Delhi High Court Restrains Villeroy & Boch from Using ‘Artis’ Mark: Trademarks Act Makes No Exception for Sub-Brands

Delhi High Court Restrains Villeroy & Boch from Using ‘Artis’ Mark: Trademarks Act Makes No Exception for Sub-Brands

The Delhi High Court has temporarily restrained a German-based company Villeroy & Boch from manufacturing sanitaryware and other bathroom fitting products under ‘ARTIS mark after Jaquar filed a suit alleging infringement of its trademark ‘Artize’.

The single judge Justice Sanjeev Narula observed that the scheme of the Trademarks Act makes no exception for sub brands. If terms such as ARTIS satisfy the criteria for being considered as a ‘trademark’ under Section 2(1)(zb), they are to be afforded full protection under the Trade Marks Act 1999 (the Act).

The suit was related to the clash between sanitary ware giants over their brand names. The Plaintiff, M/s. Jaquar & Company Pvt. Ltd. (hereinafter, “Jaquar”) and the Defendants, Villeroy & Boch AG and Villeroy & Boch Sales India Pvt. Ltd. (hereinafter collectively, “Villeroy”) claimed to be two well-established brands in the business of sanitary ware and bathroom fitting products. They were at loggerheads over the words “ARTIZE” used by Jaquar, and “ARTIS” used by Villeroy, both derivatives of the word “ART”.

Jaquar asserted that they coined and adopted the fanciful trademark “ARTIZE” in 2008 and since then, have been continuously and uninterruptedly using the same for their luxury segment of sanitary ware.

Villeroy, on the other hand, contests Jaquar’s proprietary claims, contending that “ARTIS” is a Latin term which means art, and thus, “ARTIZE” is nothing but a derivative of “ARTIS” and is purely descriptive, whereon no monopoly could be claimed. Furthermore, they argue that “ARTIS” is a sub-brand/range/collection used in conjunction with their well-known brand name Villeroy & Boch and therefore, such use did not amount to infringement or passing off Jaquar’s trademark.

The Court framed the following issues:

I. Whether the trademark “artis” is deceptively similar to and infringing the “artize” mark

II. Whether the word “artize” is descriptive of the goods to which it is applied, thereby disentitling jaquar from restraining the use of “artis” by villeroy

III. Whether jaquar is entitled to an injunctive relief against use of “artis” by villeroy

With respect to the first issue, the Court observed that in this case, the word ‘ARTIZE’ emerged as the prominent feature and was entitled to protection. The Court noted that Jaquar’s marks have been in use for a considerable period of time and have gained substantial reputation and goodwill in the relevant market.

The Court observed that, “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 Court further noted the fact that Jaquar has obtained registration for the phrase “ARTIZE - BORN from art” as a standalone wordmark strengthened their proprietary rights over the term “ARTIZE.” This registration provided additional evidence that the term “ARTIZE” has acquired distinctiveness and is capable of being protected as a trademark, opined the bench.

Therefore, Court concluded that the dominant feature of Jaquar’s marks was the word “ARTIZE”, and that Jaquar had a legitimate claim to proprietary rights over the term. Any use of a similar mark by another party could be seen as an infringement of Jaquar’s rights, particularly if the use of the mark creates a likelihood of confusion with Jaquar’s mark in the minds of the public, stated the Court.

The Court further avowed that scheme of the Trademarks Act makes no exception for sub-brands. The Court emphasized that it is important to note that the test for determining whether a mark is being used in a trademark sense is not whether the user identifies the mark as a brand name or sub-brand, but rather the manner of use of the mark.

If the mark is used in a way that identifies the source of the goods, then it is being used in a trademark sense, regardless of whether it is a sub-brand or an individual brand. Therefore, even if Villeroy considers “ARTIS” to be a sub-brand, it does not necessarily mean that the mark is not being used in a trademark sense, the judge ruled.

With apropos to the second issue, the Court held that descriptive words and expressions occurring in the English language cannot be claimed to be coined words, even if they are partly-tweaked. However, a situation may arise where a word is invented through the joining of some nondescriptive English words from the dictionary.

Averting to the present case, the Court opined “ARTIS” is not a common or descriptive term for sanitary ware products, nor has it been shown to be a generic term in the industry. Therefore, “ARTIZE” is a unique and distinctive term that does not fall within the ambit of descriptive or generic words, the judge discerned.

In connection to the last issue, the Court highlighted that Jaquar adopted the mark “ARTIZE” in 2008 and has been continuously trading thereunder, with statutory protection.

In the Court’s opinion, balance of convenience lied in favor of Jaquar, who has been openly and uninterruptedly been using “ARTIZE” since 2008 i.e., for about fifteen years.

Passing the interim injunction order, the Court was of prima facie view that infringement and passing off were successfully established and therefore an injunction must follow.