JAQUAR AND COMPANY PRIVATE LIMITED vs ASHIRVAD PIPES PRIVATE LIMITED

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 8 December 2023
Pronounced on: 1 April 2024

+ CS(COMM) 670/2023, I.A. 18638/2023
JAQUAR AND COMPANY PRIVATE LIMITED ….. Plaintiff
Through: Mr. Kapil Wadhwa, Ms. Surya Rajappan, Ms. Tejasvini Puri and Ms. Vasanthi Hariharan, Advs.

Versus

ASHIRVAD PIPES PRIVATE LIMITED ….. Defendant
Through: Mr. CM Lall, Sr. Adv. with Mr. Prashant Gupta, Mr. Karan Singh, Mr. Udit
Tewari, Ms. Yashi Agarwal and Mr. Abhinav Bhalla, Advs.

CORAM:
HON’BLE MR. JUSTICE C. HARI SHANKAR
J U D G M E N T
% 01.04.2024

FACILITATIVE INDEX
S.No.
Content
Para Nos.
1
The Issue
1 – 2
2
Facts and Rival Contentions
3
Initial submissions of Mr. Kapil Wadhwa for the plaintiff
4
Registrations held by the plaintiff and defendant
3.1 – 3.4
5
User of plaintiff’s marks
4.1 – 4.2
6
Reputation of plaintiff’s marks
5.1 – 5.3
7
Plaintiff’s trade dress
6
8
Defendant’s acts and alleged infringement and passing off
7.1 – 7.11
9
Submissions of Mr. Chander M. Lall in reply
10
Monopolization of “ART” prefix
8.1 – 8.3
11
No infringement action against registered mark – Section 28(3)
9.1 – 9.2
12
Re. passing off
10
13
No bad faith adoption
11
14
Applying the Pianotist test – surrounding circumstances and nature of consumers
12.1 – 12.4
15
ART is common to the trade – Section 17(2)(b)
13
16
Estoppel
14
17
No likelihood of confusion
15
18
Plea of infringement not maintainable – Section 124
16
19
No trade dress copying
17.1 – 17.2
20
Re. TIARA
18
21
Rejoinder by Mr. Wadhwa
22
Re. trade dress copying
19
23
Re. monopolization of “ART” and the common to the trade defence
20.1 – 20.8
24
Likelihood of confusion
21.1 – 21.2
25
Re. TIARA
22.1 – 22.2
23
Action for infringement lies against registered trade mark
23
24
Balance of convenience
24.1 – 24.2
25
Mr. Lall in surrejoinder
26 – 33
26
Analysis
27
Infringement
34.1 – 34.17
28
Relevance of validity of plaintiff’s trade mark registration – Section 29 vis-à-vis Section 28(1)
34.5.1 – 34.5.3
29
Can action for infringement lie against a registered trade mark?
34.10.1 – 34.10.18
30
The aspect of deceptive similarity
34.11.1 – 34.11.9
31
The “device mark-to-device mark” argument
34.11.3.1 – 34.11.3.4
32
Phonetic similarity
34.11.4.1 – 34.11.4.8
33
Re. the argument that TIARA is not used as a trade mark
34.11.8.1 – 34.11.8.5
34
Munday and Slazenger
34.15.1 – 34.15.7
35
Passing off
35.1 – 35.5
36
Challenge to validity of the plaintiff’s mark
36.1 – 36.4
37
The sequitur
37
38
The “ART monopolization” argument
38.1 – 38.6
39
Permissible copying
39.1 – 39.2
40
The plea of estoppel
40.1 – 40.3
40
The interlocutory troika
41.1 – 41.7
41
Conclusion
42 – 45

I.A. 18638/2023 (under Order XXXIX Rules 1 & 2 of the CPC)

1. The plaintiff, Jaquar & Co Pvt Ltd claims that the use, by the defendant, Ashirvad Pipes Pvt Ltd, of the mark ARTISTRY, both as a word mark as well as in the form of the devices , and , infringes the plaintiff’s registered trade marks , , , , and ‘ARTIZE – BORN FROM ART’, and that the defendant’s mark ‘TIARA’ infringes the plaintiff’s registered trade marks ‘TIAARA’ and . The use of the impugned marks by the defendant, it is further alleged, results in the defendant passing off its products as those of the plaintiff. The plaintiff, therefore, seeks, by the present suit, an injunction against the defendant using the impugned marks, apart from delivery up, rendition of accounts, costs and damages. An interim injunction, restraining the defendant from using the impugned marks pending disposal of the present suit, is sought in this application.

2. I have heard Mr. Kapil Wadhwa, learned Counsel for the plaintiff and Mr. Chander M. Lall, learned Senior Counsel for the defendant, at length on this application.

Facts and Rival Contentions

Initial submissions by Mr. Kapil Wadhwa for the plaintiff

3. Registrations held by the plaintiff and defendant

3.1 The plaintiff is the proprietor of the following trade marks, registered under Section 23(1) of the Trade Marks Act, 1999 :

S. No.
Trademark
Application No.
Class
Date of Application

1.

