ICON HEALTH AND FITNESS v. SHERIFF USMAN CS(COMM) 216/2016(Delhi HC)

 

 

INTRODUCTION

 

This case relates to the question of territoriality and the jurisdiction of the court while dealing with a question of trademark infringement. Many times it happens that a particular entity is not located in the domestic jurisdiction yet its products and goods find a way into the country.

Often a dispute of trademark infringement arises when there exists already a holder of a trademark in the domestic jurisdiction and the products and goods of another manufacturer are found of another manufacturer with a deceptively similar trademark who does not have its business located in the domestic jurisdiction.

Such cases pose to be tricky ones, since the court has to first establish that whether it is competent to try the suit and then subsequently it has to decide whether on the basis of the evidence before it and in the absence of the other party it would be in the interest of justice to proceed ex-parte.

In the instant case he plaintiff was a company that was registered in the US and was dealing in fitness related equipments such as wearables, treadmills etc. The products were available all around the globe and it had a trademark ifit/iFit which it had been using it since 1999 and it was protected under the law.

It had obtained the registration for its trademark many countries and had filed an application for the same in India under the classes 9, 44, 28, 42, & 41.

Whereas the defendant was a proprietor of Smart Infocomm Ventures Pvt. Ltd. and Smart Infocomm Pvt. Ltd and the same were private limited companies which were not registered in India but the registered office was that of United Arab Emirates. They were also engaged in some business which was related to the fitness industry similar to the plaintiff.

FACTS

The plaintiff in the year 2015 (August) came to know that the defendants were running a fitness related application namely ifit on mobile application stores like google play store etc. It was further revealed that they were also selling fitness bands under the name IFIT on e-commerce portals.

The plaintiff filed a suit for permanent injunction against the defendants from using their mark, domain name ‘ifit’ and any other mark or name, label or device which was similar to the plaintiff’s trademark ‘ifit’ in fitness related goods and services.

They also prayed for the delivery of all the products that were manufactured by the defendant bearing the similar trademark so that the plaintiff may destroy the same.

ISSUES FOR DETERMINATION

The primary issue for determination in the instant case was that whether the court was having territorial jurisdiction to try the suit when the defendants were not having their registered offices with the territory of India.

Another question for determination was that whether there was enough material to show that the defendants were carrying out their business in the country.

The Plaintiff placed reliance upon the following arguments and documents to substantiate its claim:

• The defendants were using the mark since 1999;
• The mark used by the defendants was identical;
• The defendant uses the mark in lower case thereby leading to confusion as the plaintiff also depicts it in the same manner in certain ways;
• There was specific intent to mislead the public;

JUDGMENT

The court had to first decide the question of territoriality and therefore it relied upon:

• WWE, Inc v. M/s Reshma Collection, 2014 SCC OnLine Del 2031 wherein it was held that due to advancements in technology a person residing in one part of the world is connected to another part. If a product of business enterprise not located in say Delhi, is available online through an e-commerce website and the same can be accessed, in Delhi and if a person can buy that product with the click of a mouse then the same would mean to be carrying out business in that city in term of the Trademark Act.

 

• After placing reliance on the aforesaid judgment, it was held that although the defendants were not residing in Delhi, yet their products were available on e-commerce portals like amazon, and also their fitness apps were available on the Apple’s App Store and Google Play store which can be accessed all over India.

 

• Therefore, the defendants were carrying on business from Delhi since the same were accessible to the people in Delhi and hence the court had the jurisdiction to try and decide the instant suit.

 

• After holding that the court could try the suit at Delhi, the High Court decided as to whether the trademark in question was a coined word or a descriptive word.

 

• It relied upon the decision of Plastindia Foundation v. Ajeet Singh, (2002) 95 DLT 235, wherein it was held that in order to find out that whether the word was a coined word or a descriptive word, it needs to be seen that whether the word is used ordinarily or has been invented or coined.

 

• The court further relied upon the case of Prius Auto Industries Ltd. & Ors v. Toyota Jidosha Kabushiki Kaisha, (2017) 236 DLT 343, wherein it was held that in order to establish trans-border reputation, the plaintiff has to show the presence of reputation in foreign jurisdictions and secondly the knowledge pertaining to a trademark due to its reputation in a foreign country in the domestic jurisdiction.

 

• Thus after going through all the aforesaid decisions the court was of the view that the trademark IFIT was registered worldwide and therefore it had recognition globally and its trans-border reputation cannot be questioned.

 

• The suit was decreed in favour of the plaintiff and a cost of Rs 1,20,000/- was imposed on the defendants who were proceeded ex-parte.