second Floor, Opp. Andhra Bank, Kalkaji, New Delhi - 110019, India is maintaining website www.indiamart.com which is online B2B (business to business) market place connecting buyers with suppliers. The Defendants are acting in collusion, connivance and in unison. However, the Plaintiff is not aware of the constitution of the Defendants. The Defendants have adopted the trademark/ label which is identical and deceptively similar to that of the Plaintiff's trademark/label in respect of identical goods and/ or cognate/ allied goods.
16. It is further stated in the plaint that the defendant has adopted and started using and/or intends to so use in relation to its impugned goods and business under the trademark IKEA (referred to as the impugned CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 13 trademark). That the impugned trade mark copied and imitated by the defendant is wholly and absolutely same/similar, identical with and deceptively similar to the plaintiff's said trade mark/trade name in each and every respect including phonetically, structurally, in its basic idea and in its essential features. The impugned goods and business there under are having the same/similar nature and description as that of the plaintiff. That the defendant is not the proprietor of the impugned trade mark and have adopted and are so using the same as a trade mark in relation to its impugned goods and business and also reproducing them on their advertising materials etc. and are otherwise dealing with it in the course of trade without the leave and license of the plaintiff. The defendant has no right to use it in any manner in relation to its impugned goods and business or for any other specification of goods and business whatsoever being in violation of the plaintiff's rights therein. That the defendant by their impugned adoption and use of the impugned trade mark is violating the plaintiff's aforesaid trade mark and thereby infringing the plaintiff's registered trade mark and passing off and enabling others to pass off their goods and business as that of the plaintiff as well as diluting the plaintiff's proprietary rights and goodwill and reputation therein. The defendant cannot even be exonerated from the charges of falsification, unfair and unethical trade practices. The defendant' impugned trade mark/trade name is a false trade description. That the defendant is fully aware and/or ought to be aware of the plaintiff's rights, goodwill, reputations, benefits and users etc. in the plaintiff's said trade mark at the time of their impugned adoption and use of the impugned trade mark. The resemblance between the rival trademarks is so close that it can hardly occur except by deliberate imitation. The defendant' impugned adoption and use thereof is mala fide tainted at inception and is pirated and illegal use of the plaintiff's CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 14 said trade mark/trade name. Further, the defendant' adoption and use of impugned trade mark in respect of impugned goods and business would cause confusion and deception in the ordinary course of business among the prospective buyers and consumers of the subject matter goods being persons of average intelligence and imperfect recollection. That the defendant has adopted and started using the impugned trademark dishonestly, fraudulently and out of positive greed with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiff in the plaintiff's said trade mark/trade name. By the defendant' impugned adoption and use, deception and confusion in the market is ensuing and/or is likely to so ensue. The plaintiff's said trade mark/trade name are otherwise being diluted and eclipsed thereby. Any person not knowing clearly the relationship between the parties to this action is bound to be confused by the defendant's impugned adoption and use and might well do business with the defendant thinking that he is dealing with the plaintiff or that some strong, vital and subtle links exist between the plaintiff and the defendant. The defendant intends to earn quick and easy money overnight at the plaintiff's expense. That the defendant, by their impugned activities are not only guilty of infringing the aforementioned registered trademarks of the plaintiff but also are violating the common law right of the plaintiff in the said trademark.
