Inter IKEA Systems BV, Netherlands (Ikea) filed a suit for trademark infringement and passing off delivery up, damages, rendition of accounts etc at (the Delhi District Court for permanent injunction against Mr. Abhilash K.N., his firm Aikya Global and other Partners of the firm (hereinafter referred to as Aikya Global). Aikya Global contested the matter on several grounds including that there is no similarity in the marks. The Court ruled in favour of Aikya Global in an intensely contested case that was decided after three years of instituting the suit in 2013. The manner of representation of marks of the parties are appended below:
Inter Ikea Systems (Ikea) submitted that:
1. It is a market leader and one of the largest companies in world engaged in franchising network. In the year 1943, the founder of IKEA namely Ingvar Kamprad (Swedish national) created IKEA from his initials (I.K) plus the first letters of Emltaryd and Agunnaryd, the farm and village where he grew up.
2. IKEA is a coined mark and Ikea is honest and bonafide adoptor of IKEA mark.
3. It initially started using IKEA trade mark in relation to pens, wallets, picture frames, table runners, watches, jewellery and nylon stocking etc. and in the year 1947 IKEA mark was used in relation to furniture business.
4. In 1958, first IKEA store opened in Sweden containing home furnishing products. Today, the products are sold in over 75 countries including in India. There are 250 IKEA stores in 34 countries.
5. It is worldwide owner of IKEA trademarks, trade name IKEA Systems BV and domain name www.IKEA.com. IKEA word is a key constituent in the trade mark, trade name and domain name. It is also advertising IKEA products through its website, which is interactive. Copy of registration certificates of IKEA marks across numerous jurisdictions and WHOIS extract of the domain name was filed.
6. The sales of Ikea company for the years 2004 and 2006 were more than 30 billion Euros. Sales figures of Ikea downloaded from its website were filed. Ikea's products are extensively advertised in visual and print media, internet etc. which has tremendous reach and circulation worldwide including in India. The members of trade, industry, consumers and general public are well aware of IKEA mark/name/domain name. Copy of advertisement, sales and promotional literature published in foreign and Indian publications (Hindu, Hindustan Times) were also filed. In addition IKEA pleaded transborder reputation and spill over of reputation in India.
7. In India, 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). Copy of newspaper, magazine clippings, internet extracts relating to Ikea's business structure, collaboration with Standard Chartered Bank in India in 1996, UNICEF in India and achievements were filed. Copy of online extracts from Registry's database to prove Indian registrations were filed.
8. There are three companies in India belonging to Ikea Group of Companies. They are IKEA India Pvt. Ltd., Ikea Trading (India) Pvt. Ltd. and Ikea Services (India) Pvt. Ltd. The registered office of all the companies is located in Delhi. Copy of the incorporation certificate of Ikea Trading (India) Pvt. Ltd. and invoices issued to third parties were filed.
9. In August 2013, Ikea came across the mark AIKYA GLOBAL used for end to end professional consultancy and services in various types of events, media and communication and allied / cognate services. Aikya Global is using AIKYA as part of its trade name 'Aikya Global' and interactive website www.aikyaglobal.in to solicit customers.
10. Aikya Global was fully aware of Ikea's rights, goodwill in IKEA mark/name. The adoption of AIKYA mark/ name/ domain name is mala fide and tainted since inception. Use of AIKYA is void ab initio and is likely to cause confusion.
11. The adoption/use of AIKYA mark/name/domain name amounts to unfair competition, infringement and passing off of Ikea's IKEA mark. Ikea sought relief of decree of permanent injunction, rendition of accounts, damages etc.
Aikya Global submitted that:
1. It was incorporated as a partnership firm in 2008 at Bangalore. It offers customized services such as managing and hosting events, managing public relations, content management, communication etc. all of which are personalized services. Aikya has rendered services to various corporate entities. Copy of invoices issued by Aikya Global from 20092013 and images of Aikya Global's hoardings, extracts from its website were filed.
2. It has neither provided event management services to any entity in Delhi nor conducted any event or rendered any services at Delhi in July 2013. The books of accounts are audited and invoices are raised, therefore the plea that they are carrying on business in clandestine manner is baseless. Copy of registration status of Aikya Global with government authorities (Service Tax and VAT registration) were filed.
3. The origin of AIKYA word is from Sanskrit word meaning oneness, unity and harmony. Printout from spoken Sanskrit Dictionary was filed. The mark AIKYA GLOBAL contains fanciful artwork of red and white colours containing the tag line to indicate its business activities.
4. The aural, visual and structural impression of the two marks IKEA v AIKYA GLOBAL along with business activities are different. The images of the logo marks are pasted below:
5. Ikea is not engaged in the field of event/ event management/media and communication. Ikea does not hold registration for the services in which Aikya Global is dealing. Also, Ikea has no retail outlet in India. Aikya Global has never been in the business of furniture, furnishings, interior decorations and neither intends to do so in future.
6. Aikya Global only offers customized services such as managing and hosting events, managing public relations, content management, communication etc. all of which are personalized services. There is no confusion between the marks or services of two entities.
7. No evidence has been placed on record to prove that Ikea companies established in India are franchises to use IKEA mark.
8. Aikya Global has been conferred with various awards and articles highlighting achievements of Aikya Global have been published in various magazines and newspapers.
The court examined witnesses from both sides and after going through evidence, grouped parties' contentions under 5 issues out which 1, 2 and 3 being substantive issues are discussed below. Issue no. 2 and 3 were clubbed together by the court.
ISSUE NO. 1.
"Whether the plaintiff is registered proprietor of trademark IKEA having acquired well known status under the statute and common law?
The court ruled in favour of IKEA on the first issue and held trademark has acquired transborder reputation and is wellknown.
ISSUE NO. 2 and 3.
"Whether use of mark AIKYA Global by defendant amounts to infringement of plaintiff's trademark IKEA? "Whether defendant is passing off their services as those of plaintiff and thus liable for infringement of trademark IKEA and passing off as that of plaintiff?
The court approached the above issues from the point of view of customer and ruled
"In this case, till now IKEA has been a leading tradename in the field of furniture and furnishing. The services of IKEA would also be perceived by a man of ordinary prudence to be the services of nature akin to these areas. Such ordinary person will never consider that IKEA has started providing end to end professional consultancy and services in various types of events, media, and communication, both internal and external to an organization and allied and cognate services"
"It is not disputed that the brand IKEA is so exclusive and confined to upper echelon of society who are fully aware about the business activities of IKEA. Such customer base of IKEA is backed up competent advise and they may probably not believe immediately that the services of end to end professional consultancy provided by the defendants"
The court also came to the conclusion that there is no phonetic and visual similarity between the rival marks. Ikea's mark IKEA is spelt and pronounced as "EEKEEYA" whereas the word AIKYA GLOBAL is spelt and pronounced as "AIKYA" followed by GLOBAL. The colour scheme used by both marks is different.
The court concluded that no case of infringement and passing off is made out because neither Aikya Global is using IKEA trade mark nor Aikya Global is engaged in similar services.
IKEA has appealed the judgement to the High Court. Thus it seems last word has yet to be written in this case.