1736192
11
24.09.2008
2

2003072
11
03.08.2010
3

2165292
11
24.06.2011
4

4879936
35
25.02.2021
5

4879937
35
25.02.2021
6

4879938
11
25.02.2021
7

5250966
11
17.12.2021
8

3603569
11
01.08.2017

3.2 The defendant is also the proprietor of the following registered trade marks :
S. No.
Trademark
Date of Application
User detail
Classes

1.

05.01.2022
Proposed to be used
11,17

3.3 The defendant has also applied for registration of the following marks as trade marks under the Trade Marks Act, and the applications have cleared the stage of checking for compliance with requisite formalities.
S. No.
Trademark
Date of Application
User detail
Classes

1.

10.07.2023
Proposed to be used
11,17 & 24
2.

10.07.2023
Proposed to be used
11,17 & 24

3.4 The plaintiff and defendant admittedly use the rival marks for similar, if not identical, products. Both manufacture and sell bathroom and sanitary fittings such as taps, washers and faucets, under the rival marks.

4. User of the plaintiff’s marks

4.1 Mr. Wadhwa submits that his client is the prior user and adopter of the marks ARTIZE and TIAARA, having continuously been using them since June 2008 and 2016 respectively. ‘ARTIZE’, he submits, constitutes the most prominent and essential part of the marks , , , , and ‘ARTIZE – BORN FROM ART’, which the plaint calls “the ARTIZE formative marks”.

4.2 The mark TIAARA was coined and adopted in May 2015, and is a sub-brand of ARTIZE, as it refers to ARTIZE faucets of a particular minimalist design conceptualized by Michael Foley. By dint of continuous and uninterrupted use, the ARTIZE marks, and TIAARA, it is submitted, have become source identifiers of the plaintiff.

5. Reputation of the plaintiff’s marks

5.1 To vouchsafe the reputation of the plaintiff, sales figures of products sold under the ARTIZE and TIAARA marks have been provided in the plaint. During the years 2021-2022 and 2022-2023, sales of products bearing the ARTIZE mark earned returns of ? 150.4 crores and ? 129.51 crores respectively, and sales of products bearing the TIAARA mark earned returns of ? 3.55 crores and ? 4.9 crores respectively. The Jaquar group of the plaintiff is, submits Mr. Wadhwa, a market leader in the business of bath fittings, with 60% market share. It has seven manufacturing units in India and one in South Korea, with over 12000 employees across the globe. It is claimed that the plaintiff produces over 39 million bath fittings annually.

5.2 ARTIZE, JAQUAR and ESSCO are brands used for the luxury, premium and value segments of the plaintiff’s products. The plaint also refers to various encomiums received by the plaintiff for its ARTIZE and TIAARA branded products. In respect of its ARTIZE brand, the plaintiff also runs an exclusive website www.artize.com. The plaintiff has also successfully defended its ARTIZE mark against infringement by the mark ARTIS, against which an interlocutory order of injunction has been passed by this Court on 4 May 2023 in CS (Comm) 777/2022 (Jaquar Company Pvt Ltd v. Villeroy Boch AG).

5.3 It is also claimed that the brand ARTIZE has acquired the status of a well known trade mark within the meaning of Section 2(1)(zg) of the Trade Marks Act.

6. Plaintiff’s trade dress

Mr. Wadhwa further submits that the plaintiff has, in respect of its ARTIZE range of products, adopted a distinctive blue and gold design for its pack since inception in 2008. Apart from the ARTIZE marks and the mark TIAARA, the trade dress of the plaintiff, with the unique blue and gold colour combination is also stated to be indelibly associated, in the mind of the average consumer, with the plaintiff and is also, therefore, a source identifier.

7. Defendant’s acts and alleged infringement and passing off

7.1 Mr. Wadhwa submits that, in January 2023, the plaintiff came across an advertisement of the defendant in the November 2022 edition of the magazine, Casa Vogue, announcing the launch of the defendant’s sanitary ware products under the brands ARTISTRY and TIARA. Following this, the plaintiff came to learn that, on 5 January 2022, the defendant had obtained registration, under the Trade Marks Act, for the device mark , in Class 11 for “sanitary units, sanitary apparatus and installations, fittings for basins, bidets, sanitary waterflushing tanks and apparatus for toilets, fittings, apparatus for sanitary purposes, plumbing fittings, namely bibbs, cocks, traps, valves, water taps, valves, pipes being parts of sanitary installations” and in class 17 for “flexible pipes, not of metal; flexible HDPE, PVC, uPVC, CPVS pipes, connectors, valves, couplings and joints, fittings, not of metal, for flexible pipes, HDPE, PVC, uPVC, CPVC pipes & pipes fittings (non-metallic); SWR (soil, waste & rainwater) pipes & fittings”, on proposed to be used basis. In July 2023, the plaintiff came across applications filed by the defendant for registration of the and marks in classes 11, 17 and 24. The impugned ARTISTRY marks are used by the defendant for plastic pipes and fitting for water management and plumbing systems, bath room and kitchen sanitary-ware, including faucets, showers heads and washers, which, Mr. Wadhwa submits, are cognate and allied to the goods in respect of which the plaintiff uses its ARTIZE and TIAARA marks.

7.2 The defendant is also using the mark TIARA for similar goods. The use of the mark TIARA, it is submitted, reflects clear intent, on the part of the defendant, to copy and imitate the plaintiff’s TIAARA mark.