17. It is further stated in the plaint that the Plaintiff learnt about the Defendant No. 1's impugned adoption of the impugned trademark in the last week of October, 2013 when the plaintiff came across the impugned goods vide the impugned trademark on website of the Defendant No. 2 i.e www.indiamart.com. Being aggrieved thereby, the plaintiff caused an inquiry in the market and trade, which revealed that the Defendants had just about in the last week of September, 2013, adopted and starting CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 15 using the impugned trademark in relation to their impugned goods. The plaintiff also learnt that the Defendant No.1 is carrying on its impugned activities under the impugned trademark in a clandestine and surreptitious manner from their premises and that too without issuing formal sale bills. The Defendant No. 1 is not only making the retail sales but are also supplying the impugned goods bearing the impugned trademarks to various other dealers/ shop keepers/ retailers in Delhi including New Delhi markets, who is making the clandestine and surreptitious sales thereof to the ultimate unwary consumers in the markets of New Delhi viz. Chanakyapuri, Barakhamba Road, Gole Maket, Connaught Place etc. which is in the jurisdiction of this Hon'ble Court. Further, the Defendant No. 2 is maintaining www.indiamart.com website, this website is offering/ selling impugned goods to general public and trade under the impugned mark/ label on behest of the Defendant No. 1 through its array of online services, directory services and facilitation of trade promotional events. The Defendant No. 2 is online B2B (business to business) market place for small and medium sized businesses, connecting global buyers with suppliers. The Defendant No.2 offers a platform and tools to suppliers to generate business leads from buyers. The Defendant No. 2 offers business to business link implying thereby that the website is interactive in nature where buyers/ traders buy the goods in bulk and in large quantities by placing the orders online. The impugned website of Defendant No. 2 is accessible throughout India including New Delhi i.e within the jurisdiction of this Hon'ble Court. The extent of infringement is deep because through the instrumentality of the website, the impugned goods under the impugned mark are sold in large quantities and the extent of infringement are wide spread. The above acts are being done by the CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 16 Defendants with their mutual knowledge, understanding, consent and in unison.
18. On the basis of the aforesaid pleadings, the plaintiff has sought the following reliefs in the plaint:
"a) A decree of permanent injunction restraining the defendant by themselves as also through their individual proprietors, partners, directors, agents, representatives, distributors, assigns, heirs, successors, stockist and all others acting for and on their behalf from using, selling, soliciting, exporting, displaying, advertising, promoting, etc. - by visual, audio, print mode, including on the internet- or by any other mode or manner or dealing in or using the impugned trademark/label IKEES or any other impugned trademark/label identical with and/or deceptively similar, in relation their impugned goods and business of furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, -mother-
of-pearl, meerschaum and substitutes for all these materials, or of plastics and allied or any other business/goods/product/goods and from doing any other acts or deeds amounting to or likely to amount to:
Infringement of plaintiff's registered trademarks IKEA as mentioned in Para no. 8 (a) to 8 (w) of the plaint. Passing off of the Plaintiff's rights in the plaintiff's said trade mark/trade name IKEA.
b) Restraining the defendant from disposing off or dealing with their assets including their premises at the addresses mentioned in the Memo of Parties and their stocks in trade or any other assets brought to the notice of the Hon'ble Court during the course of the proceedings and on the Defendants disclosure thereof and which the Defendants are called upon to disclose and/ or on its ascertainment by the Plaintiff as the Plaintiff is not aware of the same as per Section 135 (2) (c) of the Trademarks Act, 1999 as it could adversely affect the Plaintiffs ability the costs and pecuniary reliefs thereon.
c) An order for delivery up of all the impugned finished and unfinished goods and materials bearing the impugned and violative trade mark/trade name or any other deceptively similar CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 17 trade mark/trade name including its blocks, trade names, display boards, sign boards, trade literatures and goods etc. To the plaintiff for the purposes of destruction and erasure.
d) For an order of rendition of accounts of the defendants and a decree to the plaintiff of the amount so ascertained
e) An order for cost of proceedings, and
f) For such other and further order(s) as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case."
19. Vide order dated 18/12/2013, summons were issued in the suit and an ex parte ad interim order was also passed in favour of the plaintiff and against the defendants restraining the defendants from using, selling, soliciting, exporting, displaying, advertising, promoting or dealing in or using the impugned trademarks/tradename bearing the word IKEA or any other trademark identical or deceptively similar to the plaintiff's trademark in relation to their impugned goods and related products.
