In a suit for infringement of trademark and passing off filed by Inter Ikea Systems BV, proprietor of famous trademark IKEA for home furnishing products, the Court ruled in favour of the Plaintiff by restraining the Defendant from using the mark IKAH. It was argued by the Plaintiff that trademark IKEA is an invented mark derived from the first letters of the name and surname of the plaintiff’s founder Ingvar Kamprad as also the first letters of the farm and the village where he grew up i.e. Elmtaryd and Agunnaryd. The mark IKEA has been in use since 1943 and in India since 1994. It was the plaintiff’s case that the defendant’s mark IKAH is phonetically, structurally and conceptually similar to plaintiff’s registered trade mark IKEA and is being used in relation to identical goods to encash upon the plaintiff's goodwill and international reputation.
The primary defence put by the Defendant was that the plaintiff’s mark IKEA and the defendant’s mark IKAH are phonetically and visually dissimilar and that the Defendant’s logo is in black colour while the plaintiff’s logo is in yellow and blue colour. The Defendant further argued that its mark IKAH has been registered in Classes 7 & 11 and it has never been objected to either by the Registrar of Trade Marks or by the plaintiff. It was also submitted that the mark IKAH is an acronym for “International Kitchen and Hardware”.
The Plaintiff in its rejoinder argued that the marks IKEA and IKAH are both phonetically and visually similar as they contain:
- 4 letters each
- The first two letters (50% of the mark are identical)
- Of the last two letters is an A in both – only the location of the “A” is displaced in the Defendant’s mark.
- The Defendant’s mark has an “H” which is a voiceless glottal fricative, (used more as a vowel than a consonant).
After hearing the parties, the court held that since the plaintiff’s mark is a coined word and therefore it is entitled to the highest protection. On the Defendant’s registrations, the court held that that the registrations are for logo/device mark and therefore they do not provide any right on the word mark IKAH. The court relied on Supreme Court Judgment of The Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558 wherein it was held:-
“16. It is true that where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole….
The court held that the impugned mark bears an overall similarity to the plaintiff’s registered mark and is likely to mislead a person usually dealing with one to accept the other if offered to him. The Court dismissed the arguments with regard to the size or format of stores or trade channels or class of customers being irrelevant as the suit was filed for infringement of a registered trademark.
With respect to defendant’s use of IKAH in its domain www.ikah.in, the court relied upon the principle of “Initial Interest Confusion” and observed that the domain name www.ikah.in could be reached by a mere misspelling of the plaintiff’s trademark with no knowledge of the defendant or its products. Based on this, the Court passed an order in favour of the plaintiff and restrained the Defendant from using the disputed mark IKAH. The National Internet Exchange of India (NIXI) was also directed to suspend the domain www.ikah.in during the pendency of the present suit.