7.3 In these circumstances, the plaintiff has filed an application under Section 571 of the Trade Marks Act for rectification of the register of trade marks by removal, therefrom, of the mark ARTISTRY and cancellation of its registration. The plaintiff also addressed a legal notice to the defendant on 12 January 2023, calling upon the defendant to cease and desist from using the impugned mark. The defendant, however, responded on 2 February 2023, asserting that the impugned ARTISTRY and TIARA marks were not similar to the plaintiff’s ARTIZE and TIAARA marks and that, therefore, there was no chance of likelihood of confusion in the market.

7.4 The plaint alleges that the impugned ARTISTRY and TIARA marks are phonetically, visually and structurally similar to the plaintiff’s ARTIZE and TIAARA marks. A tabular representation of the features of similarity is thus provided in the plaint:
Similarity of
Marks
Plaintiff’s Registered Mark
Defendant’s Impugned Mark
Structural/Conceptual/
Visual

Phonetic

Similarity of
Marks
Plaintiff’s Registered Mark
Defendant’s Impugned Mark
Structural/Conceptual/
Visual

Phonetic

The mere addition, below the word ARTISTRY, in the defendant’s logo, of the words “by Ashirvad”, submits Mr. Wadhwa, is not sufficient to mitigate the possibility of confusion, in the mind of a consumer of average intelligence and imperfect recollection, between the ARTIZE mark of the plaintiff and the ARTISTRY mark of the defendant. At the very least, it is submitted that such an unwary consumer would be led to believe, from the similarities between the marks, that there is an association between the defendant and the plaintiff when, in fact, no such association exists. By using the impugned marks, therefore, the defendant is trying to create an illusion of an association between the defendant and the plaintiff and is, thereby, seeking to capitalize on the plaintiff’s goodwill and reputation. In such circumstances, it is submitted that likelihood of confusion in the minds of the public is required to be presumed under Section 29(2)(b)2 and 29(3)3 of the Trade Marks Act.

7.5 Inasmuch as the plaintiff is the prior adopter and user of the marks ARTIZE and TIAARA, vis-a-vis the adoption and use, by the defendant, of the impugned ARTISTRY and TIARA marks, it is submitted that a prima facie case of infringement within the meaning of Section 29 of the Trade Marks Act is made out.

7.6 It is further alleged that the defendant has sought to exacerbate the possibility of confusion by adopting a trade dress with an identical blue and gold colour combination which, to an unwary consumer, would be indistinguishable from that of the plaintiff. The products of the defendants are also packed in rectangular boxes which are similar to the boxes in which the plaintiff sells its ARTIZE products. This has been sought to be demonstrated thus, by way of a tabular comparison:

Plaintiff’s ‘ARTIZE’ trade dress
Defendant’s impugned ‘ARTISTRY’ trade dress

7.7 Inasmuch as the plaintiff’s and defendant’s products are identical or, at least, allied and cognate to each other, available through the same trade channel, advertised through the same media sources (as is apparent from the fact that both the marks were advertised in the Casa Vogue magazine) and cater to the same consumer segment, it is submitted that a prima facie case both of infringement and passing off is made out. The use, by the defendant, of the mark TIARA which is all but indistinguishable from the plaintiff’s mark TIAARA, and a trade dress which is identical to that of the plaintiff, reflects clear intent to capitalize on the plaintiff’s reputation and, thereby, to pass off the goods of the defendant as those of the plaintiff.

7.8 In such circumstances, it is also contended that the defendant cannot take the benefit of the fact that its mark is registered under Section 28(3)4 or Section 30(2)(e)5 of the Trade Marks act as the registration is itself illegal and fraudulent in nature.

7.9 In support of his submission, Mr. Wadhwa invokes the principle that, for likelihood of confusion to be found to exist, all that is required to be shown is that, viewed from an initial interest perspective, a consumer of average intelligence and imperfect recollection would, on coming across the defendant’s mark or the defendant’s product, be placed in a state of wonderment as to whether he has come across the said mark or product earlier.

7.10 In support of his submission, Mr. Wadhwa has cited
(i) para 19 of Automatic Electric Ltd. v. R.K.Dhawan6,
(ii) Make My Trip Pvt. Ltd. v. Make My Travel Pvt. Ltd7,
(iii) Paridhi Udyog v. Jagdev Raj Sarwan Ram Dhiman8,
(iv) para 25 of Hari Chand Shri Gopal v. Evergreen International9,
(v) paras 22 and 39 of Jaquar,
(vi) paras16.1 to 16.4 of Under Armour Inc. v. Aditya Birla Fashion & Retail Ltd10,
(vii) Dominos IP Holder LLC v. Dominick Pizza11,
(viii) para 9 of Corza International v. Future Bath Products Pvt. Ltd.12,
(ix) para 5 of Tata Oil Mills Company Ltd. v. Reward Soap Works13,
(x) paras, 8 10 and 13 of Laxmikant V. Patel v. Chetanbhai Shah14,
(xi) para 38 of M/s. Hindustan Pencils Private Limited v. M/s. India Stationary Products Co15,
(xii) para 22 of Avighna Coffee Pvt. Ltd. v. Cothas Coffee Co.16,
(xiii) para 37 of New Balance Athletics Inc. v. New Balance Immigration Private Limited17 and
(xiv) para 15 of Veda Seed Sciences Pvt. Ltd. v. Kohinoor Seed Fields India Pvt. Ltd.18,
apart from the following passages from McCarthy on Trademarks and Unfair Competition:
“§ 23:115 Defendant’s adoption of mark with full knowledge of plaintiff’s mark—intent to deceive inferred

