Delhi District Court
Also At vs Aikya Gobal on 18 May, 2015
IN THE COURT OF MS. VINEETA GOYAL, ADDITIONAL DISTRICT
JUDGE 01, PATIALA HOUSE COURTS, NEW DELHI DISTRICT, NEW
DELHI
TM No. 297/13
M/s Inter IKEA Systems BV
Olof Palmestraat 2
2616 Delft
Netherlands
Also at :
C/o M/s Ikea Trading (India) Pvt. Ltd.,
C16, C Block Market,
Paschimi Marg, Vasant Vihar,
New Delhi - 110 057.
... Plaintiff
Versus
Aikya Gobal
135, 7th Main Road,
40th Cross Road, 5th Block,
Jayanagar, Bangalore - 560 041.
Karnataka
... Defendant
Appearance :
Ms. Shwetasree Majumder, Ld. counsel for plaintiff.
Ms. Rajeshwari, Ld. counsel for defendant.
O R D E R
1. This order shall dispose off the application under Order 39 Rule 1 & 2 CPC TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 1 of 22 moved by the plaintiff and application Order 39 Rule 4 of CPC moved by the defendant. The present proceedings are arising from suit of injunction filed by plaintiff against defendant. The plaintiff stated to be a company incorporated under the laws of Netherlands is worldwide owner of IKEA Trademarks which it franchises under which wide range goods and services sold such as furniture, accessories, bathrooms and kitchen fitting, home and office furnishing products, stationery including paper and paper articles, tools and implements falling in classes 2, 8, 11, 16, 18, 20, 21, 24, 25, 27, 28, 29, 30, 31, 35, 36, 39, 41 and 42 (herein referred as the said goods and business) are being sold.
2. The plaintiff claims to be proprietor of internationally renowned trademark 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 (herein referred as said trademark / trade name). The art works involved in the various stylized and device formats of the said trademark has been created over a period of time and the plaintiff owns the copyright therein for being original art works.
3. According to the assertions, plaintiff, is the founder of trademark as it has coined, conceived and adopted the said trade mark IKEA in about the year 1943. Ever since then the plaintiff has been honestly & commercially using the said trademark / trade name in relation to its said goods and business in the course of trade. The said trademark has built up a globally valuable and enduring trade, goodwill and reputation. IKEA is a rare coined and unique word having all the TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 2 of 22 trappings of an invented mark and is an inherently strong mark. The plaintiff initially started using said trademark / trade name in relation to pens, wallets, picture frame, table runners, watches, jewellery and nylon stocking etc. but subsequently use was expanded to furniture in about the year 1947. The goods and business under the said trademark / trade name are guaranteed and sold in over 75 countries of the world and across the continents and regions including India. It is claimed that the plaintiff enjoys transborder reputation because the goods of the plaintiff are sold and traded through its extensive marketing network of retail, internet, ecommerce and its affiliates/ subsidiaries. The trademark IKEA (word or stylized or design or label or device or in Hindi) is duly registered / pending registration in India under the Trade Marks Act 1999 as per details given in para 8 of the plaint. The registrations of the trade name/ trademark are regular, renewed, and valid upto date. It is further averred that the pending applications are likely to be allowed as per law.
4. The plaintiff contends that the sales of IKEA group for the financial year 2004 was 14.8 billion Euros and for the financial year 2006 was 17.3 billion Euros. The sale has been steadily increasing and the said trademark IKEA stood amongst the top 50 brands in the best global brands 2010.
5. The plaintiff asserts that it has been promoting its said trademark / trade name and the goods and business through extensive advertisements, publicities, promotions and marketing and marketing research. It has been spending enormous amount of money, effort, skill and time thereupon. It has been advertising its trade name/ mark through various means and modes including visual and print TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 3 of 22 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. The plaintiff contends that the purchasing public, trade and industry at large in India and world over identify and distinguish its said goods as high quality products exclusively as that of the plaintiff.
6. The plaintiff also asserts that with the advent of ecommerce and growth of internet, in the year 1996, the plaintiff adopted the said trademark IKEA as essential and material part of its domain name viz. www.ikea.com. The said website contains extensive information about the goods and the services rendered and provided by plaintiff under its said trademark / trade name. In fact the website has hundreds of thousands of visits from people looking for information. The plaintiff asserts that it is an international home products company whose franchisees sell ready to assemble furniture such as beds and desks, appliances and home accessories.
