Delhi District Court
M/S Inter Ikea Systems Bv vs M/S Aikya Enterprises on 29 January, 2016
IN THE COURT OF MS. VINEETA GOYAL, ADDITIONAL DISTRICT
JUDGE 01, PATIALA HOUSE COURTS, NEW DELHI DISTRICT, NEW
DELHI
TM No. 296/2013
Unique ID no. 02403C0116762013
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
M/s Aikya Enterprises
379316, Madhura Nagar Colony,
Neredmet, Secunderabad,
Hyderabad, Andhra Pradesh (West) - 500056,
India. ... Defendant
Suit presented On : 05.09.2013
Arguments Concluded On : 20.01.2016
Judgment Pronounced On : 29.01.2016
Appearance : Ms. Shwetasree Majumder, Ld. counsel for plaintiff.
Defendant exparte.
JUDGMENT
1. The plaintiff has filed the present suit for permanent injunction restraining infringement of trademark, passing off, delivery up, damages, rendition TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 1 of 14 of accounts etc. 1.1. Facts as culled out from plaint are that plaintiff stated to be a company incorporated under the laws of Netherlands is worldwide owner of IKEA Trademarks 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.
1.2. 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.
1.3. 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 trappings of an invented mark and is an inherently strong mark. The plaintiff TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 2 of 14 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. 1.4. The plaintiff avers 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.
1.5. 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 media, in leading newspapers, trade literature, magazines over the internet etc and all of which have tremendous reach, availability and circulation world over including TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 3 of 14 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.
1.6. 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.
1.7. 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.
1.8. 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 TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 4 of 14 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.
1.9. The plaintiff states that defendant Aikya Global has apparently engaged in the goods, services and business of furniture on rent, polishing, unfinished furniture, installation, imported furniture and allied and cognate goods (herein after referred to as impugned goods and business). The defendant has adopted and started using and / or intends to so use in relations its impugned TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 5 of 14 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. The impugned trademark copied and imitated by the defendant is same/ similar, identical with 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 his 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 plaintiff contends that the defendant's action is motivated purely by malafide intention to trade upon and get benefit 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. 1.10. Plaintiff further contends that it came to know about activity of defendant when it came across the impugned goods / services under the impugned trademark under the impugned trademark / trade name. Being aggrieved, the plaintiff made inquiries in the market and trade and it was informed the defendant had just about in the last week of August 2013 adopted and started using the impugned trademark in relation to their impugned goods. The defendant is soliciting trade, distributing, advertising and displaying the impugned services under the impugned trademark / trade name in Delhi and other parts of the country. This TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 6 of 14 court has territorial jurisdiction to try and adjudicate the present suit as the plaintiff is working for gain and carrying on business under the trademark through its Indian subsidiary having registered office at Vasant Vihar. Since the defendant is persisting with impugned activities, the plaintiff has filed the present suit praying following reliefs :
(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 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 AIKYA or any other impugned trademark / trade name identical with and/or deceptively similar, in relation to their goods, services and business of Office Furniture on rent, polishing, unfinished furniture, installation, imported furniture allied and cognate services or any other business / goods / product and from doing any other acts or deeds amounting to or likely to amount :
(i) Infringement of plaintiff's registered trademarks
IKEA as mentioned in Para no. 8(a) to 8 (w) of the plaint.
(ii) Passing off of the plaintiff's rights in the plaintiff's
said trade mark 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 Aikya Enterprises, 379316, Madhura Nagar Colony, Neredmet, Secunderabad, Hyderabad, Andhra Prades (West) - 500046, India and its stocksintrade 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 TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 7 of 14 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 trade mark / trade name including its blocks, trade names, display boards, sign boards, trade literature 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.
2. It is pertinent to mention here that at the time of admission of suit an exparte adinterim injunction was granted in favour of plaintiff restraining defendant from selling, advertising and promoting or by any other mode or manner of dealing in or using the impugned trademark bearing the word / mark IKEA or any other trademark / label identical with or deceptively similar to the plaintiff's trademark in relation to impugned goods and other related products as those of plaintiff.
3. Summons were sent to defendant through registered AD returned back unserved with report of no such person. Defendant was also served through publication in Newspaper, however, none appeared on behalf of defendant for the reason best known to him, accordingly proceeded exparte on 20.11.2014.
