INTER IKEA SYSTEMS BV v. I KEY HOME STUDIO LLP AND ANR.
Written by: Adv. Megha Harshwal & Adv. Manoj Soni
The present suit has been filed for permanent injunction restraining Infringement of trademark, passing off, rendition of accounts, damages, and delivery up, etc.
That the plaintiff had initially approached the Defendant No. 1 to amicably resolve the matter but when it became apparent to the plaintiff that the Defendant No. 1 does not intend to amicably resolve
the dispute and cease use of the name and mark IKEY/ the plaintiff proceeded to file notice of opposition against the applications Defendant No. 1.
It is submitted that in May 2024, witnessing that the Defendant No. 1 had filed responsive pleadings in opposition proceedings against Application No. 5332463, the plaintiff apprehended that the Defendant No. 1 may be using the mark in the commercial domain and accordingly deputed an investigator to enquire into the activities of Defendant No. 1.
The investigator came across the Defendant No. 1’s website https://ikeyllp.com/ where third-party products of home solutions of different brands were listed. It is submitted that thereafter, the investigator visited the premises of Defendant No. 1 at the address provided on the website. Upon reaching the location, the investigator noticed ‘IKEY’ prominently displayed on the façade of a three-story building. Pertinently, the mark was de hors the words ‘Home Studio’ or the tagline ‘Let’s do it your style’. Thus, the present Court proceedings.
Learned counsel appearing for the plaintiffs submits that the plaintiff is the proprietor of the well-known and internationally renowned trademark IKEA which was adopted by its founder in the year 1943 and has been used since then and along with its color combination and trade dress, which are the subject of a large number of trademark registrations across several countries of the world, including, in India. The trademark IKEA forms a part of nearly all the trade names of all the companies under the plaintiff Group umbrellas as well as companies of the plaintiff Group’s franchisees.
It is submitted that ever since its bona-fide and honest adoption, the plaintiff Group has inter-alia been using the mark continuously and in the course of trade and has built a globally valuable and enduring trade, goodwill and reputation there under. IKEA is a unique and coined word having all the trappings of an invented mark and is an inherently strong mark.
Learned counsel appearing for the plaintiffs further submitted that apart from plaintiff’s statutory rights over its IKEA trademarks overseas, the plaintiff’s trademark has also been declared well-known in several countries, such as but not limited to China, Chile and Indonesia, Italy, Kazakhstan, EU, Turkey and Vietnam. Additionally, the WIPO Arbitration and Conciliation Centre have passed several orders recognizing the well-known status of the IKEA trademark.
Learned counsel appearing for the plaintiffs submitted that in view of the plaintiff Group’s priority in adoption and use thereof, the members of the trade, industry, the consumers and public at large in India and world over, are well aware of the trademark IKEA and the same has acquired secondary meaning such that it is exclusively associated with the goods and services offered, and the business conducted, by the plaintiff Group and its franchisees and other licensees.
Learned counsel appearing for the plaintiffs submitted that the word IKEY forms a prominent part of the impugned mark ‘IKEY Home Studio’ which is deceptively similar to the plaintiff’s prior adopted, used and registered trademark IKEA. The similarity between the conflicting marks ‘IKEA’ and ‘IKEY’ is such that it cannot be mere coincidence and a case of ignorance. In furtherance, photographs from the investigation reveal that Defendant No. 1 is also using the mark ‘IKEY’ stand-alone at its own showroom and warehouse, thus, trying to sail as close as possible to the plaintiff.
Learned counsel appearing for the plaintiffs submitted that the adoption and use of the impugned mark and logo by Defendant No. 1, in respect of similar, allied and cognate goods and services, has been mala-fide and dishonest since inception. The intention of defendant No. 1 is to piggyback on the plaintiff’s entrenched goodwill and reputation in the IKEA marks, which is highly unethical, dishonest and illegal. Defendant no. 1 on its website has indicated that they ‘showcase a wide variety of products from renowned brands’. Therefore, there is a serious apprehension that an unwary consumer will mistakenly believe that defendant no. 1 is engaged in stocking and selling the products of the plaintiff.
It is submitted that Defendant No.1 is, liable to be restrained from using the impugned mark IKEY and the logos / or any other variation thereto as part of its trade name and trademark ‘IKEY Home Studio’/ ‘IKEY Home Studio LLP’, which amounts to infringement of plaintiff’s registered trademark IKEA in any manner. Further, use of ‘IKEY’ as part of the domain name www.ikeyllp.com, through which defendant no. 1 conducts its business online should be suspended.
The court held that till the next date of hearing, Defendant No.1, its partners, their legal heirs, proprietors, employees, servants, agents, representatives and all others in active concert or participation with them, are restrained from selling/ advertising/ importing/ exporting or in any other way dealing in goods and providing services under the impugned mark ‘IKEY’, ‘IKEY HOME STUDIO’, and/or any other deceptively similar mark, in any manner which amounts to infringement of the plaintiff’s IKEA trademark and amounting to passing off of the Defendant No.1’s products as that of the plaintiff.
The court further directed Defendant No.2 is to suspend the domain name ikeyllp.com during the pendency of the present suit and also directed to disclose the registrant details of the said domain name.