Proof that defendant knew of plaintiff’s mark at the time defendant chose its mark has often been relied upon as evidence of bad faith and an intention to trade upon another’s good will. A wrongful intent appears easy to infer where defendant knew of plaintiff’s mark, had freedom to choose any mark, and “just happened” to choose a mark confusingly similar to plaintiff’s mark. In emphasizing the freedom of choice which was open to such a defendant, the courts often make statements like, “At that point he (defendant) had an infinity of names from which to choose.” Or, as the Ninth Circuit stated: “This thought that a newcomer has an ‘infinity’ of other names to choose from without infringing upon a senior appropriation runs through the decisions like a leitmotif.”
The classic statement of the freedom of choice open to a newcomer
who knows of the senior user’s mark is:

It is so easy for the honest businessman, who wishes to sell his goods upon their merits, to select from the entire material universe, which is before him, symbols, marks and coverings which by no possibility can cause confusion between his goods and those of competitors, that the courts look with suspicion upon one who, in dressing his goods for the market, approaches so near to his successful rival that the public may fail to distinguish between them.

Where we can perceive freedom of choice with full knowledge of a senior user’s mark, we can readily read into defendant’s choice of a confusingly similar mark the intent to get a free ride upon the reputation of a well-known mark. Whether this is called “bad faith,” or an “evil intent” or an intent to deceive, such a defendant will have to strive mightily to convince a court that it should not be enjoined.

The Ninth Circuit Court of Appeals regarded “the purpose of taking advantage of the aura of good will which surrounded” plaintiffs mark as the very opposite of “good faith” adoption by a junior user. The court inferred from the fact that the defendant knew of plaintiff’s mark (BLACK & WHITE Scotch whiskey) that defendant must have intended to take advantage of the good will and recognition which plaintiff had built up, even though defendant might have done so in a good faith belief that it was not illegal to use the mark on beer:

We cannot conclude but that [defendant] deliberately adopted the name knowing that BLACK & WHITE was the name and trade- mark of [plaintiff] and they must have done so with some purpose in mind. The only possible purpose could have been to capitalize upon the popularity of the name chosen. This possibility, they must have known, would extend to their product because the public would associate the name BLACK & WHITE with something old and reliable and meritorious in the way of an alcoholic beverage.

Such inferences of what defendant must have known are often found in the cases:

Consequently, when we find a newcomer in the field claiming to build for himself an identity depending upon subtle associations which in fact impinge upon those already established by the plain tiff, protestations of innocent intent overtax the credulity.

Such inferences of intent are based upon the familiar tort maxim that a person is deemed to intend the natural consequences of his or her actions.

Even if defendant disclaims knowledge of plaintiff’s mark as of the time of defendant’s initial adoption, such a lack of knowledge may be rejected as unlikely if plaintiff’s mark was well-known and strong. If a well-known and strong mark has been used in identical format by a junior user, it appears reasonable to require the junior user to carry the burden of explanation and persuasion as to his motive in adopting the mark. The junior user’s continued use of a mark, after the PTO has refused registration based upon the senior user’s own registration, is indicative of bad faith and a likelihood of confusion. Other courts will find no inference of bad faith in such an instance. However, it must be kept in mind that the junior user’s mere knowledge or awareness of the senior user’s mark is not the same as an intent to confuse customers. As the Second Circuit observed:

[The junior user’s] knowledge of [the senior user’s] trademark does not necessarily give rise to an inference of bad faith, “because adoption of a trademark with actual knowledge of another’s prior registration of a very similar mark may be consistent with good faith.” Since the relevant intent is the intent to gain by confusing customers or others, the mere fact that the accused is aware of the senior user’s mark does not per se prove that intent. Similarly, the act of copying is not necessarily proof of an intent to confuse. There may be several good faith reasons why the junior user decided to proceed even when aware of the senior user’s mark. The most common reason for doing so is a good faith belief that there is no conflict between the marks as used on the junior user’s goods or services. Or, for example, the legitimate parodist must know of the senior user’ mark in order to make fun of it, but intends comedy, not confusion. Or, in another example, the junior user’s use may be a legitimate descriptive “fair use.”

§23:116 — Intent to come close

In some cases, there is evidence that the accused infringer intentionally tried to edge close to the mark of the senior user. While there is nothing immoral or illegal about imitating an unprotectable market fad, coming close with the intention to confuse customers into thinking that there is some affiliation or connection is evidence that the junior user succeeded in achieving its goal. This is a fine line to draw. In a case where the attorney for the junior user admitted that the word mark and packaging of junior user’s product was designed to “be reminiscent of [senior user] Tylenol,” the court found that the junior user was an intentional infringer. And the Eleventh Circuit said that even an intent to “come as close as the law will allow” is an intent to derive benefit from the other party’s reputation and “is therefore probative on the likelihood of confusion issue.”

