IN THE HIGH COURT OF DELHI
Decided On: 26.03.2014
Appellants: Inter
Ikea Systems BV
Vs.
Respondent: Ikea Furniture Pvt. Ltd.
Judges/Coram:
Counsels:
For Appellant/Petitioner/Plaintiff: S.K. Bansal , Ajay
Amitabh Suman and Pankaj Kumar , Advs.
JUDGMENT
1. Plaintiff has filed the present suit
for permanent injunction restraining infringement of trade mark, passing off,
delivery up, damages etc.
2. Summons in the suit and notice in
the application under Order XXXIX Rules 1 and 2 were issued on 24.03.2008.
Fresh summons were issued to the defendant on 30.04.2008, 12.11.2008 as also on
25.02.2009. As per the order dated 30.04.2009, summons sent through ordinary
process were received back unserved with a report that the defendant was
unavailable on the given address. Vide order dated 31.08.2010 the defendant was
directed to be served by way of publication in the daily newspaper "The
Hindu" (Chennai edition). Despite service through publication, none
appeared for the defendant and accordingly, vide order dated 01.02.2011 the
defendant was proceeded ex parte.
3. Plaintiff has filed ex parte
evidence by way of affidavit of PW-1, Ms. Surbhi Bansal, Constituted Attorney
of the plaintiff. The ex parte evidence by way of affidavit of PW-1 is marked
as Ex. PW-1/A.
4. In her affidavit, PW-1 has deposed
that the plaintiff is the worldwide owner of the IKEA trademarks and the IKEA
Concept which it franchises to its franchisees for the operation of the IKEA
Stores in which a wide range of furniture, accessories, bathrooms and kitchen
fittings, home and office furnishing products; stationery including paper and
paper articles; tools and implements are sold and also for the purpose of
running and managing of retail stores and offering 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.
5. PW-1 has further deposed that the
plaintiff is the 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
jointly and collectively referred to as the "said trade mark/trade
name" and to be construed, understood and interpreted in this manner). The
Representation of the plaintiff's Trade Mark IKEA is placed on record and the
same is being exhibited as EXHIBIT- PW1/1.
6. PW-1 has further deposed that 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 by virtue of they being original artworks. All references to
the plaintiff's said trade mark/trade name include the respective artworks
involved. The true representation of said Trade Mark of the Plaintiff has been
given below:
7. PW-1 has next deposed that the
founder of the plaintiff coined, conceived and adopted the trade mark IKEA in
about the year 1943. Ever since its bonafide and honest adoption in about the
year 1943, the plaintiff has been honestly, commercially and in the course of
trade using the 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.
8. PW-1 has also deposed that the plaintiff
initially around the year 1943 started using his 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 further expand the use thereof over a period of time
and to cover more and more countries of the world and across all regions and
territories.
9. It has further been deposed by PW-1
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 trans border reputation and use. The
plaintiff's said goods are sold and traded through its extensive marketing
network including through retail, internet, e-commerce and its
affiliates/subsidiaries.
10. PW-1 has next deposed that the
plaintiff immensely values and guards its Intellectual Property Rights. A list
of plaintiff's registered trade mark IKEA in different classes is placed on
record and the same is marked as MARK - A (COLLY). Status report of the
plaintiff's trademark IKEA under nos. 471123, 471124, 471125, 616434, 7742408,
772410, 772411, 772412, 772413, 772414, 772415, 772416, 772417, 772419, 772420,
772421, 772422, 772423, 772424, 772425 are placed on record and the same are
exhibited as EXHIBIT-PW1/8. PW-1 has also deposed that the plaintiff has placed
on record the list of pending applications for registrations of the plaintiff's
trademark and the same is marked as MARK-B (COLLY) and copies of registration
certificates of the plaintiff's in different countries and details thereof are
marked as MARK - C (COLLY).
11. Ms. Surbhi Bansal, PW-1 has next
deposed 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 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 50 Brands in the BEST GLOBAL BRANDS 2010. Copy of
Invoice bearing No. IKI/BA7/208110 dated 16.10.2007 is being exhibited as
EXHIBIT- PW1/9.
12. PW-1 has further deposed 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 and Plaintiff has regularly and continuously been promoting the said
distinctive trade mark/trade name and the goods and business there under
through extensive advertisements, publicities, promotions, marketing and
marketing research and the plaintiff has been spending enormous amounts of
money, 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. Copies of advertisements and other sales promotional
literature of the plaintiff as published and circulated are placed on record
and the same is collectively exhibited as EXHIBIT- PW1/6 (COLLY).
13. PW-1 has also deposed that the
plaintiff's said trade mark/trade name have acquired enviable and enduring
goodwill, reputation and users in India as also in the international markets.
