Trade mark – Infringement – Jurisdiction – Admittedly Defendants are residing in foreign country in such a situation is Delhi High Court vested  with territorial jurisdiction to try suit since on facts of the case question answered in affirmative”Defendants are offering their fitness apps and bands through App Store, Google Play Store and e-commerce portals like www.amazon.in which can be accessed and operated from all over country, including from Delhi.”

MIPR 2018 (1)  16   =   MANU/DE/2799/2017

 

IN THE HIGH COURT OF DELHI

Icon Health and Fitnes, Inc. vs    Sheriff Usman and Anr.

CS (COMM.) 216/2016 DECIDED ON: 12.09.2017

Judge

Mukta Gupta, J.

Counsel

For Appellant/Petitioner/Plaintiff: Pravin Anand, Prachi Agarwal and Mrinali Menon, Advs.

Foreign Case referred

Reddaway v. Banham (1896) 13 RFC 218

Cases referred

Plastindia Foundation v. Ajeet Singh MANU/DE/1220/2001:95 (2002) DLT 235:2002
(25) PTC 71 (Del)

Prius Auto Industries Ltd. & Ors. v. Toyota Jidosha Kabushiki Kaislw MANU/DE/3405/ 2016: 236 (2017) DLT 343: MIPR 2017 (2) 81: 2017 (69) PTC 45 (Del)

World Wrestling Entertainment, Inc. v. M/s. Reshma Collection & Ors. MANU/DE/3936/
2014

Code of Civil Procedure, 1908 Order VIII Rule 10

HEAD NOTE

Trade mark – Infringement – Jurisdiction – Admittedly Defendants are residing in foreign country in such a situation is Delhi High Court vested  with territorial jurisdiction to try suit since on facts of the case question answered in affirmative”Defendants are offering their fitness apps and bands through App Store, Google Play Store and e-commerce portals like www.amazon.in which can be accessed and operated from all over country, including from Delhi.”

Held, “adoption of impugned mark by Defendant is clearly dishonest. Impugned mark has been adopted with specific intent to mislead public into believing that a connection exists between Plaintiff and Defendants. Though Defendants are not residing in Delhi, however, Defendants are offering their fitness apps and bands through App Store, Google Play Store and e-commerce portals like www.amazon.in which can be accessed and operated from all over country, including from Delhi. Thus, it can be said that Defendants are carrying on business or working for gain at Delhi and this Court has territorial jurisdiction to try and decide present suit. The law on trans-border reputation was discussed by Division Bench of this Court in  case of Prius Auto Industries Ltd. & Ors. v. Toyota Jidosha Kabushiki Kaisha wherein it was held that, to prove trans-border reputation Plaintiff is required to establish two facts. First is reputation in foreign jurisdictions of Trade mark and second is knowledge of Trade mark due to its reputation abroad in a domestic jurisdiction. If its reputation spills over beyond territories of its operation, benefit thereof can be claimed in an action of passing off. Plaintiff enjoys trans-border reputation with respect to Trade mark which is Registered in various countries in world. Defendants have been proceeded ex-parte and thus have not rendered accounts of profits. Consequently, suit is decreed in favour of Plaintiff and against Defendants in terms of prayer (a) for passing off. Defendants, their principal officers, servants, agents, their affiliates, subsidiaries, distributors, and all others acting for and on their behalf restrained from using mark/name/domain name ifit and/or any other mark/name, including as a label or device, which incorporates, is identical or deceptively or confusingly similar to Plaintiff’s Trade mark ifit in any manner and for fitness related goods or services, so as to cause confusion or deception leading to passing off of Defendants’ goods or business as those of the Plaintiff.

JUDGMENT

Mukta Gupta, J.

I.A. No. 9876/2017 (under Order VIII Rule 10 Code of Civil Procedure-by Plaintiff)

  1. By this application the Plaintiff seeks judgment for the reason the right of the
    Defendants to file written statement has been closed and Defendants have been
    proceeded ex-parte.
  2. Application is disposed of pronouncing the judgment in favour of the Plaintiff
    and against the Defendants.