7. The plaintiff asserts its active compliance with the spirit of law, ethical standards and international norms as a part of corporate social responsibility policy functioning as a built in self regulating mechanism. The goal is to encourage a positive impact through its activities on the environment, consumers, employees, communities, stake holders and all other member of public sphere and claimed that IKEA believe in proactively promoting the business in public interest by encouraging community growth, development and voluntarily eliminating practices that harm the public sphere regardless of legality.
TM No. 297/13
Inter IKEA Systems BV Vs. Aikya Global Page no. 4 of 22
8. According to plaintiff, 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. India alone accounts for 70% of regional purchases. The plaintiff asserts that in rural India the plaintiff's solar powered lamp lights are path for girl students. In order to encourage rural girls to excel, UNICIEF is partnering with the plaintiff with social initiative to provide these lamps to students. The goal is to promote the rights of every child to be healthy, secure childhood with access to quality education. The plaintiff also asserts that it has actively worked on issue of child labour with a goal to make sure that no child labour is involved in the manufacturing of plaintiff's products. It wants to offer to the customers well designed, functional home furnishing products of good quality and at a lower price, manufactured under acceptable working conditions supplied with a care for the environment. The plaintiff also support that UN convention of rights of the child 1989 with basis requirement to always put the best interest of the child in focus. The plaintiff also asserts, that it, together with UNICEF and WHO has initiated a five year immunization program. The plaintiff's aforesaid IKEA trade mark / trade name enjoys a very strong presence in India. In addition to its trans border reputation, the plaintiff enjoys the actual use of its said trade mark / trade name in India. Its goods and business are being sold and traded through information technology, extensive marketing network including retail, internet, ecommerce and its franchisee.
9. The plaintiff states that defendant has adopted and started using and / TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 5 of 22 or intends to so use in relations its impugned services and business under the trademark AIKYA (referred as impugned trademark). The plaintiff contends that the defendant is also using the impugned trade mark, AIKYA as part of their trade name namely AIKYA Global and also using it as essential and prominent part of domain www.aikyaglobal.in. The defendant is engaged in services and business of an end to end professional consultancy and services in various types of events, media, communication, both internal and external to an organization and allied at cognate services (herein referred as impugned services and business). The impugned trade mark / trade name / domain name, copied and imitated by the defendant is wholly and absolutely same, similar and deceptively similar to the plaintiff's said trade marks / tradename in each and every respect including phonetically, structurally, in its basic idea and in its essential features. The defendant by their impugned adoption and use of impugned trade mark / trade name are violating the plaintiff's said trademarks /trade name and thereby infringing the plaintiff's registered trademark / trade name and passing off and enabling others to pass off their services and business as that on the plaintiff as well as deputing the plaintiff's proprietary rights and goodwill and reputation there in. Any person not knowingly the relationship between the parties to this action is bound to get confused. The URL of the defendant i.e. www.aikyaglobal.in is identical with and confusingly similar to the plaintiff's URL / website namely www.IKEA.com. The customers may be attracted to the impugned website of the defendant under the believe that same is related to the plaintiff. The plaintiff contends that the defendant actions are motivated purely by malafide intention to trade upon and get benefit TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 6 of 22 from the international reputation and goodwill enjoyed by plaintiff and its products and thereby cause deception on the unwary customer by passing of its business as and for the business of plaintiff.
10. Ld counsel for plaintiff has taken me through the plaint and the documents which have been filed for the purpose of establishing that IKEA is a well known mark in the mind of public internationally and even in India. It is contended that Section 2(zg) of the Trade Mark Act defines a well known trademark in relation to any goods or services to mean a mark which has become so substantial among segment of public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services as a person using the mark in relation to first mentioned goods or services. In the present case goodwill acquired by the company is not limited to the country where the goods are freely available because the goods even though may not available but are widely advertised in newspapers, magazines, and by other modes of media. The plaintiff contends that the advertisements in respect of goods and the trademarks under which they are marketed in one country are also taken cognizance in other countries. The goodwill & reputation of trademark does not depend upon availability of goods in a particular country. The Ld counsel for plaintiff placed reliance in case titled Kamal Trading Company vs. Gillette UK Ltd (1988) 1 PLR 135, wherein it was held that goodwill or reputation of goods does not depend upon availability in a particular country a break in user of trademark does not destroy its reputation if the mark is distinctive and is continuous to survive. It is further TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 7 of 22 contended that people in India are aware of IKEA products as such the reputation and goodwill of plaintiff has travelled in by diverse ways i.e. by advertisements in magazines and through internet. Thus the plaintiff fulfills the criteria as enshrined in Section 11 of the Trade Marks Act, 1999.
