In Icon Health and Fitnes Inc. vs. Sheriff Usman and Anr., the Delhi High Court vide its order dated 12th September, 2017 held that the defendant is responsible for passing off the trade mark of the plaintiff and therefore the suit has been decreed in favour of the plaintiff. In this case, Icon Health and Fitnes Inc., a USA Based company initiated a proceeding against Sheriff Usman and Anr. to restrain them from using their mark "IFIT". The plaintiff has been using the aforesaid mark for their fitness devices such as wearable and software applications. The aforesaid mark of the plaintiff is a coined mark by the plaintiff and has been continuously used by them since the year 1999. The plaintiff is one of the first players in the world to enter into the wearable fitness devices and fitness software space and is considered one of the leaders in the market. The plaintiff's app "IFIT" is also available on App Store and Google Play Store. In the year 2015, it came to the knowledge of the plaintiff that the defendants were also offering fitness related application under the name "IFIT" in App Store and Google Play Store and also offering their fitness brands for sale under the name "IFIT" on e-commerce portals such as www.amazon.in. The channel through which the defendants were offering their devices and software are also identical to those of the plaintiffs. On examining the relevant factors in the case, the Court found that the defendants have adopted the plaintiff's mark with the intention of misleading the public so that public believe that there is a connection between the plaintiff and the defendants. Further, the court also considered the territorial jurisdiction aspect of the case considering that both the defendants are the residents of United Arab Emirates and held that though the defendants are not residing in Delhi, they are offering their fitness apps and band through App stores, Google Play Store and E-Commerce portals like restrain them from using their mark "IFIT". The plaintiff has been using the aforesaid mark for their fitness devices such as wearable and software applications. The aforesaid mark of the plaintiff is a coined mark by the plaintiff and has been continuously used by them since the year 1999. The plaintiff is one of the first players in the world to enter into the wearable fitness devices and fitness software space and is considered one of the leaders in the market. The plaintiff's app "IFIT" is also available on App Store and Google Play Store. In the year 2015, it came to the knowledge of the plaintiff that the defendants were also offering fitness related application under the name "IFIT" in App Store and Google Play Store and also offering their fitness brands for sale under the name "IFIT" on e-commerce portals such as www.amazon.in. The channel through which the defendants were offering their devices and software are also identical to those of the plaintiffs. On examining the relevant factors in the case, the Court found that the defendants have adopted the plaintiff's mark with the intention of misleading the public so that public believe that there is a connection between the plaintiff and the defendants. Further, the court also considered the territorial jurisdiction aspect of the case considering that both the defendants are the residents of United Arab Emirates and held that though the defendants are not residing in Delhi, they are offering their fitness apps and band through App stores, Google Play Store and E-Commerce portals like www.amazon.in which can be accessed and operated from all over the world including Delhi. In view thereof, the Court held that the defendants are carrying on business or working for gain in Delhi and the Delhi High Court has territorial jurisdiction to try and decide the present suit. The Court also held that the plaintiff enjoys trans-border reputation with respect to the trademark "IFIT" which is a registered in various countries in the world.
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