CS (COMM) 216/2016

  1. By the present suit, Plaintiff seeks the following reliefs:
  • An order of permanent injunction restraining the Defendants, their principal
    officers, servants, agents, their affiliates, subsidiaries, distributors, and all
    others acting for and on their behalf from using the mark/name/domain name
    ifit and/or any other mark/name, including as a label or device, which
    incorporates, is identical or deceptively or confusingly similar to the Plaintiff’s
    Trade mark ifit in any manner and for fitness related goods or services, so as to
    cause confusion or deception leading to passing off of the Defendants’ goods
    or business as those of the Plaintiff;
  • An order for permanent injunction restraining the Defendants, their principal
    officers, servants, agents, their affiliates, subsidiaries, distributors, and all others
    acting for and on their behalf from using the mark/name/domain name ifit
    and/or any other mark/name including as a label or device, which incorporates,
    is identical or deceptively or confusingly similar to the Plaintiff’s Trade mark ifit
    in any manner and for fitness related goods or services, so as to misrepresent its
    quality/origin and take unfair advantage of the Plaintiff’s reputation and
    goodwill in the Trade mark ifit amounting to unfair competition, and or causing
    tarnishment and dilution of the Plaintiff’s Trade mark ifit;
  • An order of delivery up by the Defendants of all packaging and printed
    materials, labels, raw materials, pamphlets, catalogues, brochures, publicity material, stickers, and all other materials bearing the mark ifit or any other mark which is identical and deceptively similar to the Plaintiff’s mark ifit for the purposes of destruction by the Plaintiff;
  • An order directing the Defendants to pay a sum of damages owing to loss
    of profits by the Plaintiff as also the loss of reputation and goodwill owing to
    the illegal activities of the Defendants as determined after discovery in the
    present suit;
  • An order for costs;

 

  1. Summons in the suit were issued to the Defendants vide order dated
    17′h March, 2016. Defendant No. 1 was served on lbt October, 2016 and Defendant
    2 on 14th May, 2016. Neither of the Defendants entered appearance nor any
    written statement was filed on their behalf within the prescribed statutory period.
    Thus, the right to file written statement of Defendant No. 2 was closed and it was
    proceeded ex-parte vide order dated 24th October, 2016. The right to file written
    statement of Defendant No. 1 was also closed and it was also proceeded ex-parte
    vide order dated 1st February, 2017. Thus, the Plaintiff moved an application under
    Order VIII Rule 10 Code of Civil Procedure being IA No. 9876/2017 for passing of
    decree in favour of the Plaintiff against the Defendants.
  2. As per the plaint, Plaintiff is a company incorporated under the laws of United
    States having its Registered office at 1500 South 1000 West Logan, Utah, 84321,
    United States of America. The Plaintiff is one of the world’s largest developers,
    manufacturers and marketers of fitness equipment including wearables, treadmills,
    elliptical trainers, stationary bicycles, weight machines and benches, and yoga and
    Pilates equipment. The Plaintiff’s related products and services are available in
    more than 86 countries in the world including India. Plaintiff has a history starting
    from the year 1977 and is operating under the name ICON Health and Fitness, Inc.
    since the year 1994. Its major brands include iFIT, ProForm, Weslo, Weider, Altra,
    Health Rider, Nordic Track, Free Motion and Image.
  3. The subject matter of the present suit is the Plaintiff’s Trade mark ifit/iFIT which
    the Plaintiff uses for fitness devices such as wearable and software applications for
    fitness devices. Plaintiff adopted the Trade mark IFIT in the year 1999 and has been
    using the Trade mark continuously and openly since then. Plaintiff’s Trade mark
    IFIT is a coined mark and thus enjoys protection under Trade mark law.
  4. Plaintiff is one of the first players in the world to enter into the wearable fitness
    device and fitness software space and is considered one of the leaders in the market.
    The reputation of the Plaintiff IFIT Trade mark is evident from the worldwide revenues
    from sales of its IFIT branded devices and software. The Plaintiff has spent over
    millions of dollars on the promotion of its products including IFIT branded devices
    and software.
  5. Plaintiff owns and operates the website www.ifit.com which provides information
    regarding the Plaintiff’s IFIT branded devices and software since the year 1999.
    Plaintiff’s IFIT branded apps are available on mobile stores such as the App Store
    and Google Play. Plaintiff’s software under the Trade mark IFIT was made available
    in India at least as far back as the year 18th October, 2011. Since November, 2011 IFIT
    branded mobile apps has had hundreds of thousands of logins and thousands of
    downloads by users with IP addresses in India. The Plaintiff’s IFIT branded fitness

 

devices are also available on popular e-commerce portals such as www.amazon.in thereby making these products instantly available to millions of users who visit such e-commerce portals.

  1. Plaintiff has obtained registration for the Trade mark IFIT in many countries and
    has also filed an Application Bearing No. 2770520 in India for the Trade mark IFIT
    in Classes 9, 28, 41, 42 and 44.
  2. Defendant No. 1 is believed to be the proprietor of Smart Infocomm Ventures Pvt.
    and Smart Infocomm Pvt. Ltd. Though both Smart Infocomm Ventures Pvt. Ltd.
    and Smart Infocomm Pvt. Ltd. are private limited companies however as per the
    records of registrars of companies, neither of these companies are Registered with
    the said Registrar. Defendant No. 2 is a company having its Registered office in
    United Arab Emirates.
  3. In the month of August, 2015, the Plaintiff learnt that the Defendants are offering
    a fitness related App under the name ifit on the App Store and on the Google Play
    Further enquiries revealed that the Defendants are offering fitness bands for
    sale under the name IFIT on e-commerce portals such as www.amazon.in. The
    Defendants are offering its apps on the App Store and the said app was first listed in
    February, 2015. The Defendants are thus using a mark identical to that of the Plaintiff
    for identical devices and software and for identical class of consumers. The channels
    through which the Defendants are offering their devices and software are also
    identical to those of the Plaintiff.
  4. The snapshot below represents the search results for IFIT on the App Store
    showing the Plaintiff’s IFIT branded apps and the Defendants app.

