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Synopsis

The Delhi High Court in a recent case of trademark infringement held that if a mark is used in a way that identifies the source of goods, then it is being used as a trademark irrespective of whether it is a sub-brand or an individual brand.

"Therefore, in the present case, even if the defendants consider 'ARTIS' to be a sub-brand, it does not necessarily mean that the mark is not being used as a trademark", held the court in a suit between Jaquar Company Pvt Ltd and Villeroy Boch AG & another.

Justice Sanjeev Narula, while allowing the interim application in favour of the plaintiff, observed that the trademark “ARTIZE” as used by the plaintiff, is a distinct word that does not find mention in any language and has no meaning as such.

"Consumers can differentiate Jaquar’s goods from others based upon the “ARTIZE” mark, making it almost like a Trademark. This fact reinforces the inherent distinctiveness and claim of plaintiff to exclusive use of the mark," said the court. 

“Once Villeroy (the defendant herein) has opted to gain trademark protection for 'ARTIS' for identical goods in the European Union, they have acknowledged the distinctiveness of the mark, which undermines their argument that the mark is purely descriptive. In view of the afore-discussed, the argument that Jaquar cannot claim monopoly over 'ARTIZE', is flawed and cannot be accepted,” court observed.

Following were the issues dealt by the court in the application for interim injunction sought by the plaintiff:

1. Is the Trademark “ARTIS” deceptively similar to and infringing the “ARTIZE” mark? – Answered in Affirmative
2. Whether the word “ARTIZE” falls into “description of goods”, not making a case of infringement against Villeroy for the use of word “ARTIS” as such? – Answered in Negative
3. Whether the plaintiff is entitled to injunctive relief against the use of word “ARTIS”? – Answered in Affirmative

“The distinctiveness of the word 'ARTIZE' has been established through extensive use and promotion, making it an important aspect of Jaquar’s brand identity. This distinctiveness extends beyond the specific device marks containing the word 'ARTIZE' and encompasses the word itself as a standalone trademark. The fact that Jaquar has obtained registration for the phrase 'ARTIZE - BORN from art' as a standalone wordmark strengthens their proprietary rights over the term “ARTIZE”. This registration provides additional evidence that the term 'ARTIZE' has acquired distinctiveness and is capable of being protected as a trademark,” further added the court.

Brief Background:

The present suit related to the dispute between two established brands in the field of sanitary and bathroom fitting products, 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 words “ARTIZE” and “ARTIS”, respectively.

While it was contended by the plaintiff-Jaquar that they coined and adopted the fanciful word “ARTIZE” in the year 2008 and have been in continuous use of the same, ever since the defendants argued that the word “ARTIS” is a Latin term which means art and thus “ARTIZE” is nothing but a derivative of the same and is purely descriptive, upon which no monopoly or exclusivity can be claimed.

The defendants also argued that “ARTIS” is only a sub-brand in conjunction with their well-known brand Villeroy & Boch, and therefore does not amount to infringement or remedy of passing off. Other grounds included, no registration of the mark “ARTIZE” as a standalone mark by the plaintiff, the vast difference in prices of the two brands thereby reducing the likelihood of confusion and the case of plaintiff being hit by estoppel, laches and acquiescence.

Case Title: Jaquar Company Pvt Ltd. v. Villeroy Boch AG | CS (COMM) 777/2022