7.11 Further, on the principle of phonetic similarity, Mr. Wadhwa cites the Pianotist test, elucidated by Lord Parker in In re. Pianotist Application19:
“You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or rather you must refuse the registration in that case.”

He also relies, for phonetic similarity, on the following passages from McCarthy:
Ҥ 23:22 Phonetic similarity

Research References

Trade Regulation 334.1, 385, 347.

Marks may sound the same, to the ear, even though they may be readily distinguishable to the eye. For example, S.O. and ESSO may be visually distinguishable, but to the ear they are identical. Similarity of sound may be particularly important when the goods are of the type frequently purchased by verbal order. To decide the issue of phonetic similarity, the court may use a sophisticated phonetic analysis. For example in holding BONAMINE to be phonetically similar to DRAMAMINE the Seventh Circuit said:
“DRAMAMINE and BONAMINE contain the same number of syllables; they have the same stress pattern, with primary accent on the first syllable .and secondary accent on the third: and the last two syllables of DRAMAMINE and BONAMINE The initial sounds of DRAMAMINE and BONAMINE [“d” and “b”] are both what are known as “voiced plosives , and are acoustically similar; the consonants “m” and n are nasal sounds and are acoustically similar. The only dissimilar sound in the two trademarks is the “r” in DRAMAMINE. Slight differences in the sound of similar trademarks will not protect the infringer.

In an attempt to avoid phonetic similarity, defendant may argue that, Improperly pronounced,” its mark does not sound the same as plaintiffs mark. For example, in comparing the plaintiffs mark SUAVELLE with defendant’s SWAVEL, defendant argued that the correct pronunciation of its mark was “SWA-VEL,” with accent on the first syllable. The court rejected this distinction, saying, “It is absolutely impossible for defendant, to control, the pronunciation which the trade would give to the word. Similarly, the issue in pronunciation of a word of French derivation is not the “correct” French pronunciation, but the manner in which the ordinary United States purchaser would say the word. A court need not be con earned with the “correct” pronunciation of a word or a surname. The issue is what is the usual pronunciation used by the public Applying the rule that there is no “correct” pronunciation of a trademark, the Trademark Board, in an opposition brought by the owner of the famous mark LEGO for toys, rejected the applicant’s argument that its mark MEGO for toys would be pronounced as “mee-go,” rather than “meg-o,” which is closer to opposer’s “leg-o. In holding that the marks STEINWAY and STEINWEG for pianos were confusingly similar, the Second Circuit observed that, “Trademarks, like small children, are not only seen but heard. However, phonetic similarity is merely one element to consider in laying out a mosaic of pieces which may or may not add up to a likelihood of confusion as to overall impression.® Even if the marks are phonetically similar, for example, V-8 and VA, other elements of difference may lead to a final finding of no likely confusion.”

Submissions of Mr. Chander M. Lall in reply

8. Monopolization of “ART” prefix

8.1 Responding to the submissions of Mr. Wadhwa, Mr. Lall, learned Senior Counsel for the defendant, submits that the plaintiff is seeking, by the present suit, to monopolise the use of the word “ART” which is the essential feature of the plaintiff’s ARTIZE trade mark. He submits that the only common feature between the plaintiff’s ARTIZE and the defendant’s ARTISTRY marks is the initial “ART”. Sections 9(1)(b)20 and 30 of the Trade Marks Act, he submits, proscribes claiming of exclusivity over a part of the word which describes the characteristics of a product. This principle would apply despite the anti-dissection rule otherwise contained in Section 1721 of the Trade Marks Act.

8.2 Mr. Lall submits that ARTIZE and ARTISTRY are both common English words, of which ART is the essential part and the key to the defendant’s product range. The plaintiff cannot be permitted to monopolise use of the word “ART”, even as a part of the mark. In support of this submission, Mr. Lall cites the judgment of the Supreme Court in F. Hoffmman-La Roche & Co. Ltd. v. Geoffrey Manners & Co Pvt Ltd22 (which dealt with the marks PROTOVIT and DROPOVIT) and J R Kapoor v. Micronix India23 (which dealt with the marks MICRONIX and MICROTEL). In F. Hoffmman-La Roche and in J R Kapoor, it was held that the suffix “VIT” and the prefix “MICRO”, respectively, could not be sought to be monopolised, as they were descriptive of the products in respect of which they were used. The plaintiff, according to Mr. Lall, is seeking to do precisely this, by seeking to monopolize, through the Court, the use of the prefix “ART”.

8.3 Again, apropos the descriptive nature of the prefix “ART”, Mr. Lall submits that, in the case of sanitary bath fittings, especially those catering to the upper end segment of society, the beauty and appearance of the fittings are of considerable importance. It is to emphasize the artistic appearance of the product that the names “ARTIZE” and “ARTISTRY” have been used. This is clear, he submits, even from the fact that one of the marks asserted by the plaintiff is “ARTIZE – BORN FROM ART”. In fact, the only word mark registration held by the plaintiff is for the mark “ARTIZE– BORN FROM ART”. Etymologically, also, he submits, the word “Artize” means “born from art”.