20. Both the defendants entered appearance in the suit.
21. The defendant no.2 settled the matter with the plaintiff and vide order dated 01/12/2014, the suit was decreed qua the defendant no.2 in terms of the settlement.
22. The defendant no.1 has filed written statement in which it has denied any liability. It is denied that the defendant no.1 had adopted or started using the trademark IKEA or that the defendant no.1 was imitating, or using trademark identical with or deceptively similar to that of the plaintiff. It is stated that the defendant no.1 had never come across the trademark IKEA. It is stated that the defendant no.1 had been approached by the defendant no.2 which was working for various firms CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 18 to promote their business on their website. The defendant no.1 was engaged in manufacturing wooden handicrafts and agreed to the proposal of the defendant no.2. The website was operated by the defendant no.2. The defendant no.1 came to know about the word IKEA as and when the summons were served upon the defendant no.1.
23. Vide order dated 28/07/2015, the issues were framed in the suit as follows:
"1. Whether plaintiff is entitled for permanent injunction to restrain infringement, passing off as prayed for? OPP
2. Whether plaintiff is entitled to any damages and/or rendition of accounts? If so, at what extent? OPP
3. Relief"
24. In support of its case, the plaintiff has examined its authorised representative Mr. Vishal Vig as PW1 and he has tendered his affidavit in evidence as Ex.PW1/A in which he has deposed along the lines of the plaint. PW-1 was cross-examined by the defendant no.1. The plaintiff has also filed the documentary evidence in support of its case.
25. The defendant no.1 was granted opportunity to lead evidence vide orders dated 03/04/2019 and 18/07/2019, however, the defendant no.1 failed to lead any defence evidence. Another opportunity was given subject to costs vide order dated 03/10/2019, however neither costs were paid nor any affidavit in defence evidence was filed. Vide order dated 10/02/2020, the defence evidence was closed. As such, there is no defence evidence on the record.
26. I have considered the submissions of the learned counsels for the parties and I have perused the record.
CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 19
27. My issue-wise findings are as follows.
Issue 1. Whether plaintiff is entitled for permanent injunction to restrain infringement, passing off as prayed for? OPP
28. It has clearly come out in the plaintiff's evidence that the brand "IKEA"
of the plaintiff is a well-known brand and trademark. The plaintiff's trademark "IKEA" is registered with the trademark registry under various registrations as stated in the plaint. The plaintiff is a well-known brand in the furniture sector having global presence. The cause of action of the plaintiff against the defendants in the present suit essentially stems from Ex.PW-1/22 which is an advertisement on the website of the defendant no.2 being www.indiamart.com. Ex.PW-1/22 shows that furniture was being advertised under the brand of 'IKEA' under the name of the defendant no.1. It would be appropriate to extract the relevant portion of Ex.PW-1/22, as under:
"Ikea Table Mehar Expo, Saharanpur Backed with years of experience and technical expertise, we are able to fabricate a superior collection of ikea Table. Our assortment is stringently checked on well-defined parameters as per the set quality standards. Our collection sults the choices and tastes of our esteemed clients. Our collection is finely finished, durable as well as attractive in look. more...
