Delhi District Court: no confusion between IKEA and AIKYA GLOBAL
Inter IKEA Systems BV ('Ikea'), Netherlands, filed suit for trademark infringement and passing off, delivery up, damages and rendition of accounts at the Delhi District Court, seeking a permanent injunction against Mr Abhilash KN, his firm Aikya Global and other partners of the firm (collectively 'Aikya Global'). Aikya Global contested the matter on several grounds, including that there was no similarity between the marks. The court ruled in favour of Aikya Global in this intensely contested case, which was decided three years after the suit was instituted in 2013.
The parties' marks are represented below:
Ikea submitted as follows:
- It is a market leader and one of the largest companies in the world with a franchising network. In 1943 the founder of Ikea, namely Ingvar Kamprad (a Swedish national), created the name IKEA from his initials (IK) plus the first letters of Emltaryd and Agunnaryd, the farm and village where he grew up.
- IKEA is a coined mark, and Ikea adopted it in an honest and good-faith manner.
- Ikea initially started using the IKEA mark in relation to pens, wallets, picture frames, table runners, watches, jewellery and nylon stockings, among other things. In 1947 it started using the IKEA mark in relation to a furniture business.
- In 1958 the first IKEA store, which sold home furnishing products, opened in Sweden. Today, the products are sold in over 75 countries, including in India. There are over 250 IKEA stores worldwide.
- Ikea is the owner worldwide of several IKEA trademarks, the trade name IKEA Systems BV and the domain name 'www.ikea.com'. The 'IKEA' element is a key constituent of the trademarks, trade name and domain name. It also advertises IKEA products through its website, which is interactive. Copies of the registration certificates for the IKEA marks across numerous jurisdictions and the WHOIS extract of the domain name were filed.
- Ikea's sales for the years 2004 and 2006 amounted to over €30 billion. Sales figures downloaded from Ikea's website were filed. Ikea's products are extensively advertised in visual and print media and on the internet, which has tremendous reach and circulation worldwide, including in India. Members of the trade, consumers and the general public are well aware of the IKEA mark/trade name/domain name. Copies of advertisements, and sales and promotional literature published in foreign and Indian publications were also filed. In addition, Ikea relied on trans-border reputation and spill-over of reputation in India.
- In India, the IKEA mark is being used in the course of trade and is registered/pending registration for various goods and services. The earliest registration dates back to 1987 in Class 27 (Registration No 471124). Copies of newspaper and magazine clippings, internet extracts relating to Ikea's business structure, a collaboration with the Standard Chartered Bank and UNICEF in India, as well as other achievements, were filed. Copies of online extracts of the registry's database were also filed to prove the existence of the Indian registrations.
- There are three companies in India that belong to the Ikea Group of Companies: IKEA India Pvt Ltd, Ikea Trading (India) Pvt Ltd and Ikea Services (India) Pvt Ltd. The registered office of all these companies is located in Delhi. A copy of the incorporation certificate of Ikea Trading (India) Pvt Ltd and invoices issued to third parties were filed.
- In August 2013 Ikea came across the mark AIKYA GLOBAL, used for end-to-end professional consultancy and services for various types of events, media, communication and allied/cognate services. Aikya Global used the term 'Aikya' as part of its trade name 'Aikya Global' and on its interactive website 'www.aikyaglobal.in' to solicit customers.
- Aikya Global was fully aware of Ikea's rights and goodwill in the IKEA mark/name. The AIKYA mark/trade name/domain name had been adopted in bad faith and tainted since inception. Use of AIKYA was thus void ab initio and was likely to cause confusion.
- The adoption/use of the AIKYA mark/name/domain name amounted to unfair competition, infringement and passing off of Ikea's IKEA mark. Ikea sought relief by way of a decree for permanent injunction, rendition of accounts and damages, among other things.
Aikya Global submitted as follows:
- It was incorporated as a partnership in 2008 in Bangalore. It offers customised services, such as managing and hosting events, managing public relations, content management and communication, all of which are personalised services. Aikya has rendered services to various corporate entities. Copies of invoices issued by Aikya Global from 2009 to 2013, images of Aikya Global's hoardings and extracts from its website were filed.
- By July 2013 it had neither provided event management services to any entity in Delhi nor conducted any event or rendered any services in Delhi. Its books of accounts are audited and invoices are raised, so the plea that it is carrying on business in a clandestine manner was baseless. Copies of the registration status of Aikya Global with government authorities (ie, service tax and VAT registration) were filed.
- The term 'Aikya' comes from a Sanskrit word meaning 'oneness, unity and harmony'. A printout from the spoken Sanskrit Dictionary was filed. Moreover, the mark AIKYA GLOBAL contains fanciful artwork in red and white and includes a tag line indicating its business activities.
- The aural, visual and structural impression of the marks IKEA and AIKYA GLOBAL, as well as the parties' business activities, are different.
- Ikea is not engaged in the fields of event services/event management/media and communication, and does not hold trademark registrations for the services that Aikya Global provides. In addition, Ikea has no retail outlet in India. Aikya Global has never been engaged in the furniture, furnishings and interior decorations sector, and neither does it intend to do so in the future.
- Aikya Global only offers customised services such as managing and hosting events, managing public relations, content management and communication. There was thus no confusion between the marks or services of the parties.
- No evidence had been placed on record to prove that the Ikea companies established in India are franchised to use the IKEA mark.
- Aikya Global has received various awards, and articles highlighting its achievements have been published in various magazines and newspapers.
The court heard witnesses for both sides and, after going through the evidence, grouped the parties' contentions under five issues. Issues 1, 2 and 3, which are substantive issues, are discussed below. Issue 2 and 3 were considered together by the court.
Issue 1 was as follows: "Whether the plaintiff is the registered proprietor of the trademark IKEA, which has acquired well-known status under the statute and common law". The court ruled in favour of Ikea and held that the trademark IKEA had a trans-border reputation and was well known.
Issues 2 and 3 were as follows:
- "Whether use of the mark AIKYA GLOBAL by the defendants amounted to infringement of the plaintiff's trademark IKEA".
- "Whether the defendants were passing off their services as those of the plaintiff and were thus liable for infringement of the trademark IKEA and for passing off".
The court approached the above issues from the point of view of consumers and ruled:
"In this case, IKEA is a leading trade name in the field of furniture and furnishings. The services of Ikea would be perceived by a man of ordinary prudence to be services of a nature akin to these areas. Such an ordinary person would never consider that Ikea has started providing end-to-end professional consultancy services and various types of event, media and communication services, both internal and external, and allied and cognate services.
It is not disputed that the brand IKEA is exclusive and confined to the upper echelon of society, who is fully aware of the business activities of Ikea."
The court also came to the conclusion that there was no phonetic and visual similarity between the marks. The colour scheme used by both marks was different.
The court concluded that no case of infringement and passing off had been made out because Aikya Global was not using the IKEA mark, nor was it engaged in services similar to those offered by Ikea.
Ikea has appealed to the High Court; it thus seems that the last word has yet to be written in this case.
Abhishek Nangia, RNA, Intellectual Property Attorneys, Gurgaon
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