9. No infringement action against registered mark – Section 28(3)

9.1 Mr. Lall further submits that, as both the plaintiff’s and defendant’s marks are registered, the plaintiff cannot maintain any action of infringement against the defendant in view of Section 28(3) of the Trade Marks Act. At the highest, therefore, the plaintiff’s claim can only be one of passing off.

9.2 None of the judgments cited by the plaintiff, points out Mr. Lall, deals with a situation in which the defendant is a registered proprietor of the impugned mark.

10. Re. passing off

In the case of passing off, the presence of added matter, which would distinguish the plaintiff’s product from the defendant, is relevant, as held by the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories24. The added matter, in the case of the defendant’s mark, especially in a manner in which it was used on the defendant’s product, Mr. Lall submits, is more than sufficient to distinguish the defendant’s product from the plaintiff’s and avoid any chance of the former being mistaken for the latter.

11. No bad faith adoption

Mr. Lall refutes the contention of Mr. Wadhwa that the awareness, by the defendant, of the existence of the plaintiff’s prior ARTIZE and TIAARA marks, indicated that the adoption, by the defendant, of the impugned ARTISTRY and TIARA marks, was vitiated by bad faith. He submits that mere knowledge or awareness of the existence of a prior adopter of a similar mark did not ipso facto lead to any presumption of bad faith on the part of the later adopter. Mr. Lall also submits, in this context, that there is no legal restriction to mere copying. He relies, in this connection, on the following passages from McCarthy:
Ҥ 23:122 Copying is not per se illegal

The First Principle: Freedom to Compete and Copy.

The first principle of unfair competition law is that everything that is not protected by an intellectual property right is free to copy. In fact, copying is an essential part of the whole fabric of an economic system of free competition. Thus, the act of “copying,” far from being intrinsically improper, is essential and should be lauded and encouraged, not condemned. There is absolutely nothing legally or morally reprehensible about exact copying of things in the public domain. For example, evidence that a junior user exactly copied unprotected descriptive, generic or functional public domain words or shapes does not prove any legal or moral wrongs. On the other hand, copying a feature which is the subject of intellectual property owned by another can be an illegal and tortious act. It is essential to keep this distinction in mind.

Edging Close to Senior User’s Mark. In some cases, there is evidence that the accused infringer intentionally tried to, if not copy outright, edge close to the mark or trade dress of the senior user. While there is nothing immoral or illegal about imitating an unprotectable market fad, coming close with the intention to confuse customers into thinking that there is some affiliation or connection is evidence that the junior user succeeded in achieving its goal.

Legitimate Copying is an Essential Part of a Competitive Economy. Some of the discussion in legal briefs and judicial opinions is phrased in terms of whether or not an accused imitator has consciously “copied” the senior user. “Copying” is sometimes denigrated as being inherently im- moral, unfair and illegal. The popular folklore is that a “copycat” is a pirate and that all commercial copying and imitation must be an illegal form of competition. That is not so. In fact, legitimate copying is a large part of what makes a free market economy work.

The Supreme Court has emphasized that free and legal copying is an essential element of free competition:

[I]n many instances there is no prohibition against copying goods and products. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying… [C]opying is not always discouraged or disfavored by the laws which preserve our competitive economy… Allowing competitors to copy will have salutary effects in many instances.

The successful competitor who is a second comer offers an identical or equivalent product at a lower price or with greater quality. It is important to emphasize that there is absolutely nothing legally or morally reprehensible about exact copying of things in the public domain.

The Sixth Circuit firmly rejected a plaintiffs argument that a competitor’s intentional copying of a functional product shape was evidence of an intent to confuse. Saying that plaintiff’s argument revealed a “fundamental misapprehension of the purposes of trademark law”, the court remarked that: “[Plaintiff’s) argument fails to appreciate that trade-mark law does not prohibit copying as such; that is the province of copyrights and patents…. No harm is done to this incentive structure, however, by the copying of a product design that does not confuse consumers as to the product’s source.”

“Copying” is Not Inherently Bad or Illegal. The motivation for the act of “copying” cannot blithely be assumed to be wrongful in any sense. There are several possible motives for copying, some legal and laudable, some illegal and predatory. For example, as the Ninth Circuit noted in a trade dress case, “competitors may intentionally copy product features for a variety of reasons. They may, for example, choose to copy wholly functional features they perceive as lacking any secondary meaning because of those features’ intrinsic economic benefits. Similarly, the Fourth Circuit noted that copying aspects of a competitor’s product in order to achieve the functional benefits of those aspects is a legitimate competitive act that does not trigger a presumption that confusion is the likely result. As the Supreme Court observed, copying in order to imitate an unpatented functional aspect of a competitor’s product is what free competition is all about: “Where an item in general circulation is unprotected by patent, ‘[r]eproduction of a functional attribute is legitimate competitive activity.’ Similarly, the high court has remarked that: “Allowing competitors to copy will have salutary effects in many instances.”

The Second Circuit, observing that there can be valid, pro-competitive reasons for imitating a competitor’s product shape or packaging, noted that “it cannot automatically be inferred” that the copier intends to confuse customers as to source. The court concluded that:

[I]n the absence of evidence, apart from proof of copying, that the defendant sought to confuse consumers, bad faith should not be inferred simply from the fact of copying. On the other hand, if there is additional evidence that supports the inference that the defendant sought to confuse consumers as to the source of the product, we think the inference of bad faith may fairly be drawn to support a likelihood of confusion determination.

