Delhi District Court
M/S Inter Ikea Systems Bv vs . M/S Ikea Home Decor Pvt Ltd. on 21 April, 2018
M/s Inter Ikea Systems BV vs. M/s Ikea Home Decor Pvt Ltd.
IN THE COURT OF DR. AJAY GULATI, ADDL. DISTRICT JUDGE,
SAKET COURTS, SOUTH DISTRICT, NEW DELHI
In the matter of
TM No.73/2016
Filing No.4957/2013
CNR No. DLST010005742013
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
M/s Ikea Home Decor Pvt. Ltd.
SCO 128129, Sector 8C, 2nd Floor,
Chandigarh, India
.............Defendant
Date of Institution : 20.02.2013
Date of reserving the judgment: 21.04.2018
Date of pronouncement : 21.04.2018
Decision : Partly Allowed
TM No. 73/2016 Page No. 1 of 12
M/s Inter Ikea Systems BV vs. M/s Ikea Home Decor Pvt Ltd.
SUIT UNDER SECTION 134 AND 135 OF THE TRADEMARKS ACT,
1999 FOR PERMANENT INJUNCTION TO RESTRAIN
INFRINGEMENT, PASSING OFF, DELIVERY UP, DAMAGES,
RENDITION OF ACCOUNTS ETC.
JUDGMENT
1. The present suit has been filed by the plaintiff under Section 134 and 135 of the Trademarks Act, 1999 seeking permanent injunction against the defendant from infringing the trademark/tradename of the plaintiff. In addition, ancillary reliefs of seeking damages, delivery up of infringing goods and rendition of accounts of the defendant have also been sought.
BRIEF FACTS
2. The plaintiff company, organized and incorporated under the laws of Netherland, is the worldwide owner of IKEA trademark and the IKEA concept including tradename M/s Inter IKEA Systems BV. Plaintiff is engaged in the business of selling a wide range of furniture and accessories; bathrooms and kitchen fittings; stationary including paper articles; tools and implements; and management of retails stores as well as providing services thereof etc. TM No. 73/2016 Page No. 2 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Home Decor Pvt Ltd.
3. It was averred that the artworks involved in the various stylized and device formats of the trademark IKEA have been created over a period of time and plaintiff owns the copyrights therein being original artworks. Plaintiff adopted the trademark IKEA in the year 1943 with regard to pens, wallets, picture frames, table runners, watches, jewellery and nylon stockings etc. However, in the year 1947 it had started using the trademark in relation to furniture as well and since then, is its bonafide and honest user in relation to its goods and business. Plaintiff's goods are being sold in 75 countries including India through its marketing network which includes retail, internet, ecommerce.
4. It was further averred that the trademark IKEA (word or stylized or design or label or device or in Hindi) is duly registered in India under various classes under the Trade Marks Act, 1999. The plaintiff has been promoting its distinctive trademark/tradename and goods thereunder through extensive advertisements by spending huge amount of money, efforts and time. Plaintiff is also actively involved and participating in creating awareness on various social issues by collaborating with UNICEF & WHO. There are 250 IKEA stores in 34 countries and the said tradename/trademark/domain name is one of the oldest, most prominent and valuable trade TM No. 73/2016 Page No. 3 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Home Decor Pvt Ltd.
mark/ tradename/domain name of the plaintiff. In view of the plaintiff's proprietary rights, both statutory and common law, in its said trademark/trade name/domain name, it has exclusive rights to use and nobody can be permitted to use the same or any other deceptively similar trade name/trademark/domain name in any manner whatsoever.
5. It was further averred that the defendant i.e. M/s Ikea Home Decor Private Limited is also engaged in the services and business of home décor, sale of furniture and allied & cognate products under the trademark "IKEA", which is absolutely identical and consequently deceptively similar to the trademark of the plaintiff. There is absolute phonetic as well as visual similarity to the plaintiff's trademark. The defendant is not the proprietor of the impugned trademark and has dishonestly & fraudulently started using the same for its business without the permission and license of the plaintiff, in relation to its goods and business. As such there is violation of the plaintiff's exclusive right to its registered trademark/tradename and as a corollary, infringement of the same. Defendant is passing off and enabling others to pass off their services and business as that of the plaintiff as well as diluting the plaintiff's proprietary rights, goodwill and reputation despite being fully aware of plaintiff's exclusive TM No. 73/2016 Page No. 4 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Home Decor Pvt Ltd.
right over the trademark IKEA.
6. It is the grievance of the plaintiff that defendant's adoption and use of plaintiff's trademark/tradename in respect of defendant's services and business would cause confusion and lead to consumer deception in the ordinary course of business amongst the existing as well as prospective buyers. In the first week of February, 2013, use by the defendant of plaintiff's trademark in relation to its services came to the knowledge of the plaintiff. On inquiry from trade channels, plaintiff came to know that defendant had adopted and started using the trademark/tradename IKEA from the last week of January, 2013. The defendant has been soliciting trade, distributing, advertising and displaying its services under the infringing trademark/tradename in Chandigarh.
7. Consequently, the present suit was filed seeking a decree of permanent injunction restraining the defendant from using the trademark/tradename "IKEA" or any other identical or deceptively similar trademark/tradename in relation to their services and from disposing off or dealing with its assets including at its shops and premises at Chandigarh alongwith passing an order for delivery up of all the infringing finished and unfinished goods/materials bearing the infringed trademark/tradename.
TM No. 73/2016 Page No. 5 of 12M/s Inter Ikea Systems BV vs. M/s Ikea Home Decor Pvt Ltd.
8. Despite publication of summons in the newspaper "The Times of India" Chandigarh Edition dated 05.02.2014, no appearance has been entered on behalf of the defendant and consequently, vide order dated 09.04.2014, the defendant was proceeded against exparte. The matter was thereafter fixed for plaintiff's evidence.