14. PW-1 has next deposed 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. PW-1
has further deposed that the plaintiff's said trade marks/trade name are well
known Trade Marks within the meaning of Section 2(1)(zg) of the Trade Marks
Act, 1999. Brochure of the plaintiff is placed on record and the same is being
exhibited as EXHIBIT-PW1/3 and EXHIBIT-PW1/4.
15. PW-1 has also deposed that
plaintiff's said trade mark/trade name has become distinctive, and is
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.
16. It has further been deposed by PW-1
that the Plaintiff has adopted the said Trade Mark IKEA as an essential and
material part of its Domain Name viz www.IKEA.com as well.
17. PW-1 has also deposed that M/s. Ikea
Trading (India) Pvt. Ltd., is an Indian subsidiary/affiliate of the plaintiff
in India. It has further been deposed by PW-1 that 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.
18. PW-1 has next deposed 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.
19. PW-1 has further deposed that the
defendant M/s. IKEA Furniture Private Ltd., No. 1 and 2, Balaji Nagar II ST,
Royapettah, Chennai-14 is apparently engaged in the same trade and business as
that of plaintiff namely manufacture of furniture etc.
20. PW-1 has also deposed that the
defendant has adopted and started using or intends to use, in relation to its
impugned goods and business an identical trade Mark/ trade name IKEA
(hereinafter referred to as the "impugned Trade Mark/ Trade Name) and the
impugned trade mark/ trade name as copied and imitated by the defendant is
identical with and deceptively similar to the plaintiff's said trade marks/trade
name IKEA 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 of the same/similar/allied/cognate nature and description as
that of the plaintiff.
21. PW-1 has further deposed that the
defendant by the adoption and use of the impugned trade mark is violating the
plaintiff's statutory and common law right in the said trademark and trade name
and thereby infringing plaintiff's registered trademark(s) 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.
22. Ms. Surbhi Bansal, PW-1 has further
deposed that the defendant is fully aware or ought to be aware of the
plaintiff's rights, goodwill, reputations, benefits and users etc. in the
plaintiff's said trade mark, trade name & domain name at the time of their
impugned adoption and use of the impugned trademark. The resemblance between
the rival trade mark / trade name is so close that it can hardly occur except
by deliberate imitation.
23. It has further been deposed by PW-1
that the defendant has adopted and started using the impugned trade mark/ trade
name 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's impugned adoption and use, deception and confusion is
ensuing and/or is likely to so ensue in the market and amongst the general
public at large. The plaintiff's said trade mark is otherwise being diluted and
eclipsed thereby and 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 encash upon
the hard earned goodwill of the plaintiff.
24. PW-1 has further gone on to depose
that due to the defendant's impugned activities, the plaintiff is
suffering/ought to suffer massive losses and damage both in business and in
reputation and as such these losses and damage are unliquidated; monetarily
being incapable of exact and accurate assessment. Unwary purchasers and trade
persons are being confused and deceived/likely to be deceived as to the origin
of goods and business. It has further been deposed that the defendant in view
of its impugned business activities is liable to pay damages to the plaintiff
to the tune of minimum Rs. 20,000,01/-.
25. PW-1 has also deposed that the
plaintiff in the month of August, 2007 launched inquiries through the trade to
ascertain the defendant's activities under the impugned trade mark/trade name.
The said enquiries revealed that the defendant has so far not started using the
impugned trade mark/trade name in the course of trade on its vendible impugned
goods and business and nor has the plaintiff so far come across any of the
impugned vendible goods under the impugned trade mark/trade name in the market,
however, the defendant is soliciting trade, distribution and marketing networks
in relation to the impugned goods under the impugned trade mark/trade name in
Delhi and other parts of the country. The defendant has all the intention of
commercially using the impugned trade mark/trade name in relation to the
impugned goods/business if not already so used. The defendant's user, thereof
if any would be clandestine, surreptitious, sporadic, restricted, minimal and
very recent and that too without issuing any formal bills and invoices making
it very difficult to detect and verify the precise nature of the defendant's
activities and therefore the defendant's use of impugned trade mark/trade name,
if any, is void ab-initio.
26. I have heard counsel for the
plaintiff and carefully perused the documents which have been placed on record
along with the affidavit by way of evidence of PW-1. Plaintiff has proved the
copies of its trade mark registration certificates in different classes in
India which have been marked as Mark-A(Colly). Plaintiff has also proved its copies
of legal proceeding certificates which have been exhibited as Ex. PW-1/14.