If all that happens is that a junior user copies a competitor’s trade dress design because it sells better and consumers seem to like it, then this is not evidence of an intent to confuse. “The intent to compete by imitating the successful features of another’s product is vastly different from the intent to deceive purchasers as to the source of the product.”
As Judge Posner noted:

So far as appears- and it is all that the record supports- [defendant] noticed that [plaintiff’s] brooms [with a vertical colored band on the bristles) were selling briskly, inferred that consumers like brooms with contrasting color bands, and decided to climb on the bandwagon. We call that competition, not bad faith, provided there is no intention to confuse, and, so far as appears, there was none.

Subjective Belief of No Conflict. The junior user may have a good faith and reasonable belief that its use of the designation of another is on goods sufficiently distinct as to make confusion unlikely. “The fact that one believes he had a right to adopt a mark already in use because in his view no conflict exists since the products are separate and distinct cannot, by itself, stamp his conduct as bad faith, even after the Patent Office has refused the mark registration.”

12. Applying the Pianotist test – surrounding circumstances and nature of consumers

12.1 Also citing the Pianotist test, Mr. Lall submits that the Court is required, while comparing word marks, especially while assessing phonetic similarity, to take into account surrounding circumstances, as well as the type of consumers who would be dealing with the product.

12.2 Insofar as the surrounding circumstances are concerned, Mr. Lall reiterates his contention that the use of the word “ART” in items such as the plaintiff’s and the defendant’s refer to the artistic character of the product.

12.3 Apropos the type of consumers who would be dealing with the rival marks and the products on which they are used, Mr. Lall cites the judgment of the Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta25, specifically paras 7 to 10 thereof. In that case, submits Mr. Lall, the Supreme Court emphasized the necessity of taking into consideration the type of consumers who would be dealing with the rival marks, while examining the aspect of infringement or passing off. There, the Supreme Court found the chance of likelihood of confusion to be exacerbated by the fact that the consumers dealing with the rival marks (LAKSHMANDHARA and AMRITDHARA) were illiterate village folk who would easily confuse one for the other. As against this, the class of consumers who would be dealing with the plaintiff’s and the defendant’s products bearing the ARTIZE and ARTISRY marks would be those who are interested in purchasing luxury bath fittings and would, therefore, be discerning and capable of distinguishing one mark from the other.

12.4 On the aspect of phonetic similarity, and the applicability of the Pianotist test, Mr. Lall relies on the judgment of this Bench in Elyon Pharmaceutical Pvt. Ltd. v. Registrar of Trademarks26, in which this Bench held that the marks “ELMENTIN” and “ELEMENTAL” could not be regarded as confusingly similar to each other.

13. “ART” is common to the trade – Section 17(2)(b)

Mr. Lall has drawn my attention to several marks registered in respect of bathroom fittings and sanitary fittings which start with “ART”, such as ARTS, ARTEK, ARTIC and the like. He seeks to point out that he has also placed on record evidence of user of the said marks by their respective proprietors, so that his case is not merely one of a multitude of ART marks being available on the Register of Trade Marks, but of actual user of all such marks. Thus, he submits, the law permits peaceful co-existence of a wide variety of ART- formative marks for bathroom and sanitary fittings. No one mark can seek to dislodge the other from the market.

14. Estoppel

Mr. Lall further points out that, in its First Examination Report (FER) in response to the plaintiff’s application for registration of the mark ARTIZE, the Trade Marks Registry cited the pre-existing mark ARTIC as a rival mark which rendered the ARTIZE mark ineligible to registration in view of Section 11(1)(b)27 of the Trade Marks Act. having, in its response to the by the Registry of Trade Marks to the plaintiff’s application, adopted the stand that the two marks were dissimilar, the plaintiff could not seek to contend that the mark ARTISTRY was confusingly or deceptively similar to the mark ARTIZE.

15. No likelihood of confusion

There is, in fact, he submits, no likelihood of confusion between the two marks. In support of his submission, Mr. Lall places reliance on paras 50, 51, 55, 62 and 108 of the decision in Schering Corporation v. Alkem Laboratories Ltd.28.

16. Plea of infringement not maintainable – Section 124

He further relies on the judgment of the Supreme Court in Patel Field Marshal Agencies v. P.M. Diesels Ltd29, to contend that the plaintiff is proscribed from pleading infringement, as the rectification application filed by the plaintiff against the defendant’s ARTISTRY registration is pending as on the date of institution of the suit. In such circumstances, Section 124(1)30 ordains that it is only if a competent civil court returns a prima facie finding of tenability regarding the plea of invalidity raised by the plaintiff against the defendant’s registered trade mark that the plaintiff can plead infringement. Far from any such finding having returned by any competent civil court, Mr. Lall submits that the plaint does not contain any pleading, ground or material on the basis of which the registration, by the defendant, of the impugned ARTISTRY mark can be treated as invalid.

