Decoding Trademark Deceptive Similarity
Facts: The plaintiff, Jaquar and Company Private Limited, a well-known manufacturer of bathroom and sanitary fittings, owns several registered trademarks, including ARTIZE, ARTIZE – Born from Art, and TIAARA. These marks are used for luxury sanitary ware and bath fittings since 2008 and 2016, respectively. The plaintiff claimed its ARTIZE brand had gained significant goodwill and had even attained the status of a “well-known trademark” under Section 2(1)(zg) of the Trade Marks Act, 1999. The plaintiff also uses a distinctive blue and gold trade dress across its packaging, which has become associated with its premium product line.
The defendant, Ashirvad Pipes Private Limited, is engaged in manufacturing pipes, sanitary ware, and bathroom fittings. The plaintiff discovered that the defendant had launched products under the marks ARTISTRY and TIARA, both as word marks and device marks. These marks, according to the plaintiff, were deceptively similar to its ARTIZE and TIAARA marks. The defendant’s advertisement in the November 2022 edition of Casa Vogue magazine revealed use of these impugned marks.
The plaintiff alleged that the defendant’s adoption was dishonest and intended to mislead consumers into associating its products with Jaquar’s high-end ARTIZE range. It further alleged that both the marks operated in the same market segment, through the same distribution channels, and targeted the same class of consumers. The plaintiff filed rectification petitions under Section 57 of the Trade Marks Act challenging the validity of the defendant’s registrations.
Procedural Background
Procedural Background: Jaquar filed a commercial suit under Section 134 of the Trade Marks Act, 1999 and the Commercial Courts Act, 2015, seeking a permanent injunction against Ashirvad Pipes from using the marks ARTISTRY and TIARA. Alongside the suit, Jaquar filed an interlocutory application (I.A. 18638/2023) under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 seeking an interim injunction.
Core Dispute: The key dispute was whether the defendant’s use of ARTISTRY and TIARA infringed Jaquar’s registered marks ARTIZE and TIAARA under Section 29 of the Trade Marks Act, 1999. Additionally, the Court examined whether an action for infringement could lie against another registered proprietor and whether Jaquar could claim exclusivity over the prefix “ART”. The issues also included whether the defendant’s packaging amounted to trade dress imitation, whether the defendant acted in bad faith, and whether the balance of convenience favored the grant of interim injunction.
Detailed Judicial Reasoning: On deceptive similarity, the Court invoked the classic Pianotist Test (Pianotist Co.’s Application, (1906) 23 RPC 774) emphasizing how an average consumer perceives the marks as a whole, considering their look, sound, and impression. The judge also relied on Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd. (2015) 221 DLT 359 to hold that “initial interest confusion” is sufficient to establish infringement. If a consumer, on first glance, wonders if the two marks are connected, that is enough to trigger protection.
Comparing ARTIZE and ARTISTRY, the Court found them visually and phonetically similar. The same reasoning applied to TIAARA and TIARA, which differed only by an additional letter “A” but had the same pronunciation and overall impression. Since both sets of marks were used for identical goods—bathroom and sanitary fittings—the likelihood of confusion was high.
The judge dismissed the defendant’s argument that the prefix “ART” was common to trade or descriptive of artistic products. It was held that while “ART” is a generic term, the mark ARTIZE as a whole had acquired distinctiveness through prolonged and exclusive use since 2008. The Court clarified that Jaquar was not seeking monopoly over the prefix “ART” but protection for its full marks ARTIZE and TIAARA vis-à-vis the defendant’s deceptively similar marks.
The defendant’s contention that TIARA was merely a product model number was rejected. The Court referred to invoices and advertisements to hold that the mark was indeed used as a source identifier—hence a trademark under Section 2(zb).
Regarding the argument of estoppel, the Court cited Raman Kwatra v. KEI Industries (2023) 296 DLT 529 (DB), explaining that estoppel applies only when a party contradicts a previous position taken before the Trademark Registry on the same mark. Since the defendant’s ARTISTRY and TIARA marks had never been cited against Jaquar’s applications, the estoppel argument failed.
On the principle of “bad faith adoption,” the Court referred to McCarthy on Trademarks and emphasized that when a party, with full knowledge of a senior mark, chooses a deceptively similar one, bad faith can be presumed. The defendant’s decision to use ARTISTRY despite knowing of ARTIZE and to use the same blue-gold trade dress indicated an intent to ride on Jaquar’s reputation.
The Court further analyzed Raj Kumar Prasad and S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683, concluding that the latter did not dilute the former’s ratio permitting injunctions even between registered proprietors. It emphasized that interim protection under Section 124(5) could be granted pending rectification.
Finally, the Court cited Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia (2004) 3 SCC 90 to hold that once infringement is established, injunction must ordinarily follow, as delay or balance of convenience cannot defeat statutory protection.
Decision: The court held that Jaquar had established a prima facie case of infringement and passing off. The Court granted an interim injunction restraining Ashirvad Pipes and its agents from using the marks ARTISTRY, TIARA, or any other deceptively similar marks, logos, or trade dress, pending disposal of the suit. The defendant was directed to remove all infringing materials from physical and online platforms, including e-commerce sites and social media.The Court concluded that copying, per se, is not illegal, but copying that causes consumer confusion or dilutes a registered mark is actionable. Since Jaquar’s rights under Section 28(1) would be continuously violated if injunction were denied, the balance of convenience and irreparable harm both favored the plaintiff. Thus, I.A. 18638/2023 was allowed, and the defendant was restrained from using ARTISTRY and TIARA until final adjudication.
Case Title: Jaquar and Company Private Limited Vs. Ashirvad Pipes Private Limited
Case Number: CS(COMM) 670/2023
Neutral Citation: 2024:DHC:2510
Court: High Court of Delhi at New Delhi
Date of Judgment: April 1, 2024
Coram: Hon’ble Mr. Justice C. Hari Shankar
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
