Delhi District Court
M/S Inter Ikea Systems Bv vs . M/S Ikea Furnitures & Ors. on 17 December, 2018
M/s Inter Ikea Systems BV vs. M/s Ikea Furnitures & Ors.
IN THE COURT OF DR. AJAY GULATI, ADDL. DISTRICT JUDGE,
SAKET COURTS, SOUTH DISTRICT, NEW DELHI
In the matter of
TM No.37/2016
Filing No.9738/2012
CNR No. DLST010002282012
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,
Paschim Marg, Vasant Vihar,
New Delhi110 057
................Plaintiff
Versus
1. M/s Ikea Furnitures
Plot No.157/30, 35, 39, 40 & 41
Rajeev Nagar, Cachibowli,
Hyderabad500032
2. PJ Reddy Managing Partner
M/s Ikea Furnitures,
Plot No.157/30, 35, 39, 40 & 41
Rajeev Nagar, Cachibowli,
Hyderabad500032
3. K. K. Raju, Manager
M/s Ikea Furnitures,
Plot No.157/30, 35, 39, 40 & 41
TM No. 37/2016 Page No. 1 of 12
M/s Inter Ikea Systems BV vs. M/s Ikea Furnitures & Ors.
Rajeev Nagar, Cachibowli,
Hyderabad500032
4. National Internet Exchange of India (NIXI)
Flat No.6B, 6th Floor,
Uppals M6 Plaza
6 Jasola District Centre,
New Delhi110 025
.............Defendants
Date of Institution : 27.12.2012
Date of reserving the judgment: 27.12.2012
Date of pronouncement : 17.12.2018
Decision : Partly Decreed
SUIT UNDER SECTION 134 AND 135 OF THE TRADEMARKS ACT,
1999 FOR PERMANENT INJUNCTION TO RESTRAIN
INFRINGEMENT, PASSING OFF, DELIVERY UP, DAMAGES AND
RENDITION OF ACCOUNTS
JUDGMENT
1. The present suit has been filed for seeking grant of prayers of permanent injunction, mandatory injunction, delivery up of infringing goods and rendition of accounts against defendant no.1 to 3 on the ground that these defendants have adopted the reg. Trade mark owned by the TM No. 37/2016 Page No. 2 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Furnitures & Ors.
plaintiff company without any authorization. The TM owned by the plaintiff is IKEA.
BRIEF FACTS
2. Plaintiff is a leading home furnishing company having sound global presence. It has its base in Sweden. Though plaintiff has limited commercial presence in India (it has subsidiary in India by the name of M/s Ikea Trading (India) Pvt Ltd.), plaintiff holds a number of registration for its TM IKEA under various classes. It claims to be involved in a number of Corporate Social Responsibility initiatives and also engaged in philanthropic activities in close association with international organizations including the UNICEF. The plaintiff has thus tried to plead that despite its limited commercial presence in India, IKEA is a well known trade mark on account of its cross border reputation and noncommercial activities.
3. Defendant no.1 to 3 were based in Hyderabad and adopted IKEA Furnitures as its trade name. Defendant no.1 is stated to be a partnership concern whereas defendant no.2 & 3 are its managing partner and manager respectively. Defendant no.4 is the internet domain name regulator in India which was deleted vide order dated 26.09.2014 since no relief was sought TM No. 37/2016 Page No. 3 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Furnitures & Ors.
against it. Defendant no.4 was presumably arrayed as a defendant since defendant's domain name www.ikeafurnishings.com was also alleged to be infringing the plaintiff's TM IKEA.
4. On 28.04.2012 exparte injunction was granted to the plaintiff and a local commissioner was also appointed to conduct an inspection of the premises of defendant no.1 & 3 at their business place in Hyderabad. On the subsequent date of hearing, court was informed that defendants have left the given address. Perusal of file does not show any report of the Local Commissioner. None of the order passed after 28.04.2012 show that at any stage, Local Commissioner ever filed his report. Corollary is that no recovery of any infringing goods was ever made from the premises of the defendants. Subsequently, defendants were served by way of publication in the newspaper "The Hindu", Hyderabad Edition dated 10.06.2013 and were then proceeded against exparte on 07.08.2013.
5. At this stage, it needs to be highlighted that as per the averments of the plaint, defendants no.1 to 3 were served with a cease and desist notice for stopping the use of TM IKEA as a part of their trade name/business name. In response, defendants agreed to change their 'name' from IKEA to AIKYA TM No. 37/2016 Page No. 4 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Furnitures & Ors.
which also was not acceptable to the plaintiff on account of high degree of phonetic similarity, and consequently, the defendants were conveyed accordingly. The relevant communications exchanged between the plaintiff and defendant in this regard was exhibited as Ex.PW1/12, Mark X5/PW1, Mark X6/PW1, Mark X7/PW1, & Mark X8/PW1.
6. Subsequently the matter was listed for leading ex parte evidence on behalf of the plaintiff.
EVIDENCE ADDUCED
7. Plaintiff, in order to prove its case, examined Sh. Vishal Vig, the constituted attorney of the plaintiff, as PW1 who led his evidence by way of affidavit A1. PW1 relied on the following documents:
1. Photocopy of the power of attorney dated 04.08.2015 as Ex.PW1/1 (OSR);
2. Photocopy of power of attorney dated 25.11.2010 issued in favour of Ms. Surbhi Bansal as Ex.PW1/2 (OSR);
3. Photocopy of power of attorney dated 06.12.2010 in favour of Ms. Gabrielle Olsson Skalin as Ex.PW1/3 (OSR);TM No. 37/2016 Page No. 5 of 12
M/s Inter Ikea Systems BV vs. M/s Ikea Furnitures & Ors.
