M/S Inter Ikea Systems B V vs Quess Corp Limited
2018 Latest Caselaw 6486 Del

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*        IN THE HIGH COURT OF DELHI AT NEW DELHI

%                               Judgment delivered on: 29.10.2018

+              FAO 157/2016 & C.M. Nos.6654/2017, 37601-02/2018


         M/S INTER IKEA SYSTEMS B V                        ..... Appellant
                          Through:   Mr. Sai Krishna, Ms. Tanya Varma
                                     and    Ms.    Paulami    Ganguly,
                                     Advocates.

                          Versus
         QUESS CORP LIMITED                               ..... Respondent

                          Through:   Mr. Sandeep Sethi, Senior Advocate
                                     with Mr. Manu Seshadri, Advocate
CORAM:
HON'BLE MR. JUSTICE NAJMI WAZIRI

NAJMI WAZIRI, J. (Oral)

1. The appellant has impugned an order dated 06.01.2016 which declined interim protection under section 29 (9) and section 29 (4) of the Trade Marks Act, 1999 against infringement of its trademark registered in India. It claims ownership of the trademark „IKEA‟ and had sought injunction against infringement of the same by the respondent, who was using the word trademark "IKYA" along with a logo, for carrying on its business. The impugned order holds that the trademark used by the respondent, being registered enjoyed full statutory protection to be used

legitimately and the respondent could not be restrained from using the same. The reasoning and conclusion of the impugned order is as under:-

"8.2 By taking stock of all facts, features and matrix of cases of both sides, the plaintiff's application does not satisfies all requirements of injunction, thus for the following reasons the plaintiff's application u/o XXXIX rules 1 & 2 CPC is dismissed:-

(i) It is apparent that the plaintiff and the defendant both have their respective registered marks. Section 28 of the Act, 1999 confers rights on registered proprietor of trademark with regard to exclusive right to use of trademark in relation to the goods, or services. The defendant is in the field of services, with regard to class 41 & 35, whereas the plaintiff has also registrations of various classes from the year2003 and so on. This makes out prima facie case in favour of plaintiff and equally in favour of the defendant, particularly in view of section 31 of the Act, 1999 that registration is prima facie evidence of validity and both the parties are having valid registrations.

(ii) The parties have their different sources of marks as plaintiff invented the mark IKEA from the name of its founder and place of domicile, whereas the defendant adopted and coined mark IKYA from Sanskrit language, which is one of the ancient and the oldest language. The word or mark IKEA writes in Hindi as इकिया and mark IKYA is derived from Sanskrit writes as एकिया, (as mentioned by scholar Vaman Shivram Apte in the dictionary on page no. 227). To say, both the parties have different source of adoption of words IKEA and IKYA, whereas the former is an invented word by the plaintiff for its trademark, whereas the latter is coined from Sanskrit language and adopted as mark. The defendant's mark

completely read as IKYA THE POWER OF BEING ONE, which is also mentioned on pages 2 to 5 of paper book/documents filed by the plaintiff and pages no.26-27 of documents of defendant.

(iii) The plaintiff's mark is IKEA and defendant's mark is not IKYA but IKYA THE POWER OF BEING ONE', the mark is to be read or seen or heard as a whole and not by dissecting them, then it makes an aura or impression of mark. However, the plaint describes plaintiffs mark as IKEA and defendant's marks as IKYA, whereas they are IKEA and 'IKYA THE POWER OF BEING ONE' respectively.

(iv) Section 32 of the Act, 1999, is in respect of protection of registration on ground of distinctiveness in certain cases, however, the plaintiff had filed opposition to the defendant's application with regard to class 35 on the ground of similarity in the marks. When the marks are alleged to be identical, the onus is on the defendant to show how they are not identical, whereas when the marks are alleged to be similar, it is to be shown as to how the marks are similar or deceptively similar causing confusion. Prime facie, this test is not satisfied.

(v) Plaintiff's mark IKEA is one rhythm word and defendant's mark 'IKYA THE POWER OF BEING ONE' is also of one rhythm words but still their over all characteristics of pronunciation, comprehension, pause and appearance is different, which cannot be treated as confusing or overlapping to each other or deceptively to each other.

vi) Who are buyers of plaintiff‟s product in India? There is no record or invoices of selling plaintiff's product to customers in India nor retail outlets of the plaintiff are in India. The invoices (on pages no.447 to 474 of paper book) are

pertaining to IKEA Trading India Pvt. Ltd , who consigned the goods to its wings/concerns IKEA Trading, Hong Kong, Germany, and to other countries, which are inter-se IKEA units, it does not name of India. When there are no consumers of plaintiff's product in India nor defendant is dealing/trading in goods, then, who is it expected to be confused or what would be passed-off? Further there is a unregistered lease agreement dated 02.12.2009 for a period of 36 months (commencing from 07.12.2009 and ends on 06.12.2012 with rider of lock -in period of 11 months and to be used for registered office of lessee) between lessor Shir Ajay Kumar Bhatia and lessee M/s IKEA Trading India Private Limited, that said lessee has been let out an area of 600 sq. feet at second floor, C-16, C Block Market, Paschimi Marg, Vasant Vihar, Delhi to be used for office purposes. The said M/s IKEA Trading India Private Limited is not plaintiff herein vis a vis it also infers that there is no business/trading carried out by the plaintiff.