4. Plaintiff has filed affidavit of evidence of Sh. Gurjot Singh, Constituted Attorney of plaintiff - company affirming to the averments made in the plaint. He relied upon documents i.e. copy of Power of Attorney Ex. PW1/1(OSR), TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 8 of 14 copy of power of attorney issued in favour of Ms. Surbhi Bansal, dated November 25, 2010 Ex. PW1/2 (OSR), copy of authorization letter of Ms. Gabriella Olsson Skalin dated September 30, 2005 Ex. PW1/3 (OSR), copies of revocations of Power of Attorney dated 30.03.2014 and clarification to the revocation of Power of Attorney dated 22.07.2014 Ex. PW1/4 (Colly) (OSR), Extract from the websites of the plaintiff providing details about the plaintiff's business Ex. PW1/5 (Colly) (346376 pages), list of IKEA trademark in various classes in India Ex. PW1/6 (Colly) deexhibited and mark as MarkA1, Extracts from the website of the Trademark Registry demonstrating the status of trademark registration of the plaintiff Ex. PW1/7, Notarized copies of the Legal proceedings certificate Ex. PW1/8 (colly) (OSR), list of International Trademark Registration of the plaintiff which is exhibited as Ex. PW1/9 in the evidence by way of affidavit and de exhibited, copies of advertisements and other sales and promotional literature of the plaintiff which is exhibited as Ex. PW1/10 and deexhibited and marked as MarkB, copy of Lease Deed of IKEA Trading India Pvt. Ltd. Ex. PW1/11 (OSR), Copies of injunction orders passed by the Hon'ble Court in favour of the plaintiff which is exhibited as PW1/12 in the evidence by way of affidavit and deexhibited and marked as MarkE, extract from the internet indicating the defendants infringing use Ex. PW1/13, copies of trademark registration certificates of the plaintiff in foreign jurisdictions MarkA (colly), copy of newspaper reports showing commencements of the activities of the plaintiff in India MarkC (Colly), copies of invoices issued by IKEA Trading India Pvt. Ltd. to a variety of third parties MarkD (colly).
TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 9 of 14
5. I have heard arguments advanced by ld ocunsel for plaintiff and gone through material available on record.
6 It is relevant to refer to the law relating to infringement which can be understood by reading Section 29 of the Trademark Act which explains the exclusive rights granted by virtue of registration under Section 28 of the Act. By mere reading of these provisions, it is clear that a registered trademark is infringed by a person who not being a registered proprietor, uses in the course of trade a mark which is identical or deceptively similar in relation to the goods or services which are identical or similar to that in respect of which the trademark is registered without the permission of the trademark owner. Further, if a person uses a registered trademark in relation to goods and services which are different an distinct from the goods or the services in respect of which the trademark is registered then to be covered by section 29 (4) it requires that registered trademark must have reputation in India and use of mark without due cause would be amounting to taking unfair advantage of or would be detriment to the distinctive character or repute of registered trademark.
7. In catena of judgments it has been held that in action based upon infringement, if the mark used by the defendant is visually, phonetically or otherwise so close to the registered trade mark of the plaintiff that it is found to be imitation of the registered trademark, the statutory right of the owner of the registered trademark is infringed. A careful examination of labels of the plaintiff and the defendant show that there is no such marked difference phonetically or otherwise between the two with regard to the goods and the trademark which warns the consumer of the two products being different.
TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 10 of 14
8. The provisions of the Trade Marks Act are succinctly clear that if any other person in the course of trade uses a mark which is either identical or deceptively similar in relation to goods would get caught into the trappings of infringement. Under the circumstances of the present case, it is not disputed that the plaintiff is registered owner/ proprietor of the trademark IKEA under class 20, it would appropriately arm the plaintiff to protect itself and its products from any kind of deceptively similarity in products by the defendant. The defendant is admittedly engaged in the goods, services and business of furniture on rent, polishing, unfinished furniture, installation, imported furniture which use trademark close / striking similar phonetically to that of plaintiff.
9. When a trade mark is registered, a valuable right gets acquired by reason of such registration and it confers exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered. If there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction. Now the plaintiff has a registered trademark IKEA which has also been used in relation to furnitures thus any deceptive use of similar mark IKEA on furnitures by the defendant would be infringement of registered trademark.