4. Extracts from the website of plaintiff providing details about the plaintiff's business as Mark X/PW1;
5. Photocopies of certificates for use in legal proceedings for registration of plaintiff's trademark i.e. application Nos.772424 and 772414 in Class 30, application Nos. 772419 and 772409 in Class 16 and application No.772411 in Class 25 IKEA as Ex.PW1/5 (colly.) (OSR) {earlier the same were marked as Mark X1/PW1 (colly.)};
6. List comprising of international registrations of the plaintiff for IKEA trademark in various countries as Mark X2/Pw1;
7. Copy of some of trademark registration certificates of various jurisdiction as Mark A (colly.);
8. Copies of advertisements, brochures and other sales and promotional literature of the plaintiff as Mark B (colly.);
9. Photocopy of document evidencing that the plaintiff collaborated with Standard TM No. 37/2016 Page No. 6 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Furnitures & Ors.
Chartered Bank in India in 1996 as Mark C;
10. Photocopy of Lease Agreement dated 02.12.2009 as Ex.PW1/7 (OSR);
11. Copies of invoices issued by plaintiff in India as Mark E (colly.);
12. Photocopies of injunction orders passed by Hon'ble Court in favour of plaintiff as Mark X3/PW1;
13. Pamphlet of defendants as Ex.PW1/9;
14. Photocopies of visiting cards of defendant No.2 & 3 as Ex.PW1/10 (OSR);
15. Printout of photograph of premises of the defendant as Mark X4/PW1;
16. Office copy of cease and desist notice dated 19.02.2012 to defendants No.1 & 2 as Ex.PW1/12;
17. Photocopy of email dated 22.02.2012 as Mark X5/PW1;
18. Photocopy of letter dated 22.02.2012 as Mark X6/PW1;
19. Photocopy of email dated 29.02.2012 as Mark X7/PW1;
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20. Photocopy of email dated 02.03.2012 as Mark X8/PW1;
21. Photocopy of office copy of notice dated 05.03.2012 as Ex.PW1/17; and
22. Copies of extracts from the Business Week magazine as Mark F. No other witness was examined by the plaintiff.
FINDINGS
8. The Court gave a patient hearing to the arguments addressed on behalf of the plaintiff, and has also minutely gone through the material available on record and the evidence adduced.
9. I have considered the unrebutted testimony of PW1 and the uncontroverted documentary evidence placed on record by the plaintiff as well as provisions of Trade Mark Act, 1999.
10. Section 29 Sub Section 2 & 3 of the Trade Mark Act, 1999 reads as under:
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"29. Infringement of registered trade marks -
(1) ................... (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."
11. By leading evidence listed above, plaintiff has TM No. 37/2016 Page No. 9 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Furnitures & Ors.
established its statutory rights in the trademark IKEA. Despite service of summons, defendants did not enter appearance to controvert the allegations of the plaintiff that they have infringed the registered trademark of the plaintiff.
12. Perusal of evidence led and the pleadings on record clearly prove that defendant no.1 has infringed the reg. TM IKEA which is owned by the plaintiff company. Defendants have adopted the TM IKEA furnishings of which the most important component is IKEA. Clear intent is reflected on the part of the defendants to gain from the good will created by the plaintiff over the years. Defendant no.1 is also operating in the same commercial space as the plaintiff i.e. home furnishing. Further, on being served with cease and desist notice, defendants themselves offered to change the trade name from IKEA to AIKYA. Eventually however, the defendants left the given address from which they were operating. Despite being served by way of substituted service, none appeared on behalf of defendant No.1 which is admission of the fact that defendant No.1 to 3 were guilty of infringing the registered trademark of the plaintiff under Section 29(2)
(c). Consequently, the suit is decreed against defendant No.1 to 3 qua the prayers of permanent injunction and mandatory injunction. However, in so far as the prayer for delivery up of TM No. 37/2016 Page No. 10 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Furnitures & Ors.
infringing goods is concerned, since the defendants left the given address even before the inspection could be conducted by the Learned Local Commissioner, no recovery was effect. In such circumstances, grant of decree for delivery up of infringing goods is meaningless and thus, the same is declined. In so far as prayer for rendition of accounts is concerned, plaintiff has prayed for alternative prayer of grant of damages. Plaintiff company is having an enviable reputation which has been arduously built up over a long period of time through great efforts. For someone to casually take commercial benefit of sheer hardwork of plaintiff's promoters, directors and employees is totally uncalled for. Consequently, damages of Rs.1,00,000/ is awarded against defendant No.1 to 3, in favour of the plaintiff.
13. In view of the above discussion, the suit of the plaintiff is partly decreed. A decree of permanent injunction & mandatory injunction is passed in favour of the plaintiff thereby restraining the defendants, their individual proprietors, partners, directors, agents, representatives, distributors, assigns, heirs, successors, stockist, and all other acting for and on its behalf from using, selling, soliciting, exporting, displaying, advertising, promoting etc. by visual, audio, print mode including internet or any other mode or TM No. 37/2016 Page No. 11 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Furnitures & Ors.
manner or dealing in or using the trademark/tradename "IKEA" or any other deceptively identical and similar trademark/tradename in relation to the services and business of the plaintiff as well as passing off the plaintiff's rights in the trademark/tradename IKEA.
14. Further, plaintiff is also granted damages to the tune of Rs.1,00,000/ on account of unfair economic and commercial advantage which the defendants tried to gain at the expenses of the enviable reputation which has been created by the plaintiff.
15. Cost of the suit is also awarded in favour of the plaintiff. Decree sheet be prepared accordingly. Thereafter, file be consigned to record room after due compliance.
ANNOUNCED IN THE OPEN (AJAY GULATI)
COURT ON 17.12.2018 ADDL. DISTRICT JUDGE02
SOUTH, SAKET COURTS,
NEW DELHI
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