Plaintiff has also proved its pending applications for registration in India
and the same are marked as Mark-B (Colly). Further, plaintiff has proved the
copies of registration certificates of the plaintiff in different countries
across the world which have been marked as Mark-C (Colly). Plaintiff has also
proved the copies of advertisements and other sales promotional literature of
the plaintiff which is exhibited as Ex.-PW-1/6 (Colly) as also its brochure
which has been exhibited as Ex. PW-1/3 and Ex. PW-1/4. Plaintiff has also
proved the downloaded documents from its website which is exhibited as
Ex.-PW-1/5. In addition to the above, plaintiff has also placed reliance on copies
of news reports showing commencement of plaintiff's activities in India which
are exhibited as Ex. PW-1/13.
27. On the basis of the documents placed
on record, plaintiff has been able to prove that the plaintiff is the
registered proprietor of the trade mark "IKEA" not only in India but
is the worldwide owner of its "IKEA" trade marks which is evident
from the certificates of registrations placed on record. Plaintiff has also
established that the plaintiff has created various stylized and device formats
of the said trade mark over a period of time and hence the plaintiff owns the
copyright therein by virtue of them being original artworks. Plaintiff is an
international company that deals in ready-to-assemble furniture, home
accessories etc. Plaintiff has also established that the trade mark
"IKEA" was coined by the plaintiff as far back as in the year 1943,
which is evident from the timeline displayed by the plaintiff on its website.
Furthermore, the plaintiff has been able to establish that over a period of
time, the plaintiff has diversified not only with respect to its products and
services but also in terms of its presence and business operations in various
countries world over, including India. By virtue of its presence across more
than 70 countries in the world, which is evident from the perusal of its sales
promotional literature placed on record, plaintiff has been able to prove that
it enjoys trans border reputation and boasts of an extensive marketing network
through internet, retail, e-commerce and its affiliates/subsidiaries. Further,
the plaintiff has established that ever since its adoption, the plaintiff has
been using the said trademark regularly and continuously and in fact, the
plaintiff has been promoting the said mark along with the goods sold there under
through extensive advertisements, publicity, promotions and marketing by way of
publication/broadcast through print/visual media including leading newspapers,
magazines etc. In addition to the above, plaintiff has also placed reliance on
the an article published in the magazine, "The Business Week",
wherein, the plaintiff company has been rated among the top 50 brands in the
year 2002 as also in the year 2010. The plaintiff has successfully established
that the plaintiff's trade mark has acquired an enviable and enduring goodwill,
reputation and users not only in India but across numerous countries inasmuch
as the plaintiff's goods are known, recognized, demanded, sold and traded
worldwide with reference to its trade name/trade mark IKEA. The evidence of the
plaintiff remains unchallenged and un-rebutted.
28. In the case of Evergreen Sweet House
Vs. Ever Green and Ors. reported at MANU/DE/0959/2008 : 2008 (38) PTC 325
(Del), it was observed as under:
15. Section
29(1) deals with a situation where the defendant uses a mark, which is
identical or deceptively similar to that of the plaintiff, in respect of the
same goods or services, and in such manner that it is likely that such use is
taken as being an use as a trademark. This amounts to infringement. To fall
within Section 29(1), the defendant's use of the mark must be so that it is
likely that the public assumes that the said mark is used as a trademark.
Section 29(2) deals with three situations; one where the defendants mark is
identical to that of the plaintiff and in respect of similar goods. Two, where
the marks are similar and in respect of goods which are identical or similar.
Three, the marks as well as the goods are identical. Infringement does not take
place if only one of the three ingredients are satisfied; the plaintiff has to
prove that use by the defendant is likely to cause confusion on the part of the
public or is likely to have an association with the registered mark.
29. Having regard to the evidence on
record and comparing the impugned trademark of the defendant with that of the
plaintiff, I am of the view that the impugned trade mark of the defendant
"IKEA" is identical to that of the plaintiff in each and every
respect including phonetically, structurally, in its basic idea and in its
essential features. Furthermore, the defendant is engaged in the same
trade/line of business as the plaintiff namely manufacture of furniture etc. It
has been established by the plaintiff beyond reasonable doubt that the said
distinctive trade mark "IKEA" has come to be associated with the
plaintiff and plaintiff's goods for a long time now and the purchasing public
and the industry at large distinguishes and identifies the goods under the said
trade mark as originating from the plaintiff. In light of the above, in my
view, adoption of an identical mark by the defendant, that too in the same line
of business, is malafide and illegal as it is bound to cause confusion and
deception in the minds of public at large with respect to the source of the
goods originating from the defendants and many existing/prospective consumers
may assume a commercial link/nexus between the plaintiff and the defendant and
otherwise also adoption of the impugned mark by the defendant will lead to
dilution of the trade mark of the plaintiff if the quality of products
originating from the defendant is inferior to that of the plaintiff.
Furthermore, by projecting such a commercial connection or relationship with
the plaintiff, the defendants would be encashing on the hard earned goodwill
and reputation established by the plaintiff over the period of years and
passing off their goods as those of the plaintiff.
