CTM Court sides with IKEA against "parasitic" use of its well-known mark
The Spanish Community Trademark Court, which has its seat in Alicante, has upheld a complaint filed by well-known multinational company IKEA for infringement of its trademark against a company which operated under the marks IKEATELO and IKEVAMOS (Case 719/2013, June 27 2014). The defendant's services consisted of going to IKEA stores to buy furniture and other products ordered by individuals and transporting the goods to their homes.
The court first found that there was a likelihood of confusion or association between the IKEA mark and the marks used by the defendant, which were constructed by adding the Spanish words 'te lo' and 'vamos' to the IKEA mark (the English translation of IKEATELO and IKEVAMOS would roughly be 'Ikeaityourself' and 'Letsgoikea'). The defendant also used lettering and a blue-and-yellow colour combination that were very similar to those used for the IKEA mark.
Second, the court found that the defendant was taking unfair advantage of the well-known character of the IKEA mark and had infringed the mark under Article 9(1)(c) of the Community Trademark Regulation (207/2009). In that respect, the court applied the case law established by the Court of Justice of the European Union in L'Oréal v Bellure (Case C-487/07), according to which the concept of taking unfair advantage of the distinctive character or the repute of a trademark, also referred to as 'free-riding', relates not to the detriment caused to the mark, but to the advantage obtained by the third party as a result of the use of an identical or similar sign. Accordingly, the court rejected the defendant’s argument that its conduct had not caused any damage to the prestige of the IKEA mark on the ground that it was irrelevant.
Further, the court found that use of the IKEATELO and IKEVAMOS marks gave rise to a risk that the image projected by the IKEA mark would be transferred to the defendant through a conduct that it classed as “parasitism”, since the defendant sought to attract the attention of consumers to its services without any consideration for the holder of the well-known IKEA mark. Such conduct was not in conformity with honest market practices, which must be rooted in the efficiency of one's own services, not in the misappropriation of another’s efforts.
The defendant had argued in its defence that there was no likelihood of confusion because it had included a disclaimer on its website and in some of its leaflets stating: “No somos IKEA” ("We are not IKEA"). However, the court considered that this message did not detract from the fact that the company was taking unfair advantage of the well-known character of the IKEA mark.
The court thus ordered the defendant to:
- cease using the marks IKEATELO and IKEVAMOS;
- remove all commercial and advertising material containing those marks; and
- destroy such material at its expense.
The defendant was also ordered to pay damages equivalent to the cost of the hypothetical licensing fee that the defendant should have paid IKEA to use its mark. Lastly, the court ordered the cancellation of the domain names 'ikeatelo.com' and 'ikevamos.com', which the defendant used for its website.
The judgment is not final.
Carlos Morán, Elzaburu, Madrid
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