(vii) The Act 1999 protects use of the mark, however, the plaintiff has not filed any record to show that it has commercial use of mark IKEA in India or the defendant has passed off commercial or retails by using said mark IKYA- THE POWER OF BEING ONE or who have been actually mislead by such mark. The plaintiff is in the business/hade of furniture that too out of India and the defendant is in other field of services/human resources/education in India.

(viii) There is no fact in plaint that defendant makes publicity of its product in India by advertisements or by which mode nor any sales figures of trading or expenditure record vis a vis its said web-site seeks option of country's name. While assessing the web-site of plaintiff, it seeks option to select one's location (namely- Eurpore, North America, Middle East,

Asia Pacific, Caribean with names of countries), however, it does not feature India, as per hard copy of web-site now on record.

ix) The plaintiff has produced literature to show that it has been extending its presence by participating and contributing in social activities including philanthropic tasks in India, however, contribution to such task is indifferent to the prospective of trade mark as for the purposes of becoming well known trade mark [ as defined in section 2(zg) of the Act) it ought to be through channel of goods and services because substantial segment of public using such goods or services has to source it to the said trade mark. There cannot be track to lead/begin from social activities to well known trade mark.

It would be different situation when the trade or commerce of goods and services is by a known trade/corporate name or mark vis a vis social or philanthropic activities are also done under the umbrella of such trade/corporate name or trade mark, then it would be like that the established reputation of mark or trade name also travels by such social contributions and philanthropic activities but not vice versa.

(x) To invoke section 24(4) of the Act, the three conditions are to be satisfied viz (a) the impugned mark is identical or similar to the registered mark and (b) the impugned mark is used in relation to goods or services which are not similar to those for which trade mark is registered and

(c) the registered mark relation in India & use of mark is without due cause takes unfair advantage of or is detrimental to the repute of registered mark or its distinctive character.

There could be infringement of mark, even in cases of use of impugned mark in relations to goods or services which are not similar to those for which trade mark is registered

(being condition-b above), however, other conditions (a and c) are also to be satisfied. From aforementioned sub-paragraphs, it is apparent that parties mark are not similar and there is no confusion or deceptively similarities vis a vis plaintiff mark is not having a reputation in India for want of trade, commerce, publicity in India. The reputation of mark is to be through goods or services, which consumer recognizes to source mark. The reputation of mark may also reach to country where products/goods/services are yet to surface or where product are not marketed or yet to be marketed but reputation would be through advertisement or publicity etc., which is not existing in the case of plaintiff. It is never the case of plaintiff, that it had trade or commerce in India or it had left its residual reputation. Thus section 29(2), 29(4) and 29 (9) of the Act is not at avail of plaintiff.

(xi) However, the plaintiff contends statutory protection U/s 11 (9)(i) of the new Act, that the Registrar shall not require as a condition for registration of mark that the trade mark has been used in India and there is protection for non- use of mark under special circumstances envisaged U/s 47(3) of new Act of 1999, which was also available U/s 46(3) in the old Act 1958 and it extends to the plaintiff because of policy matter of Government.

Whereas, section 11(9) of the Act pertains to registration of mark, that chapter was over after registration of the plaintiff's mark. The other section 47(3) of the Act is defence of special circumstances available for non-use of mark, if one applies to the Registrar or the Appellate Board for removal/taken off the mark from the register on ground of non-use. The present suit is in respect of injunction and damages before the Civil Court. Section 46 of the Act (i.e. proposed use of trade mark by company to be formed etc) is to

be read with section 47. But, these provisions can not be taken as exception from satisfying the conditions of section 29 (4) of the Act.

(xii) The plaint is silent in respect of opposition of defendant's application for registration of additional presentation. In reply to para 1(a) of application under order XXXIX rule 4 CPC, the plaintiff submits that it was not relevant to mention about class 35 registration application of defendant, being not germane to the case; plaintiff further declares that it has not claimed any relief in respect of class 35/services.