11. The Ld counsel for plaintiff further contends that no person has any right to represent his goods as the goods of another. Assuming for the sake of arguments that furniture manufactured by the plaintiff are not available for sale in India or having any store houses yet plaintiff is entitled to protect its global reputation and goodwill because the goodwill/ image/ reputation of goods and trademark does not depend upon its availability in a particular country. In order to support this contention reliance was placed on decided case of N.R. Dongre Vs. Whirlpool Corporation AIR 1995 Delhi 300 (DB) holding that from prima facie evidence of advertisements in international publications and sale of products bearing the Whirlpool trademark in various geographical regions of the world and inspite of sales in India limited to the US Embassy and the US Aid Office in Delhi, injunction was issued in this case. Reliance is also placed in case of Milmet Oftho Industries Vs. Allergan Inc. (2004) 12 SCC 624 to contend that the mere fact that the mark has not been used in India would be irrelevant if the plaintiff is the first in the world market. The Ld. counsel for plaintiff further contends that IKEA is a well known trademark as the plaintiff's advertising has appeared in news and magazines having both national and international circulation.
12. Ld counsel for plaintiff further contends that once it is established TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 8 of 22 that the said trademark of plaintiff is a well known trademark, Section 29 of the Trade Mark Act 1999 accords special protection to it and grants an injunction even if the goods of the defendant are dissimilar. The extract of Section 29 of the Act is as under:
29. Infringement of registered trade marks.--
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of subsection (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which--
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 9 of 22 distinctive character or repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising. (7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
13. It is contended that for the present purposes section 29 (4) is relevant as it deals with the cases where the marks are identical or similar but the goods with TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 10 of 22 respect to the marks are dissimilar. It is also contended that IKEA is a registered mark having reputation in India and deserves a greater degree of protection. Reliance is placed on a judgment of Sunder Parmanand Lalwani and ors vs. Caltex India Ltd. AIR 1969 Bombay 24 where the plaintiff's mark "Caltex" was pertaining to petroleum products and while considering registration of mark "Caltex" by the defendant for watches, the Hon'ble High Court held that though the goods were different, there was a likelihood of injurious association of the defendants mark in relation to the plaintiff's trade. In case "BATA" India Ltd Vs. Pyarelal & Co. AIR 1985 ALL 242, the marks were not in relation to similar goods, the defendant trade was in relation to mark "BATA" foam on the mattresses, sofa, cushions and other articles. Hon'ble Allahabad High Court observed that the name "BATA" was well known in the market and the user of such a name was not only likely to cause deception in the minds of ordinary customer but could also cause injury to the plaintiff company and the fact that the plaintiff was not producing foam was not enough to hold that there could not be passing off action in respect of the user of name "BATA" to the products marketed by the defendant. In Daimler Benz Aktiegesellschaft vs. Hybo Hindustan AIR 1994 Delhi 239 marks were not in relation to similar goods and the Hon'ble Delhi High Court observed that use of mark "Benz" and the three pointed star device in relation to undergarments is likely to create confusion in the mind of public as Benz, as a name of a car is well known to everyone. Ld counsel for plaintiff also placed reliance on various judgments in which similar issue was raised.
14. Ld counsel for plaintiff further argued that marks "IKEA" and "Aikya TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 11 of 22 Global" are phonetically similar to each other and the sole intention of defendant is to exploit the reputation of plaintiff and also to pass off the goods of the defendant as that of plaintiff by such exploitation. It is further argued that defendant is trying to take benefit of the reputation attached with the trademark IKEA to deceive the general public. Ld counsel for plaintiff referred to the decisions of Hon'ble High Court of Delhi in case of Alfred Duncon Limited vs. RPS Chawla & Ors 2004 (29) PTC 39 (Delhi) wherein it was observed that words "DUNHILL" and "SUNHILL" are phonetically similar in sense that except for the first letter S of trademark "SUNHILL" all the letters of trademark are similar to that of plaintiff's trademark "DUNHILL". Reliance is also placed on case of Dharampal Satyapal Limited Vs. Sunil Kumar Rajput & Ors. 2013 (56)PTC 116 (Delhi) wherein it was observed that New Rajneegandha Greens, Rajneegandha Greens Noida and Rajneegandha Park used by defendants are phonetically identical with and even otherwise similar to the registered trademark Rajnigandha of the plaintiff. Except replacing the alphabet "i" with "ee" in the above mark there is little difference in two marks.
