The main legal point established is the protection of inherently distinctive trademarks and the likelihood of confusion as a basis for granting injunctive relief.

JUDGMENT

Sanjeev Narula, J. (Oral)

I.A. 18241/2022 (for grant of interim injunction)

Trademark tussle: Artize v. Artis - who owns the artistic touch?

1. This suit relates 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"] are two well- established brands in the business of sanitary ware and bathroom fitting products. They are at loggerheads over the words "ARTIZE" used by Jaquar, and "ARTIS" used by Villeroy, both derivatives of the word "ART". Jaquar asserts 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 can 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 does not amount to infringement or passing off Jaquar's trademark.

THE CASE SET UP BY JAQUAR

2. Mr. Kapil Wadhwa, counsel for Jaquar, presents the following arguments:

2.1. Jaquar is a market leader in the manufacturing and sale of diversified bathing solutions such as showers, faucets, bath tubs, spas, steam cabins, water heaters etc. It caters to various segments of the industry and customers under two ranges - "ESSCO" for the value products and "ARTIZE" for the luxury products. The trademark "ARTIZE" has garnered substantial reputation and goodwill on account of continuous and long use. Jaquar has spent considerably towards advertisement and promotion of their brand, including "ARTIZE". Thus, by virtue of extensive use for over last fourteen years, the trademark "ARTIZE" has come to be associated solely and exclusively with Jaquar.

2.2. Products under "ARTIZE" mark are sold extensively across the country, in over three hundred showrooms and the mark has gained popularity in India. Jaquar has also obtained trademark registrations for formative versions of the "ARTIZE" mark in classes 11 and 35, particulars whereof are as follows:

2.3. In November, 2021, Jaquar became aware of Villeroy's launch of identical product range under the impugned mark "ARTIS" through an article on the website of Architectural Digest (India). Parties are market competitors and Villeroy is well-conversant with Jaquar's "ARTIZE" products that are sold side-by-side at multiple outlets.

2.4. Upon knowledge of the infringing activities, Plaintiff issued a legal notice dated 26th November, 2021 to Defendant No. 2 [Indian subsidiary of Villeroy & Boch AG] calling upon them to cease and desist operations under the "ARTIS" mark, however, no response was received thereto. A follow-up legal notice was then issued on 15th June, 2022, to which, Villeroy replied that the two contesting marks are not similar and that the use of the brand name alongwith the impugned mark is a sufficient distinguishing factor, which avoids public confusion. This claim is completely misconceived as "ARTIZE" and "ARTIS" are virtually identical and deceptively similar.

2.5. "ARTIZE is an essential feature of Jaquar's trademark registrations and subsequent adoption of a deceptively similar mark by Villeroy for identical goods amounts to infringement of Jaquar's well-known "ARTIZE" mark under Section 29(1) of t