Delhi High Court Restrains Villeroy & Boch From Using ‘Artis’ Mark In Trademark Infringement Suit By Jaquar

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’.

Justice Sanjeev Narula observed that not granting interim injunction would gravely prejudice Jaquar and general public, who could be misled into purchasing the products assuming there is an association between the two companies, where none exists.

“The fact that the Defendants are using “ARTIS” only with the house brand and plan to continue doing so in the future, as emphasized by Mr. Datt, does not eliminate the possibility of infringement under Section 29(1) of the Trademarks Act and dilution of Jaquar’s “ARTIZE” mark, as discussed above,” the court said.

Observing that permitting Villeroy to continue using ‘Artis’ mark would cause confusion in the market and dilute the distinctiveness of Jaquar’s mark ‘Artize’, the court said that the balance of convenience was in favour of granting an injunction to Jaquar.

“In the Court’s opinion, balance of convenience lies in favour of Jaquar, who has been openly and uninterruptedly been using “ARTIZE” since 2008 i.e., for about fifteen years. Compared to this, “ARTIS” entered the market much later in 2015, which was objected to by Jaquar, immediately upon knowledge. Thus, the delay in bringing the present suit by Jaquar cannot be a ground to allow Villeroy to continue infringing Jaquar’s statutory rights,” the court said.

It was Jaquar’s case that it coined and adopted the trademark “Artize” in 2008 and have been, continuously and uninterruptedly, using the same for its luxury segment of sanitary ware.

On the other hand, Villeroy contented that its mark “Artis” is a latin term which means art, and thus, “Artize” is nothing but a derivative of “Artis” and is purely descriptive in which no monopoly can be claimed.

Passing the interim injunction order, Justice Narula said that Jaquar has been utlising “Artize” mark in relation to their products since 2008 and thus, is its prior user. The court noted that even the pronunciation of the two words “Artize” and “Artis” is almost alike.

“Such confusion is likely to continue even if the “ARTIS” is used with their house brand as the customers are likely to focus on “ARTIS” range of product and confuse it with Jaquar’s “ARTIZE”. The prominence of “VILLEROY & BOCH” on the packaging instead of “ARTIS” would not be sufficient to eliminate the likelihood of confusion as the same could be perceived as a deliberate marketing strategy/ collaboration between the two market giants – Villeroy and Jaquar, when none exists,” the court said.

Furthermore, the court also observed that even if Jaquar was aware of Villeroy’s use of the mark in question, it will not negate its claim to exclusive use of “Artis” mark in India. Observing that trademark owners are not required to take legal action against every infringer or potential infringer, Justice Narula said:

“Jaquar may not have taken legal action against Villeroy’s earlier use of the mark, due to various reasons, such as the presence being insignificant or not causing any harm at the time. However, this does not imply that Jaquar has waived their rights to exclusive use of the mark in the future. Therefore, Jaquar’s earlier inaction is not necessarily a valid defence for Villeroy’s use of the mark, and Jaquar’s claim to exclusive use of the “ARTIS” mark in India remains valid.”

Title: JAQUAR COMPANY PVT LTD v. VILLEROY BOCH AG & ANR.

Citation: 2023 LiveLaw (Del) 392

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