15. The Ld counsel for plaintiff further argued that existence of common field of activity is not a condition precedent for grant of relief of interim protection. Initially it was product to product but now it has undergone a change and the focus has shifted to the state of mind of the public to the extent that whether there is a probability of confusion or deception. It is contended that plaintiff has acquired reputation in India and by adopting the word AIKYA the defendants are trading on plaintiff's reputation to pass off goods as those of plaintiff's. TM No. 297/13
Inter IKEA Systems BV Vs. Aikya Global Page no. 12 of 22
16. The above arguments were, on the other hand, repelled by the Ld counsel for defendant by contending that the defendant company was incorporated in June 2008 and its mark AIKYA was invented and honestly adopted. The two marks are entirely different and based on different designs. AIKYA is a Sanskrit word meaning oneness, unity and harmony. It was coined with the aim of providing services so as to bring all the entities under one roof. The work AIKYA was coupled with 'global' which denotes that defendant wants to bring all the global entities under one roof and provide efficient services. Further, even phonetically two marks are entirely different for the reason that both are pronounced differently. The word IKEA is pronounced as "EE KE YA" where as AIKYA Global is pronounced as AIKYA Global. Moreover, the association/ addition of word global alongwith AIKYA is an important factor that distinguishes the two trademarks. It is further contended that many other unconnected entities use the mark AIKYA as a part of their trade for example AIKYA Spa since 2009, AIKYA Recreation Centre since 1982, AIKYA since 2012 etc. This shows that the word AIKYA is independent of the said trademark of the plaintiff. It is further contended that the concept of comparison of two marks for purpose of determining whether they are deceptively similar or likely to cause confusion is never on the basis of either only eye or only the ear i.e. only visual or aural comparison. It is argued that in determining whether there is likelihood of confusion, the court must focus on the overall impression made by the respective signs. A strict criterion must be applied with respect to likelihood of confusion between pictorial components which are basically descriptive and imaginative contents. In order to strengthen the argument Ld counsel TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 13 of 22 referred to the judgment titled Sabel BV & Puma AG Rudolf Dassler Sport argued that global appreciation of visual, aural or conceptual similarities of marks in question must be based on overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of average customer of the types of goods or services in question plays a decisive role in global appreciation of likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyze its various details. Ld. counsel referred to Article 4(1)(b) of Directive which speaks that directive is designed to apply only if, by reason of identity of similarity both of the marks and of the goods or services which they designate, there exists a likelihood of confusion on the part of public, which includes the likelihood of association with earlier trademark.
The defendant placed reliance on para 21 of decision in the case Mulhens vs. OHIM wherein it was observed that it is conceivable that marks phonetically similarily alone could create a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No. 40/94. However, it must be noted that existence of such a likelihood must be established as a part of global assessment as regards the conceptual, visual and aural similarities between the signs adduced. In that regard, the assessment of any aural similarity is but one of the relevant factors for the purpose of global assessment. Ld counsel for defendant then referred to the decision of Hon'ble APEX Court in case K.R. Chinnakrishna Chettiar vs. Shri Ambal & Co. Madras & Anr AIR 1970 SC 146 wherein it was held that resemblance between the two marks must be considered with reference to ear as well as eye. TM No. 297/13
Inter IKEA Systems BV Vs. Aikya Global Page no. 14 of 22
17. Ld counsel for defendant argued that after applying the global assessment test, when the visual and aural impressions of two marks are tested, both marks are entirely different. In case of AIKYA the opening syllable are AIK where as in case of IKEA it is EEKEE, they begin with different vowels. Further, in case of IKEA, the last portion has extended EEYA where in case of defendant it is shortened as KYA making a marked difference in pronunciation. Both follow a different sequence of alphabets. In AIKYA, there is an additional word Global which further makes the marks entirely different. The counsel appearing for defendant relied upon decision of Hon'ble High Court of Delhi in case titled M/s Biofarma vs. Sanjay Medical Store 1997 PTC 17 wherein two marks namely "TRIVEDON" and "FLAVEDON" were found to be prima facie dissimilar to each other. In matter of F.HoffmannLa Roche & Co. Ltd vs. Geoffrey Mallor & co Pvt. Ltd AIR 1970 SC 2062, it was observed by Hon'ble Supreme Court of India that letters and words of trademarks "DROPOVIT" and "PROTOVIT" were dissimilar and there was no reasonable probability of confusion between words either from visual or phonetic point of view. In case of Reckitt & Coleman of India Ltd vs. Medicross Pharmaceuticals Pvt. Ltd. 1992 Law Suit (Bombay) 198 Hon'ble Bombay High Court observed that trademark "Medisprin" is neither structurally nor phonetically or visually similar to "disprin" and neither the products are same nor the packaging or mode of marketing are similar or likely to create confusion. In case of Inter Ikea Systems BV vs. OHIM (case T112/06), it was observed that the marks IKEA and IDEA are visually and conceptually different. The significance of those difference is increased by the fact that the perception of marks at issue by the TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 15 of 22 average consumer who tends to be observant, is overwhelming visual and conceptual and thirdly any aural similarity is low it must be held that marks at issue are different over all. Ld counsel for defendant also placed reliance on various judgments in which similar issue was raised.