 

Result 1: Plaintiffs ifit branded

 

 

»(•*•«>»     *fl Frfct*

iFIT ,,, ».,«,*m»

Iflt branded 3BJJ

*

r*-%»e».

iPTT

  • r I i
  • PI*
  1. The adoption of the impugned mark by the Defendant is clearly dishonest on th following grounds:-
  2. Being in the same trade, the Defendants are bound to be aware of the goodwill
    and reputation of the Plaintiff’s Trade mark ifit and the use of the said mark
    since the year 1999.
  3. The Defendants have adopted a mark which is identical to a distinctive, and
    coined mark.
  4. The Defendant is using the Trade mark in all lower case, which is one of the
    ways in which the Plaintiff also depicts its Trade mark.
  5. The Defendant is offering its infringing devices and software on the same
    platforms and channels as the Plaintiff thereby maximizing the likelihood of
    confusion.
  6. In its correspondence with the Plaintiff, Defendant No. 1 did not provide
    any justification whatsoever for the adoption of an identical mark.

 

  1. Thus, it is evident that the impugned mark has been adopted with the specific
    intent to mislead the public into believing that a connection exists between the
    Plaintiff and the Defendants.
  2. Plaintiff had sent a complaint through Apple’s App Store dispute resolution
    mechanism and the said complaint was sent to the Defendant on 12th August, 2015.
    However, the Defendants failed to respond and subsequently a reminder was sent
    to the Defendants on 28th September, 2015. Defendants responded to the Plaintiff’s
    complaint by an email dated 28lh September, 2015 whereby it was stated by the
    Defendant that it was only using the IFIT mark along with prefix ‘Smart’. Plaintiff
    had also addressed a cease and desist letter to the Defendant No. 1 in August, 2015
    along with a reminder letter which was returned to the Plaintiff as unclaimed.
  3. To substantiate the contents of the plaint the Plaintiff has placed reliance on the
    following documents:
  4. Plaintiff’s website www.ifit.com detailing the products and services rendered by the Plaintiff to the consumers worldwide.
  5. Extract from the www.whois.com website showing the registration of the domain name in favor of the Plaintiff with creation date as 10th March, 1997.

iii. Plaintiff’s app iFIT available on the Android market at Google Play as well as the App store in iOS market.

  1. Copies of the Trade mark registrations in favor of the Plaintiff in Europe, Australia, United States, Hong Kong, Canada, New Zealand, China, Japan, Malaysia and Switzerland.
  2. List of Trade mark Registrations (approximately 91) secured by the Plaintiff worldwide with the earliest application dated 3rd April, 1999.
  3. Trade mark application filed by the Plaintiff in India under application number 2770520 dated 9th July, 2014 in Classes, 9, 28, 41, 42 and 44.

vii. Extracts from various third party articles highlighting the presence of the Plaintiff’s services worldwide since the year 1999.

viii. Presence of the Plaintiff’s products on third party websites such as www.amazon.com.

  1. Extract from the Defendant’s website www.smartinfocomm.com.
  2. Legal notice dated 27th August, 2015 sent by the Plaintiff’s Counsel on behalf of the Plaintiff to the Defendant.
  3. Reminder letter dated 21st September, 2015 sent by the Plaintiff’s Counsel on behalf of the Plaintiff to the Defendant.

xii. E-mail correspondence between the Plaintiff and the Defendants concerning the listing of the app on the App Store.

xiii. Presence of the Defendant’s products on various third party retail websites such as www.flipkart.com, www.snapdeal.com.

  1. The issue which arises for consideration is whether this Court has territorial
    jurisdiction to try the suit since the Defendants are residing in United Arab Emirates
    and whether there is material to establish that the Defendants are carrying on
    business from Delhi. Though the Defendants are not residing in Delhi, however, the

 

Defendants are offering their fitness apps and bands through App Store, Google Play Store and e-commerce portals like www.amazon.in which can be accessed and operated from all over the country, including from Delhi. Thus, it can be said that the Defendants are carrying on business or working for gain at Delhi and this Court has territorial jurisdiction to try and decide the present suit. [See World Wrestling Entertainment, Inc. v. M/s. Reshma Collection & Ors.1]

