In the fiercely competitive industry, safeguarding one’s brand identity becomes paramount, as it can determine the fate of a business. Trademark infringement is a prevalent issue that often arises in this sector, and Indian courts utilize various factors to ascertain the intellectual property rights of the involved parties. In the recent case of Jaquar Company Pvt Ltd. vs Villeroy Boach Ag & Anr. CS (COMM) 777/2022 (2023) DHC/3226, the Delhi High Court was presented with a dispute between two established brands in the field of sanitary and bathroom fittings, namely, M/s Jaquar & Company Pvt. Ltd and M/s Villeroy & Boch AG, Villeroy & Boch Sales India Pvt. Ltd with respect to the usage of the marks “ARTIZE” and “ARTIS” respectively. The case also involved the question whether the Trademark “ARTIS” is deceptively similar to and infringing the “ARTIZE” mark.
Brief Background
The plaintiff, Jaquar Company Pvt. Ltd. is a leading manufacturer and seller of diverse bathing solutions, offering showers, faucets, bathtubs, etc. The company serves various segments and customers through two ranges: “ESSCO” for value products and “ARTIZE” for luxury products. The products under the “ARTIZE” mark are widely sold across India, available in over 300 showrooms. Additionally, Plaintiff holds trademark registrations for different versions of the “ARTIZE” mark in classes 11 and 35.
One of the contentions made by the plaintiff is that “ARTIZE” is a coined and arbitrary term, which was adopted in the year 2008 and has been in continuous use ever since. Further, the plaintiffs contended that Defendant has failed to prove any goodwill or reputation of the impugned mark “ARTIS”. Conversely, the defendants argued that the word “ARTIS” is a Latin term, signifying art, and they contended that “ARTIZE” is merely a derivative of this term and lacks distinctiveness. They argued that “ARTIZE” is purely descriptive and does not warrant any monopoly or exclusive rights.
The defendant, a 274-year-old company based in Mettlach, Germany, is a global leader in innovative and stylish sanitary ware. Their luxury brand, Villeroy, offers a range of bathroom products like “ARTIS”, “COLLARO”, “ANTHEUS”, “ARCHITECTURA” and more. Defendant asserts that Plaintiff obtained trademark registrations only for composite device marks, as their wordmark registration includes the additional phrase “Born from Art.” Defendant also argued that “ARTIS” is only a sub-brand used in conjunction with their house mark “VILLEROY & BOCH”, and therefore does not amount to infringement. They further asserted that no registration of the mark “ARTIZE” as a standalone wordmark is held by the plaintiff, the significant difference in pricing between the two brands reduces the likelihood of confusion and indicates distinct target customers and the case of Plaintiff is hit by estoppel, delay, laches and acquiescence.
Issues dealt by the Delhi High Court & its observations:
- Whether the Trademark “ARTIS” is deceptively similar to and infringing the “ARTIZE” mark? Is Defendant using “ARTIS” in trademark sense?
- Whether the term “ARTIZE” is descriptive of the applied goods, thereby disentitling Plaintiff from restraining use of “ARTIS” by Defendant? Where does the mark “ARTIZE” lie on the spectrum of distinctiveness?
- Whether Plaintiff is entitled to an injunctive relief against use of “ARTIS” by Defendant?
The court commented that Plaintiff is the registered proprietor of various marks, including the wordmark “ARTIZE – BORN from art.” These registrations grant plaintiff statutory rights under Section 17 of the Trademarks Act, with the word “ARTIZE” being the prominent feature entitled to protection. The marks have been used for a significant period and have gained a strong reputation and goodwill in the relevant market. The distinctiveness of the word “ARTIZE” has been established through extensive use and promotion, both within specific device marks and as a standalone trademark. Plaintiff’s registration of “ARTIZE – BORN from art” as a wordmark further strengthens their proprietary rights over the term. Considering these factors, it is reasonable to conclude that the dominant feature of Plaintiff’s marks is the word “ARTIZE,” and they have legitimate proprietary rights over it. Any use of a similar mark by another party could be seen as an infringement if it causes confusion among the public.
The Defendant argued that “ARTIZE” is a descriptive and generic term, lacking distinctiveness. However, Plaintiff contended that “ARTIZE” is a coined and arbitrary term, entitled to strong protection. The court found “ARTIZE” to be inherently distinctive and fanciful, capable of functioning as a trademark. Defendant’s claim that “ARTIZE” is laudatory or descriptive was unfounded. Defendant also argued that “ARTIS” is only used as a sub-brand by defendant and is not used on a standalone basis. However, this argument was not accepted by the Court, and it went on to make the following observations:
- Defendant’s application for trademark registration of “ARTIS” contradicts their claim, demonstrating that they use it as a trademark. The use of “ARTIS” alongside the Villeroy house mark does not negate its use as a source identifier. The term “ARTIS” is more suggestive than descriptive, requiring imagination to associate it with sanitary ware. The Trademarks Act does not differentiate between sub-brands and full brands; if a mark meets the criteria for being a trademark, it is protected. The high similarity between “ARTIS” and Plaintiff’s “ARTIZE” creates a likelihood of confusion, and Defendant’s use of “ARTIS” could deceive consumers about the origin of the goods. The prominence of “VILLEROY & BOCH” on the packaging does not eliminate confusion. Allowing the use of a deceptively similar mark, even alongside the house brand, would not guarantee stability and could lead to consumer confusion.
- Defendant’s argument of estoppel based on similar wordmarks previously registered does not hold. The dominant portion of a mark is important in assessing similarity. Plaintiff’s change in stance between the Trademarks Registry and the Court does not invalidate their suit.
- Defendant’s claim of delay and acquiescence by Plaintiff lacks merit. Mere participation in an exhibition does not imply permission for Defendant to use “ARTIS” in India. Plaintiff’s inaction in the past does not waive their rights to exclusive use of the mark. Defendant’s use of “ARTIS” likely infringes Plaintiff’s “ARTIZE” mark.
- The court also held that the existence of similar marks on the register does not prove dilution or common usage of “ARTIZE.” Defendant must provide convincing evidence of non-infringement during trial. The focus of the case is Defendant’s infringement, not the validity of third-party registrations.
- The court determined that Plaintiff adopted the mark “ARTIZE” in 2008 and has continuously traded under it with statutory protection. Plaintiff has generated revenue and goodwill from “ARTIZE” products, which is being diluted by Defendant’s “ARTIS”. The balance of convenience lies in favour of the Plaintiff, as they have been using “ARTIZE” openly and uninterruptedly for 15 years as compared to Defendant’s later entry.
- Lastly, the court observed that allowing the Defendant to continue infringing Plaintiff’s rights would cause irreparable harm, confusion, and dilution of Plaintiff ‘s mark. Therefore, an injunction in Plaintiff ‘s favor is justified.
Order of the Delhi High Court:
The court made a ruling based on the facts and legal issues and restrained the defendant from using the mark “ARTIS” or any other mark identical or deceptively similar to the Plaintiff’s “ARTIZE” trademarks.