30. The plaintiff has also claimed
damages on account of illegal profits earned by the defendant along with
delivery up of the goods bearing the trade mark "IKEA" or use of the
said mark as their trade name or a constituent of their trade name.
31. Order sheets show that despite
service of summons, the defendant has deliberately stayed away from the present
proceedings to ensure that an enquiry into their accounts for determination of
damages cannot take place. In the case of Tata Sons Ltd. v. Hoop Anin &
Ors. reported at MANU/DE/6907/2011 : 188 (2012) DLT327 punitive damages to the
tune of 5 lacs were awarded to the plaintiff. Relevant paras of the judgment
are reproduced below:
9. The plaintiff has also claimed Rs.
20,05,000/- as damages from defendants No. 1 & 2. Dealing with the damages,
this Court in Tata sons Ltd. v. Manoj Dodia & Ors. (supra) inter alia
observed as under:
The promotion and building
of a Trade Mark, particularly a mark which is used in relation to a variety of
good and/or services, requires considerable efforts, skill and expenses. The
brands are not built in a day, it takes years to establish a brand in the
market. Moreover, brand equity can be earned only if the quality of the product
sold and/or services provided under that name are consistently found to be of
superior quality. No amount of marketing efforts and promotional expenditure
can build a brand, particularly in the long run, if the quality of the
product/service does not commensurate with the marketing efforts. The brands,
particularly well known brands, themselves are now becoming highly valuable and
in fact are being sold as standalone products. The companies which invest
heavily in brand building and back them up by quality products are bound to
suffer not only in reputation but also in financial terms, on account of
diminution in the value of the brand as well as sale of their
products/services, if the brands are not given adequate protection by the
Courts, by awarding punitive damages against the infringers. Also, a soft or
benevolent approach while dealing with such persons, is also likely to
prejudicially affect the interests of the consumer, who may pay the price which
a premium product commands in the market, but may get an inferior product on
account of such unscrupulous persons using trademarks of others for their own
commercial benefit, at the cost not only of the trade mark owner, but also the
consumer who purchases their product.
32. Another purpose behind awarding
punitive damages is to deter those who may be waiting in the wings and may be
tempted to imitate the trade mark of others, in case those who are sued before
the Courts are not made to pay such damages as would really pinch them.
Awarding token damages may, therefore, not serve the desired purpose. Our
country is now almost in the league of advanced countries. More and more
foreign companies are entering our markets, with latest products. They would be
discouraged to enter our country to introduce newer products and make
substantial investments here, if the Courts do not grant adequate protection to
their intellectual property rights such as patents, trademarks and copyright.
Most of the products sold by these companies are branded products, the marks on
them having trans-border reputation and enjoying tremendous brand equity. It
is, therefore, becoming increasingly necessary to curb such trade mark piracies
lest they drive away the huge foreign investment our country is attracting. The
Court should not give premium to dishonesty and unfair practices by those who
have no compunctions in blatantly using the trademark of others for making
unearned profits.
See also Hero Honda Motors
Limited v. Rafiq Memon [MANU/DE/1086/2012 : 2012 (52) PTC 449 (Del.)]; Gora Mal
Hari Ram Ltd. Vs. Ashique Exports [MANU/DE/7387/2011 : 2012 (50) PTC 428
(Del.)]; Relaxo Rubber Limited and Anr. Vs. Selection Footwear and Anr.
[MANU/DE/0179/1999 : 1999 PTC 578].
33. I am in agreement with the aforesaid
submission of learned counsel for the plaintiff that damages in such cases must
be awarded in order to provide adequate protection to such brands that take
years and decades to establish their brand names in the public domain and also
to deter such blatant indulgence in infringing activities by people. Also, in
my view, a defendant, who chooses to stay away from the proceedings of the
Court, should not be permitted to enjoy the benefits of evasion of court
proceedings. R.C. Chopra, J. has very succinctly set out in Time Incorporated
v. Lokesh Srivastava and Anr. reported at MANU/DE/0104/2005 : 2005 (30) PTC 3
(Del) that punitive damages are founded on the philosophy of corrective
justice. A party who chooses not to participate in court proceedings and stays
away must, thus, suffer the consequences of damages as stated and set out by the
plaintiff. There is a larger public purpose involved to discourage such parties
from indulging in such acts of deception and, thus, even if the same has a
punitive element, it must be granted.
34. For the reasons stated above, the
plaintiff has made out a case for grant of decree as prayed in the plaint.
Accordingly, the suit is decreed in favour of the plaintiff and against the
defendant in terms of para (a) of the prayer. Plaintiff is also entitled to
damages to the tune of Rs.2 lakhs.
35. Decree sheet be drawn up
accordingly.