18. It is further contended that plaintiff's mark has striking blue and yellow combination whereas defendant mark is an artwork of combination of red and white colour. The red and the white background of the defendant's mark is the dominant feature and in addition to that, mark is used with tagline such as EVENTS. MEDIA. COMMUNICATION.
19. It is further argued that the existence of common field of activity still continues to be a primary requirement; there cannot be any monopoly in the use of trademark. The nature of goods and products of the plaintiff and that of defendant carried on by them being different, there is no likelihood of any deception or confusion being false. The trade channels through which the products / services are sold are different. Plaintiff's goods (furniture and furniture fittings / furnishing) are selected by the customers through retail outlets or online channels whereas the services of defendant's are to be availed only by approaching the defendant individually and after assessing his capabilities. The defendant only offers customized services such as managing and foreseeing events, managing public relations, content management, communication etc all of which are personalized services. In the normal course of business a customer approaches the defendant with their problem and defendant offer services to solve the problem. The customer TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 16 of 22 makes the payment and services are rendered by the defendant. The customer is likely to approach the defendant only after making reasonable enquiries about the competency and activities of defendant in the field. The market sector of each of the plaintiff and defendant product / services in each of the case is different. In case of defendant, they are the people requiring HR services whereas the public in case of plaintiff are those desirous of purchasing furniture. Therefore, the market and public are different. The products and the services are purchased after making informed choice and after making sufficient enquiries.
20. Reliance has been placed upon judgment titled First Computes vs. A Guruprasad 1996 PTC (16) wherein it was observed that the person who approaches the plaintiff for the purchase of computers and defendant for the purpose of training under the defendant are educated people who cannot get confused since the activities of both the parties are different. In case of EuroSolo Energy Systems Ltd vs. Eveready Industries India Ltd., MANU/WB/1400/2009 para 14 where goods are purchased by sophisticated educated people who are able discern the difference between one product and another by the tradename, these would not be applicable in cases where goods are sold to a mixture of urban and literate as well as rural, illiterate and unwary customers.
21. Ld counsel for defendant further argued that the balance of convenience lies in favour of defendant as from the facts on record it is abundantly clear that plaintiff is not using the mark in India for event, management and communication which services fall in class 35.
TM No. 297/13
Inter IKEA Systems BV Vs. Aikya Global Page no. 17 of 22
22. On repelling aforesaid contention, ld counsel for plaintiff argued that at the interim stage assessment is not likelihood of success of plaintiff case but whether prima facie case is made out without due cause of Section 29(4) of the Act has to be understood in the context of legal position when it is well known and invented mark, the law gives it the highest type of protection and hence adoption of phonetically similar trademark by the defendant is presumed to be without due cause. It is further argued that the global assessment test does not exist in India. Indian trademark jurisprudence is well developed with unique Indian Legal Principles such as transborder reputation which has been established by the Court. Indian test is similarity test and not differences test in passing off and a comparison of the marks simpliciter in infringement. The test of phonetic or visual similarity are independent and not conjunctive.
23. I have given a careful consideration to the facts as emerging from the documents and the arguments addressed by the parties to the suit. At the outset, it needs to be understood that the present application under O 39 Rule 1 & 2 would require only a prima facie case, irreparable loss and of balance of convenience. The guiding principles have been succinctly laid down for grant or denial of temporary injunction of the conflicting trade names/ trademarks.
24. The first argument of the plaintiff that IKEA has assumed an international brand and qualify to seek protection of its trade name and trademark. Thus no incapacity to seek remedy of protection can be attributed to its minimal presence in India. The argument is acceptable to an extent that IKEA is not TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 18 of 22 disentitled to protection merely on this ground because international trade names and trademarks are protected.
