Delhi District Court
Also At vs M/S Wrap Art & Design Pvt. Ltd on 27 July, 2023
IN THE COURT OF MR. SATYABRATA PANDA, ADJ-04,
PATIALA HOUSE COURTS, NEW DELHI
TM NO.32 OF 2021
Date of institution: 05.09.2013
Date of arguments:05.07.2023
Date of judgment: 27.07.2023
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 Wrap Art & Design Pvt. Ltd.
507, Eros Apartments,
56 Nehru place,
New Delhi- 110019 ...... Defendant
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.
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 TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 1 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. The representation of said Trade Mark of the Plaintiff as given in the plaint is extracted herein below:
TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN 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 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 TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 3 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 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 TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 4 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 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 TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 5 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) 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 TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 6 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 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 TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 7 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.
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 TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 8 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 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:
TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 9
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 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 TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 10 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 (USD 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 USD 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.
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. 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 TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 11 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 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 M/s Wrap Art & Design Pvt. Ltd., 507, Eros Apartments, 56 Nehru place, New Delhi- 110019 is apparently engaged in the manufacture and trade of furniture, mirrors, picture frames, goods of work, 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 and cognate goods (hereinafter referred to as "the impugned goods and business").
TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 12 The defendant has adopted and started using and/or intends to so use in relation to its impugned goods and business under the trademark IKEES (referred to as "the impugned 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 TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 13 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 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. That in the month of November, 2010, the Plaintiff came across impugned Trademark application of the Defendant IKEES under no. 1953786 in class 20 published in trademarks journal No.: 1458-0 claiming user date since 01/04/2010 therein. Accordingly, on or around 08/02/2011 the Plaintiff filed notice of oppositions thereto. At that point TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 14 of time, the Plaintiff did not come across the impugned goods of the Defendant under the impugned Trademark. In the month of first week of August, 2013, the Plaintiff became aware the impugned services of the Defendants through market and trade. Being aggrieved thereby, the Plaintiff caused an inquiry in the market about impugned trademark, which revealed that the Defendant had just about in the last week of August 2013, adopted and starting using the impugned Trademark in relation to their impugned goods or so intends to use. The defendant is soliciting trade, distributing, advertising and displaying the impugned services under the impugned trademark in New Delhi and other parts of the country. The defendant's impugned user- whether actual or threatened- thereof is clandestine, surreptitious, sporadic, restricted, minimal and very recent, all making it very difficult to detect and verify the precise nature of the defendant' impugned activities.
16. 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:
TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 15 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) A decree of permanent injunction restraining the defendant from disposing of or dealing with its assets including its shops and premises at M/s Wrap Art & Design Pvt. Ltd., 507, Eros Apartments, 56 Nehru place, New Delhi- 110019 and its stocks-
in-trade or any other assets as may be brought to the notice of this Hon'ble Court during the course of the proceedings and on the defendant disclosure thereof and which the defendant 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 Trade Marks Act, 1999 as it could adversely affect the plaintiff's ability to recover the costs and pecuniary relief(s) 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 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."
17. Vide order dated 05/09/2013, summons were issued in the suit and an ex parte ad interim order was also passed in favour of the plaintiff and against the defendant restraining the defendant from selling, soliciting, exporting, displaying, advertising, promoting or dealing in or using the impugned trademarks/tradename "IKEES" trade mark/tradename and/or TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 16 identical or deceptively similar in relation to their impugned goods and business of furniture, mirrors, picture frames etc. and from doing any other acts or deeds amounting to infringement and passing of.
18. The defendant entered appearance in the suit and filed its written statement.
19. Vide order dated 10/07/2015, the issues were framed in the suit as follows:
"1. Whether plaintiff is entitled for permanent injunction in relation to infringement of trade mark/label IKEA and passing of order, as prayed for? OPP
2. Whether plaintiff is entitled for delivery, damages and rendition of account, as prayed for?OPP
3. Whether the suit of plaintiff is barred by virtue of section 28, 29, 30 of the Trade Marks Act, 1999? OPD
4. Whether no cause of action arose in favour of plaintiff?
OPD
5. Whether the plaintiff has not come with clean hands? OPD
6. Relief"
20. Vide order dated 12/07/2016, the application of the plaintiff under Order 39 Rules 1 and 2 CPC was allowed and the application of the defendant under Order 39 Rule 4 CPC was rejected and the ex parte order was made absolute till the pendency of the suit.
21. Subsequently, the defendant stopped appearing in the suit and was proceeded ex parte vide order dated 04/12/2018.
22. The plaintiff has led its ex parte evidence. In support of its case, the plaintiff has examined Mr. Vishal Vig, who has been authorised by the plaintiff company to depose on its behalf, 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. The plaintiff has relied upon the following documents:
TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 17
i) Copy of Power of attorney dated 04.08.2015 Ex.PW1/1.
ii) Copy of Power of attorney dated 21.11.2010 Ex.PW1/2.
iii) Copy of Power of attorney of Gabrielle Olsson Skalin Ex.