Further in paragraph 28 of the plaint, the plaintiff claims protection with regard to goods that nobody can be permitted to use the plaintiff's mark, domain name, goodwill without the leave and licence of plaintiff and in paragraph 43 and 44, the plaintiff claims that it was in November 2011, the plaintiff came across the defendant's application in class 41 regarding the said mark in trade mark journal claiming user since 19.9.2007. Whereas, it is also on record in pleading/ application u/o XXXIX rule 4 CPC that plaintiff had also filed opposition to defendant's other application in class 35 in February 2010, thus the plaintiff was aware of the defendant's mark and it was much prior to the date and month as stated in the plaint (filed in January 2013).

It infers that plaintiff had cognizance of defendant's mark in Feb. 2010 of user since 2007 but suit was filed in January 2013.

Accordingly, application of injunction stands disposed off and ad interim order dated 11.01.2013 (made on prima facie observation of IKEA and IKYA) is vacated, however, any expression given or observations made in the present order

would not tantamount to be any opinion or expression on the merits of the case, the same are not final conclusions.

The first application stand disposed off".

2. The appellant has challenged the registration of the trademark granted to the respondent. The said challenge is pending before the Registrar since 2007. It is the appellant‟s case that what has been challenged is a logo and not a word mark. The appellant‟s and respondent‟s trademarks and word marks are as under:-

Appellant‟s trademark Respondent‟s trademark

3. The respondent has applied for registration of the word mark along with the device. They await the registration.

4. The appellant‟s case is that they would have no difficulty if the logo is used by the respondent, however, the way it is pronounced is phonetically identical to the appellant‟s registered trademark and logo. They argue that the phonetic similarity would inevitably lead to the infringement of their trademark. Reference is made to previous litigation between the parties. In the appellant‟s earlier application, this Court had declined to grant any injunction and had remanded the case to the Trial Court. The earlier impugned order of the Trial Court had noted that only a logo mark has been registered and not a word mark, accordingly, the element of phonetic similarity was not examined by the Trial Court. After remand of the matter,

the present impugned order had been passed, holding that there was a registered trademark, in favour of the respondent, hence, the latter were equally entitled to the statutory protection of the mark. The learned counsel for the appellant contends that the impugned order makes the same fundamental error as made earlier; it fails to take into account that the respondent is the owner of only the logo mark and not of the word mark. The logo by itself cannot be pronounced. It is only a visual imprint, a design. However, the impugned order did not find similarity between IKEA and IKYA either phonetically or visually.

5. The learned counsel for the respondent states that the respondent has statutory protection of logo which he uses alongwith expression "IKYA"; that the logo is never used alone by itself but alongwith the explanation "IKYA- The POWER OF BEING ONE". Therefore, there cannot be confusion between the respondent‟s trademark, i.e., the logo alongwith descriptive word. Furthermore, the appellant and the respondent operate in two absolutely different business fields. The appellant is famous in the world of furniture whereas the respondent is engaged in the field of providing senior managerial services. The latter operations would entail dealing with well educated literate and experienced persons, who could easily discern the difference between IKEA and IKYA. One being the seller of goods while the other the provider of specialized services. He also submits that the appellant‟s case could have been considered for injunction, if they had moved the application in the year 2007 when the respondent‟s logo mark was registered. But the suit was filed in 2013 although the

appellants knew about the existence of the respondent‟s trademark "IKYA"

- logo mark from the year 2010.

6. The respondent claims to be in the business of providing senior managerial services for more than a decade; that they are not in the business of advertising; their business is generated to a large extent, by reference and their recognition in the corporate world for their efficiency and expertise in the service area that they operate in.

7. The appellant claims absolute protection under section 17(4) of the Act saying that since they have a word mark, anything which comes close to it would have to be warded-off, so as not to disturb the statutory protection available to it. The learned counsel for the appellant submits that protection under section 29(4) of the Act would be more in the nature of passing-off whereas the appellant seeks absolute protection under section 17(4) of the Act.

8. It is not in dispute that „IKYA- The Power of Being One‟ alongwith designed "human logo" is a registered mark, what would need to be discerned is the similarity between the words „IKEA‟ and „IKYA‟, in the way, they are pronounced. The petitioners have themselves represented that the word IKEA can be pronounced both as EE-KEE-AA and I-KEE-AA as is evident from the two different Devnagri pronunciations of the word.

       „IK-YA‟ or together as „IKYA‟

           Sr. No.   Trademark     Registration No   Class











               3.                 1523584         20


               4.                 1523583         35






               6.                 2946195         9, 16, 19, 20, 21, 24, 35



               7.                 3351959         28



               8.                 3351960         28



               9.                 2946194         9, 16, 19, 20, 21, 24, 35

9. The respondent contends that granting of an interim injunction is a discretionary remedy and the Court would ordinarily not interfere with such orders, all the more so in the present case when this Court has expedited the hearing of the suit, which is likely to be completed in the next couple of months. In support of his contention, he relies upon the decision of the Supreme Court in Wander Ltd. and Anr. vs. Antox India Pvt. Ltd. 1990 (Supp) SCC 727, which held as under:-

"14. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the Appellate Court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate Court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by the court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the Trial Court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph :

... These principles are well established, but as has been observed by Viscount Simon in Charles Osention & Co. v. Johnston „....the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case‟.