Address: No. 11/2725, Kambohan Street, DrAsghar CompoundPul Kambohan Street, Saharanpur-247 001, Uttar Pradesh, India Websitehttp://www.indiamart.com"
29. In its written statement, the defendant no.1 has admitted that the defendant no.2 had approached it for advertisement of the business of the defendant no.1 on the website of the defendant no.2 and that the CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 20 defendant no.1 had agreed to the same. Thus, the link between the defendant no.1 and the defendant no.2's website is clearly established. However, it is the case of the defendant no.1 in its written statement that the defendant no.1 had not adopted or used the IKEA trademark or any identical or deceptively similar trademark. It was submitted by the learned counsel for the defendant no.1 that the defendant no.2 had on its own shown the 'IKEA' trademark in the name of the defendant no.1 without the authorization of the defendant no.1. Once the defendant no.1 has admitted that it had agreed to listing of its business with the defendant no.2, then the onus was on the defendant no.1 to show that the advertisement Ex.PW-1/22 which shows products under trademark 'IKEA' in the name of the defendant no.1 on the website of the defendant no.2 were not authorized to be advertised by the defendant no.1. However, the defendant no.1 has not led any evidence in its defence to show that the advertisement Ex.PW-1/22 was not authorized by the defendant no.1 to be published on the website of the defendant no.2. The proprietor of the defendant no.1 has not even entered the witness box. An adverse inference would be drawn against the defendant no.1 due to this. Even in the cross-examination of the plaintiff's witness PW-1, not even a suggestion was put to the witness by the defendant no.1 that the impugned advertisement Ex.PW-1/22 on the website of the defendant no.2 was not authorized by the defendant no.1. I would hold that the defendant no.1 has been unable to discharge the onus to show that the advertisement Ex.PW-1/22 on the website of the defendant no.2 which is in the name of the defendant no.1 was not authorized by the defendant no.1. The advertisement Ex.PW-1/22 would clearly constitute an infringement of the plaintiff's trademark as the trademark "Ikea" has been used without any authorization by the plaintiff. On a balance of probabilities, I would hold that the plaintiff has been able to show that it CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 21 is entitled to the relief of permanent injunction as prayed in the plaint. The Issue No.1 is answered accordingly.
Issue 2. Whether plaintiff is entitled to any damages and/or rendition of accounts? If so, at what extent? OPP
30. Now, in so far as the question of damages and rendition of accounts is concerned, I find that the plaintiff has not led any evidence to show that the defendant no.1 was actually indulging in any manufacturing or sale of any products under the impugned trademark. The whole and sole basis of the suit is based on the advertisement Ex.PW-1/22 and there is nothing else to show as to what goods were being manufactured or sold by the defendant no.1 under the impugned trademark. The extent of infringement apart from the advertisement Ex.PW-1/22 has not come out in the evidence. The defendant no.1 has been appearing in the suit and this is not a case where the defendant no.1 has evaded the proceedings. The plaintiff never applied for any discovery or production from the defendant no.1. The plaintiff also did not press for appointment of local commissioners to inspect the premises of the defendant no.1 for purposes of seizure of any impugned goods or articles carrying the impugned trademark. The plaintiff has also itself not led any evidence to show as to what was the nature and extent of infringement and sales by the defendant no.1. The plaintiff has pleaded in the plaint that the defendant no. 1 was not only making the retail sales but was also supplying the impugned goods bearing the impugned trademarks to various other dealers, shop keepers and retailers in Delhi including New Delhi markets. However, I do not find any evidence led by the plaintiff as to the identity of any of these dealers, shopkeepers or retailers or the extent of the sales made. The defendant no.1 appears to be a small trader based out of Saharanpur, Uttar Pradesh. The plaintiff has already settled CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 22 the matter with the defendant no.2 who was the owner and operator of the website on which the advertisement Ex.PW-1/22 was made. The onus to prove the damages was ultimately on the plaintiff to discharge, which I would hold to not have been satisfactorily discharged. In these circumstances in view of the advertisement Ex.PW1/22, I would award only nominal damages of Rs.5000/- to the plaintiff against the defendant no.1.
25. Accordingly, the suit is decreed in favour of the plaintiff and against the defendants for the relief of permanent injunction in terms of the prayer clause (a) of the plaint, alongwith damages of Rs.5000/- against the defendant no.1 alongwith interest @6% per annum from the date of decree till actual realization. Costs are decreed in favour of the plaintiff. Let the decree-sheet be drawn up accordingly.
File be consigned to record room.
Judgment pronounced in open Court.
(SATYABRATA PANDA) Additional District Judge-04 Judge Code- DL01057 PHC/New Delhi/11.08.2023 CS (Comm) no387/19 MS INTER IKEA SYSTEMS VS. MS. MEHAR EXPO page no. 23