9. However, on 19.02.2015, plaintiff had moved an application under Order I Rule 10 of the Code of Civil Procedure, 1908 to implead Sh. Gurinder Kumar Garg and Sh. Aashutosh Garg, Directors of the defendant, as defendants in the present matter, which was dismissed by Learned Predecessor Judge vide order dated 16.04.2015. Thereafter, vide order dated 27.04.2016, the application moved on behalf of the plaintiff under Order VII Rule 14 (3) read with Section 151 of the Code of Civil Procedure, 1908 was partly allowed and plaintiff was allowed to file copies of certificates of certain legal proceedings on record.
EVIDENCE ADDUCED On behalf of the plaintiff
10. Plaintiff in order to prove its case, examined Sh. Vishal Vig, who tendered his evidence by way of affidavit TM No. 73/2016 Page No. 6 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Home Decor Pvt Ltd.
Ex.PW1/A and relied on the following documents:
1. Photocopy of Power of Attorney dated 04.08.2015 in his favour as Ex.PW1/1 (OSR);
2. Photocopy of the constituted power of attorney dated 25.11.2010 as Ex.PW1/2 (OSR);
3. Photocopy of Board Resolution dated 17.09.2009 as Ex.PW1/3 (OSR);
4. Extracts of website of the plaintiff as Ex.PW1/4;
5. Photocopy of the extract from the book (the IKEA story) as Ex.PW1/5 (OSR);
6. Internet extract from the website of the plaintiff as Ex.PW1/6;
7. Photocopies of certificates for use in legal proceedings for the plaintiff's trademark IKEA as Ex.PW1/7 (OSR);
8. Computer generated list of the plaintiff's world wide Trademark Registration Ex.PW1/8;
9. Internet extract of the brochures of the plaintiff from their website as Ex.PW1/9;
10. Internet articles written about the plaintiff by various third parties in India as Ex.PW1/10;TM No. 73/2016 Page No. 7 of 12
M/s Inter Ikea Systems BV vs. M/s Ikea Home Decor Pvt Ltd.
11. Photocopy of the lease deed of IKEA Trading India Pvt Ltd. As Ex.PW1/11 (OSR);
12. Internet extract evidencing plaintiff's collaboration with UNICEF as Ex.PW1/12;
13. Photocopies of injunction orders in favour of plaintiff as Ex.PW1/13;
14. Internet extracts evidencing that the plaintiff is listed amongst the top brands in the world as Ex.PW1/14;
15. Internet extract from the plaintiff's website www.ikea.in as Ex.PW1/15;
16. Internet extract from www.whois.net as Ex.PW1/16;
17. Internet extract from www.mca.gov.in as Ex.PW1/17;
18. Copies of registration certificates in favour of plaintiff in India as MarkA;
19. Copies of registration certificates in favour of plaintiff in foreign jurisdiction as MarkB;
20. Copies of advertisements and other promotional material as also invoices as MarkC;
21. Photocopies of articles about the plaintiff's TM No. 73/2016 Page No. 8 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Home Decor Pvt Ltd.
activities in India as MarkD;
22. Photocopy of newspaper article evidencing collaboration between the plaintiff group and Standard Chartered Bank in 1996 as MarkE; and
23. Copies of magazines evidencing that the plaintiff is listed amongst the top brands in the world as MarkF.
11. PW1 deposed on the lines of the plaint. The oral testimony as well as documentary evidence adduced by the plaintiff has gone unrebutted as the defendant was proceeded against exparte and the plaintiff witness was not subjected to cross examination.
FINDINGS
12. 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.
13. 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, TM No. 73/2016 Page No. 9 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Home Decor Pvt Ltd.
1999.
14. Section 29 Sub Section 2 & 3 of the Trade Mark Act, 1999 reads as under:
"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 TM No. 73/2016 Page No. 10 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Home Decor Pvt Ltd.
presume that it is likely to cause confusion on the part of the public."
15. By leading evidence listed above, plaintiff has established its statutory and common law rights in the trademark IKEA. Despite service of summons, defendant did not enter appearance to controvert the assertions of the plaintiff that it has infringed the registered trademark of the plaintiff.
16. In view of the above discussion, the suit of the plaintiff is decreed. A decree of permanent injunction is passed in favour of the plaintiff thereby restraining the defendant, its 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 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. Further a decree a permanent injunction is granted to the plaintiff whereby defendant is restrained from disposing off or dealing with its assets TM No. 73/2016 Page No. 11 of 12 M/s Inter Ikea Systems BV vs. M/s Ikea Home Decor Pvt Ltd.
bearing the trademark IKEA, including at its shops and premises at M/s Ikea Home Decor Private Limited, SCO 128 129, Sector 8C, 2nd Floor, Chandigarh, India alongwith decree of delivery up of all the finished and unfinished goods and materials bearing the trademark/tradename IKEA or any other deceptively similar trademark/tradename.
17. Further, plaintiff is also granted damages to the tune of Rs.2,00,000/ on account of unfair economic and commercial gain which the defendant tried to gain at the expenses of the enviable reputation which has been created by the plaintiff. However, since the affidavit of PW1 is silent regarding the period for which rendition of accounts of the defendant has been sought, the prayer in this regard cannot be answered on account of ambiguity regarding the specific period for rendition of accounts.
18. File be consigned to record room after due compliance.
ANNOUNCED IN THE OPEN (AJAY GULATI)
COURT ON 21.04.2018 ADDL. DISTRICT JUDGE02
SOUTH, SAKET COURTS,
Digitally signed
by AJAY
NEW DELHI
AJAY GULATI
GULATI Date:
2018.04.21
16:33:25 +0530
TM No. 73/2016 Page No. 12 of 12