The appellate judgment does not seem to defer to this principle".

10. Indeed, the impugned order specifically records that the appellant/ plaintiff had not disclosed the factum of their knowledge of the respondent‟s trademark which is in use since 2010, i.e., ever since they had opposed the registration of the mark. Interestingly, though the appellants have set up a cause of action in November, 2011, ex facie this would completely belie the fact that they had prior information in this regard since 2010.

11. Lastly, respondent argues that trans-border reputation is not an absolute determinant for the grant of injunction; that even if the trademark is registered, user of the same in India has to be demonstrated. In the present case the appellant/plaintiff has not placed anything on record to show that they have been using their IKEA trademark in India; they had not been trading under the IKEA brand in India. Albeit, their goods may be imported into the country from parts of the world, but that by itself would not suffice as proof of use of the trademark in India or of their presence in the country.

12. The petitioner relies upon the judgment of the Supreme Court in Premier Brands UK Ltd. vs. Typhoon Europe Ltd. (2000) FSR 767 in support of this proposition.

13. The respondent further contends that the aforesaid prior knowledge of the respondents‟ right by the petitioner is not mentioned that in the suit, and the fact that they had opposed the respondent‟s application for registration of the trade mark- „IKYA- The Power of Being One‟. Furthermore, the appellant has no presence in India apropos sale of their products, i.e. furniture etc. in India. Whereas the respondent has a large footprint throughout the country, extending services in human resources for over a decade, i.e., since 2007; they claim to be a subsidiary of another renowned

company Thomas Cook (India) Ltd. It is the respondent‟s case that they use the word „IKYA‟ alongwith exceptional and distinctive expression, „The Power of Being One‟. To this Court, prima facie, there is no likelihood of any confusion between the two words, either phonetically or visually. The absolute protection would be only when the two words are either similar or palpable to create any kind of deception or confusion in the mind of an ordinary person. Furthermore, the matter is at the interim stage and this Court in FAO Nos. 443,445, & 446 of 2017, titled as „Anurag Sanghi & Anr. vs. Knitpro International', decided on 01.06.2018, has held that:-

"23. It is the settled law that in such matters the appellate Court will not interfere with the exercise of discretion of the court of first instance and substitute its own view and discretion, except where the impugned order has been shown to have been exercised arbitrarily or capriciously or where the impugned order has ignored the settled principles of law regulating grant of refusal of interlocutory injunctions. This Court in Allied Nippon Ltd. & Anr. V. Allied Motors 80 DLT 38 (DB) has held as under:

"...4. There is no doubt that appeal against an order granting ex parte injunction would be maintainable under Order XLIII, Rule 1(r) read with Section 104 of the Code of Civil Procedure, but the scope of hearing such an appeal on the ratio of decision of a Division Bench of this court in Rajesh Batra vs Grandlay Electricals (India), 1997 1 AD (Delhi) 377 is limited. In t he said decision it was held:

"The scope of hearing in such an appeal is limited. Ordinarily the Appellate Court would not take into consideration any new material. The hearing would be confined to finding out

whether the original Court was justified or not in granting the ex parte order of injunction on the material available before it.

If the Appellant Court may concur with the view taken by the original Court then the appeal would be dismissed leaving it open to the appellant to contest the ex parte order of injunction before the original Court. If the Appellate Court may form an opinion that on the material available before original Court, the grant of injunction ex parte cannot be sustained then the appellate Court would set aside the ex parte order of injunction leaving it open to the parties to appear before original Court and have a hearing by-parte on the grant or otherwise of the order of injunction.

If the Appellate Court forms an opinion t hat on the material available on record of the suit before the original Court an injunction not in the form granted by the original Court but in a different form could only have been granted ex parte then it may substitute its own order in place of the original order (under appeal) leaving it open to the opposite party to contest the issue as to grant of injunction by-parte before the original Court."

......

......

10. It is a settled proposition in law that the Appellate Court will not interfere with the exercise of discretion of the Court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the Court has ignored the settled principles of law regulating grant or refusal of interlocutory injunctions...."

14. Having considered the rival contentions and in view of the preceding discussions, the Court finds no reason to interfere with the impugned order.

The petition is without merits. It, alongwith pending application, is dismissed accordingly.

NAJMI WAZIRI, J.

OCTOBER 29, 2018 sb/RW