25. In the present case, the grievance of the plaintiff is that the defendant AIKYA GLOBAL is engaged in rendering personalized services of managing and foreseeing events, managing public relations, content management, communication etc. using the mentioned trade name which is phonetically similar to the trade name IKEA likely to create an impression in the minds of the customers that these services are being provided by the plaintiff.
26. The first contention of the plaintiff is that there exists possibility of deception in the minds of customers created by alleged phonetically similar trade name used by the defendant. But before analyzing the conflicting trade names it would be useful to refer to the guiding principles in this regard which have been judicially propounded such as rules of 'antidissection' and identification of 'dominant mark'. The Rule of AntiDissection mandates that the Courts whilst dealing with cases of trademark infringement involving composite marks, must consider the composite marks in their entirety as an indivisible whole rather than truncating or dissecting them into its component parts and make comparison with the corresponding parts of arrival mark to determine the likelihood of confusion. The reasoning of the said principle is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole and not by its component parts. The Identification of 'Dominant Mark' would suggest that while a mark is to be considered in entirety, yet it is permissible to accord more TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 19 of 22 or less importance or 'dominance' to a particular portion or element of a mark in cases of composite marks. Thus, a particular element of a composite mark which enjoys greater prominence visàvis other constituent elements, may be termed as a 'dominant mark'.
27. Now applying the above two principles on the trademarks in hand IKEA and AIKYA Global. It would be useful to tabulate the marks in its written format and calligraphy side by side. The color scheme would be described in IKEA as Blue and Yellow whereas in Aikya Global it is Red and White.
Blue Yellow (IKEA) Blue Red White (Aikya global) White (event, media, management)
28. The concept of Anti Dissent would guide that AIKYA GLOBAL has to be read in conjunction and it would not be permitted to merely dissect both these words in to two to allege that the first part AIKYA has a quarrel with IKEA. The two words together would in no way cause any confusion in the minds of the prospective customer that the trade name belongs to IKEA. The customer base of event management would not get a feeling that the services of the defendant are emerging from the trade area of the plaintiff. The preposition of law propounded by section 29(4) of the TM Act which mandates injunction is on different footing. Under that TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 20 of 22 provision are the cases such as somebody is trying to sell TATA Salt of say MARUTI bed mattresses. In such cases the recognition of first word is so strong and dominant that conclusion of its connection with the brand holder is an irresistible. The protection umbrella of section 29(4) would be unfolded only if there is a direct use of a dominant part of the trade name directly. The use has to be very direct and no dilution. In the present case the dominant part of the trade name is IKEA and under section 29(4) of TM Act would be extended against a person if the trade name is used as IKEA salt or say IKEA event management. However, I am not an agreement with the plaintiff that such protection would get extended to use of word AIKYA Global because for dissimilar goods and services the other trade mark should use the dominant part of the original trademark/ name. In a circumstance where the complaining trade name is not very convincingly phonetically similar to the offending trade mark if any protection is given it would be seen as monopolizing. In the present case, I am not prima facie satisfied that AIKYA GLOBAL would be creating impression in the minds of the customers that the services pertain to IKEA.
29. The aforesaid conclusion is further fortified in the factual background that the customer base of IKEA and AIKYA Global are very different and aware class of society who can be confused with slight similarity of tongue twisting. Both the parties to the suit are running robust website which does not contain any objectionable claim. The plaintiff is well within their rights if they hoist a disclaimer on its website about having no association with services given by the defendant. It cannot be lost sight that even the defendant over a period of time might have raised TM No. 297/13 Inter IKEA Systems BV Vs. Aikya Global Page no. 21 of 22 at least some goodwill which cannot be overrun merely because there is the remotest possibility of any stray customer being misguided and as on date even that there is a mere presumption.
30. The application under Order 39 Rules 1 & 2 CPC moved by plaintiff is hereby rejected and an application under Order 39 Rule 4 CPC moved by defendant is allowed. This order is confined only to the limited question of ad interim injunction, any observation made in this order will not amount to any expression on final merits and the factual aspects affecting the final judgment.
Pronounced on 18.05.2015 (Vineeta Goyal)
Additional District Judge1
NDD/PHC New Delhi/18.05.2015
TM No. 297/13
Inter IKEA Systems BV Vs. Aikya Global Page no. 22 of 22