PW1/3.
iv) Copy of booklet titled 'our way' Ex.PW1/4.
v) Extracts from plaintiff website www.ikea.com Ex. PW1/5.
vi) Extracts from plaintiff website www.ikea.in alongwith WHOIS particulars Ex.PW1/6.
vii) Extracts from plaintiff website www.ikea.com Ex.PW1/7.
viii) Certified copies of foreign trademark registration certificate Ex.PW1/8.
ix) Copy of legal proceedings certificate for Indian Registration of plaintiff Ex.PW1/9.
x) Extracts from brand channel website Ex.PW1/10.
xi) Extract from website of Hindu Business Line Ex.PW1/11.
xii) Extracts from website of UNICEF and other third party websites showing contribution by the plaintiff Ex.PW1/12.
xiii) Certified copies of invoices issued by Ikea Trading India P Ltd. are collectively Ex.PW1/13 (colly)
xiv) Extracts from various publications about the plaintiff's co is Ex.PW1/14.
xv) Extracts from Trademark Registry website of the trademark journal of the defendant's mark Ex.PW1/15.
TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 18 xvi) Copy of opposition filed by plaintiff as downloaded from the website of trademark registry Ex.PW1/16.
xvii) Copies of leading publication about the business model of plaintiff group Mark A. xviii) Extracts from business week magazine of the year 2001 and 2002 Mark B. xix) Lease deed of Ikea Trading India P Ltd Mark C. xx) Extracts from plaintiff's website Mark D.
23. I have considered the ex parte submissions of the learned counsel for the plaintiff and I have perused the record.
24. Although, the defendant had entered appearance in the suit, subsequent to the interim order having been made absolute, the defendant stopped appearing and was thus proceeded ex parte. It appears the defendant has abandoned the suit and was no longer interested in defending the suit. The plaintiff's evidence, both oral as well as documentary, which was led ex parte is unrebutted and unchallenged. It has clearly come out in the 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 as stated in the plaint. The plaintiff appears to be a well-known brand in the furniture sector having global presence. The impugned mark used by the defendant "IKEES" is deceptively similar to the trademark "IKEA" of the plaintiff and is also being used in the same category of goods being furniture. The defendant has been unable to show how it came about to use the trademark "IKEES" and it appears that the trademark was adopted mala fide to ride on the reputation of the plaintiff's trademark. I would hold that on the basis of TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 19 the ex parte evidence led, on a balance of probabilities, the plaintiff has proved its case as pleaded in the plaint. The plaintiff has been able to show that the use of the impugned trademark "IKEES" by the defendant amounts to infringement of the plaintiff's trademark as well as the tort of passing of. The plaintiff would be entitled to relief of permanent injunction as prayed for in the plaint. The defendants have sought to avoid the proceedings by failing to appear after the interim order was made absolute. The defendant has clearly abandoned its defence in the proceedings and has evaded appearing in order to avoid detection of the extent of infringement. In this manner, the defendant has sought to avoid the rendition of accounts and detection of the infringing goods. The defendant cannot be permitted to derive benefit of such evasion and would be liable for penal damages. As held by the Hon'ble High Court of Delhi in Microsoft Corporation Vs.Rajendra Pawar and Anr. reported as2008 (36) PTC 697 (Del.), awarding punitive damages prevents the erring party from taking advantage of its own wrong by escaping prosecution or detection. Reference in this regard is also made to LT Foods Ltd. v. Saraswati Trading Co. 2022/DHC/004806, Proctor & Gamble Company v. Joy Creators 2011 (450) PTC 541 Del, Louis Vuitton Malletier Vs. Iqbal Singh 2019 SCC online DEL 7879: (2019) 258 DLT 760, and Whatman International Ltd Vs. P. Mehta and Ors, 2019 SCC online Del 6856: (2019) 257 DLT 472. I would hold the defendant liable for punitive damages of Rs. 2,50,000/-.
25. Accordingly, the issues are decided in favour of the plaintiff and against the defendants. The suit is decreed in favour of the plaintiff and against the defendants in terms of the prayer clauses (a), (b) and (c) of the plaint. The suit is also decreed for penal damages of Rs. 2,50,000/- along with interest @ 9% p.a. from the date of the decree till actual realisation.
TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 20 Costs are awarded in favour of the plaintiff. The Pleader's fees is computed as Rs. 30,000/-. Let the decree-sheet be drawn up accordingly.
Judgment pronounced in open Court.
File be consigned to record room.
(SATYABRATA PANDA) Additional District Judge-04 Judge Code- DL01057 PHC/New Delhi/27.07.2023 TM no.298/13 MS INTER IKEA SYSTEMS VS. WRAP ART DESIGN page no. 21