10. The controversy between the parties needs to be examined from another perspective because apart from the infringement the plaintiff claims relief for the Passing off also.
TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 11 of 14
11. The law of passing off has been explained by Lord Diplock in Erven Warnink v. J. Townend & Sons (Hull) Ltd. [1980] RPC 31 wherein Lord Diplock has laid down five essential elements which are necessary to be proven as jurisdictional facts for the purposes of establishing the tort of passing off. The said five ingredients are as under: (1) A misrepresentation (2) Made by a trader in the course of trade (3)To his prospective customers (4) Which is calculated to injure the business or goodwill of another trader and (5) Which causes actual damage to a business or goodwill of trader by whom the action is brought?
12. The law of passing off does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
13. It is to be reappreciated that the plaintiff is owner and proprietor of one trade mark IKEA (label) bearing registered no. 1523574 (in class 20) and this registration is subsisting. The plaintiff has successfully demonstrated that it is engaged in relation of furniture under IKEA label. There is enough uncontroverted evidence that the turnover of the plaintiff is many fold. The plaintiff have built their TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 12 of 14 name and reputation in the product line and the defendant intends to encash upon the goodwill by adopting phonetically similar trademark of the similar kind of products. In this backdrop, the only conclusion which is irresistibly drawn that the products of the defendant would amount to infringement as well as passing off.
14. So far as the issues, whether the defendant is liable to pay any damages and whether the plaintiff is entitled to rendition of accounts, are concerned. However, it is settled law that though the plaintiff has not proved the actual damages suffered by it on account of infringement by the defendant but it is open for the court to award punitive damages for the conduct of the defendant with the objective of deterring future egregious conduct with a note of caution emphasizing that the punitive damages must rationally relate to the award of compensatory damages. The plaintiff has failed to show some particular benefit which has accrued to the defendant and further failed to prove by leading evidence that it has suffered actual loss. In these set of circumstances no decree for rendition of accounts can be passed in this case, however, damages can be awarded on the basis of estimation. In consideration of totality of circumstances and low turnover of the defendant, it would be expedient if a sum of Rs. 50,000/are awarded as damages in favor of plaintiff against the defendant.
RELIEF:
15. The plaintiff is entitled for a decree of permanent injunction restraining the defendant, their proprietor, partners, directors, agents, representatives, distributors, assigns, heirs, successors, stocking and all other acting for and their behalf are hereby restrained from selling, soliciting, exporting, displaying, advertising, TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 13 of 14 promoting etc by visual, audio, print mode, including on the internet or by any other mode or manner in dealing in or using the impugned trademark / trade name AIKYA or any other trademark / trade name with and / or identical or deceptively similar to the plaintiff's trademark IKEA in relation to impugned goods, services and business of furniture on rent, polishing, unfinished furniture, installation, imported furniture and cognate services or any business / goods / product / services and from doing any other acts or deeds amounting to infringement and passing off. The plaintiff is further entitled to a sum of Rs. 50,000/ as damages as ordered alongwith cost. Decree sheet be prepared. File be consigned to record room.
Pronounced in open Court
on 29.01.2016 (Vineeta Goyal)
Additional District Judge01,
NDD/PHC/New Delhi/29.01.2016
TM No. 296/13
Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 14 of 14
TM No. 296/13
29.01.2016
Present : Ms. Shwetasree Majumder, Ld. counsel for plaintiff.
None for defendant no. 1.
Suit against defendant no. 2 decreed vide order dt. 01.12.2014. Vide separate judgment of even date permanent injunction is passed 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 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 IKEA or any other impugned trademark identical with and/or deceptively similar, in relation to their goods, and business of Office Furniture and allied and cognate goods or any other business / goods / product and from doing any other acts or deeds amounting to or likely to amount infringement of plaintiff's registered trademarks IKEA and passing off of the plaintiff's rights in the plaintiff's said trade mark IKEA. The plaintiff is also entitled to a sum of Rs. 50,000/ as damages from defendant no. 1 as ordered alongwith cost. Decree sheet be prepared on filing of advolerum Court fee. File be consigned to record room.
(Vineeta Goyal) Additional District Judge01, NDD/PHC/New Delhi/29.01.2016 TM No. 296/13 Inter IKEA Systems BV Vs. M/s Aikya Enterprises Page no. 15 of 14