  1. This Court in the decision reported as (2002) 95 DLT 235 Plastindia Foundation v. Ajeet Singh , while relying upon the judgment of House of Lords in Reddaway v. Banham on “coined words” observed as under:
  2. The judgment of the House of Lords which was being referred to in the
    aforesaid paragraph was the case of Reddaway v. Banham (1896) 13 RFC 218,
    from the same judgment. The discussion about ‘coined words’ was adopted in
    paragraph 43 which reads as under:

Para 43: Lord Herschell also dealt with “coined” words, that did not have any meaning in the language; and at page 228 line 19, said that “words never in use before, and meaningless, except as indicating by whom the goods in connection with which it is used were made, there could be no conceivable legitimate use of it by another person”. Thus the “coined” “created”, “Fancy”, or “new” words which were not in use in any language before, and which did not have any meaning in the ordinary language, as evidenced by their absence in authoritative and standard language dictionaries, were the exclusive property of the person who first “coined”, or created them and adopted them for use, and used it in connection with any article the only reason why a hitherto meaningless word would be used by another in connection with his activities would be to deceive the public, that the latters’ article, thing or goods or the articles, thing, or goods of the former. He also observed that ‘he was unable to see why a man should be allowed in this way, more than in any other, to deceive purchasers into the belief that they are getting what they are not, and thus to filch the business of a rival’.

  1. The test of determine whether a particular word is a descriptive word or
    coined word has been stated in paragraph 45. What is required is to be seen is:
    Whether the word is a word of ordinary language, or whether the word is a
    fancy, invented or coined word. In the former case what is required to be further
    established whether the common word or phrase has acquired secondary
    signification or not. As we are dealing with the question as to whether the
    word PLASTINDIA as a coined word, the test is to see as to whether this word
    is of ordinary language. Learned Counsel for the Defendants could not dispute
    that the word PLASTINDIA is not a word of ordinary language which is found
    in English dictionary. In that case the following observations of the aforesaid
    judgment of Globe Super Parts (supra) give us the further guidance:

Para 45…. In case of fancy, invented, coined word the case is much easier,

as a reference to the authoritative dictionaries of the language would clearly establish whether the word in question, exits in the language dictionaries, if not, it is a coined, fancy, invented word which is not a part of the language.

 

 

Such word must be found to be owned by the person who has to devised the word, by applying the skill and labour rest, laid down in inter alia in AIR 1924 PC 75; (1960) 1 Mad. LJ 53: (AIR 1961 Mad. Ill), which test is applicable in all Copyright cases. The test being based on the principle that what is protected is what has originated from the author (1964) 1 All ER 465 Ladbroke Football, relying upon (1894) AC 335). What originates from the author as a result of exercise of his skill and labour, is his “expression” which is protected by the Law of Copyright. The “skill and labour” does not depend upon the time taken by the author as grater is the skill of the author less will be the time taken what would be relevant would be whether what has originated from the author is new, or distinctive, even a successful adaption from another language.

  1. The law on trans-border reputation was discussed by the Division Bench of this
    Court in the decision reported as (2017) 236 DLT 343 Prins Auto Industries Ltd. & Ors.
    v. Toyota Jidosha Kabushiki Kaisha3 wherein it was held that to prove trans-border
    reputation Plaintiff is required to establish two facts. The first is reputation in foreign
    jurisdictions of the Trade mark and the second is knowledge of the Trade mark due
    to its reputation abroad in a domestic jurisdiction. If its reputation spills over beyond
    the territories of its operation, the benefit thereof can be claimed in an action of
    passing off. It was also observed that:
  2. The principles of trans-border reputation are well recognized and we do not intend to make a catalogue of various judgments dealing with trans-border reputation. Before the era of the internet the judgments were to the effect that where a product is sold in India and sales figures coupled with money spent on advertisements show acceptability of the product in the market, this would be good evidence of the product having acquired a reputation through its Trade mark. Concerning trans-border reputation, the judgments were to the effect that if the product is not sold in India but information relatable thereto is available in the print media and especially magazines purchased by consumers having an interest in the particular category of goods, it would be good evidence of trans-border reputation having entered in the municipal jurisdiction of India. Post-internet era the law of trans-border reputation expanded because the internet virtually broke down the domestic walls in areas of trade and business. On the internet, through search engines one can access information put on the website, be it by the manufacturer of the goods or in e-journals and e-magazines.
  3. Plaintiff enjoys trans-border reputation with respect to the Trade mark IFIT which
    is Registered in various countries in the world. The Defendants have been proceeded
    ex-parte and thus have not rendered accounts of profits.
  4. Consequently, the suit is decreed in favour of the Plaintiff and against the
    Defendants in terms of prayer (a) for passing off along with costs of Rs. 1,20,000
    being the Court fee and litigation expenses in favour of the Plaintiff. Decree sheet be
    drawn accordingly.

 

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