17. No trade dress copying

17.1 Mr. Lall also disputes Mr. Wadhwa’s contention that the defendant has adopted a trade dress, for its product, which is confusingly similar to that of the plaintiff. The documents filed with the written statement enclose the following photographs of the plaintiff’s and the defendant’s products, to discredit Mr. Wadhwa’s contention of confusing similarity in trade dress:

Defendant’s Product Plaintiff’s Product

17.2 Except for the fact that both packs used blue and gold as the main colours, Mr. Lall submits that there is no similarity in appearance between them. He submits that the colours blue and red are normally used to depict cold and hot respectively. Additionally, the colour blue is indicative of royalty and gold of the product belonging to the luxury segment. It is for these reasons that the plaintiff and the defendant have both used blue and gold as the primary colours for their respective packs. He draws my attention, in this context, to para 13 of the written statement filed by way of response to the plaint, which reads thus:
“13. The Plaintiff’s allegations qua passing off its trade dress/packaging by the Defendant is completely untenable because the Plaintiff’s assertion of use of its trade dress/packaging comprising of blue/indigo and gold colour combination since 2008 is false. The Plaintiff has not filed a single document to corroborate this claim. Consequently, no goodwill or reputation has accrued to the Plaintiff’s trade dress/packaging with the said colour combination and thus, the Plaintiff cannot claim exclusivity in the same. Even otherwise, presence of multiple distinctive features on the trade dresses/packaging of both parties including the rival house marks are sufficient to distinguish between the two rival trade dress/packaging. Thus, use of blue and gold colour combination by the Defendant does not take unfair advantage or is detrimental to the Plaintiff or its trade dress/packaging. In any event, the Defendant has honestly adopted the colour combination of blue and gold. In this connection, it is pertinent to mention that the Defendant’s sanitaryware products under the vertical ARTISTRY are categorised into three sub-brands, namely, Swarna (premium segment), Heritage (sub-premium segment) and Classik (value segment). Various range/collection of products are sold under these sub-brands of ARTISTRY such as ‘JANA’. Each sub-brand uses different colour combinations. However, colours blue and red are common across the portfolio. This is because in the plumbing and sanitaryware industry red and blue colours are used to denote hot and cold/ regular water, respectively.”

He also cites, to support his submission, para 25 of the decision in Britannia Industries Ltd. v. ITC Ltd.31.

18. Re. TIARA

With respect to impugned mark TIARA, Mr. Lall relies from the following depiction contained on the defendant’s catalogue, filed by the plaintiff along with the plaint:

Thus, submits Mr. Lall, TIARA is only a model number or a product category, and is not used by the defendant as a trade mark. On instructions, Mr. Lall submits that, given six months to dispose of existing stock, the defendant is willing to discontinue use of the word “TIARA” to represent its product category.

Rejoinder by Mr. Wadhwa

19. Re. trade dress copying

Mr. Wadhwa commences his submission by way of rejoinder to Mr. Lall’s contention by drawing attention to the following tabular depiction, emphasizing the similarities between the appearance of the boxes of the plaintiff’s and the defendant’s product, to underscore the allegation of trade dress copying:
PLAINTIFF’S PRODUCT
“ARTIZE”
DEFENDANT’S PRODUCT
“ARTISTRY”

Top View: Colour combination of Blue and Gold.

Top View: Colour combination of Blue and Gold.

Top View: “ARTIZE” in Gold against a Blue background on the right side of the packaging/trade dress.

Top View: “ARTISTRY” in Gold against a Blue background on the right side of the packaging/trade dress.

Top View: Placement of stylized “A” above “ARTIZE” in Gold against a Blue background on the right side of the packaging/trade dress.

Top View: Placement of stylized
“A” above “ARTISTRY” in Gold
against a Blue background on the right side of the packaging/trade dress.

Top View: Partially curved horizontal line in Gold against a Blue background.

Top View: Partially curved horizontal line in Gold against a Blue background.

Front View: “ARTIZE” with stylized “A” in Gold placed on the front.

Front View: “ARTISTRY” with stylized “A” in Gold placed on the front.

Back View: “ARTIZE” with stylized “A” in Gold placed on the back.

Back View: “ARTIZE” with stylized “A” in Gold placed on the back.

20. Re. monopolization of “ART” and the common to the trade defence

20.1 With respect to Mr. Lall’s contention that the plaintiff was seeking to monopolise the prefix ART, Mr. Wadhwa submits that infringement could not be assessed on the basis of a syllable-by-syllable comparison between the two marks. He cites, in this context,
(i) paras 38 and 40 of Hamdard National Foundation (India) v. Sadar Laboratories Pvt Ltd32,
(ii) Amrutanjan Ltd v. Amarchand Sobachand33, and
(iii) paras 24, 29 and 31 of the judgment of this Bench in Institut Europeen D. Administration Des Affaires v. Fullstack Education Private Limited34.

20.2 Mr. Wadhwa also disputes Mr. Lall’s contention that “ART”, when used as a prefix in the names of the plaintiff’s or defendant’s product, is descriptive. He submits that the word “ARTIZE” is clearly a fanciful adoption on the part of the plaintiff.

20.3 Apropos the judgments cited by Mr. Lall, Mr. Wadhwa draws my attention to para 9 of the decision in F. Hoffmman-La Roche in which the respondent had made a concession before the Court that it was willing to limit the use of the impugned mark DROPOVIT to medicinal and pharmaceutical preparations and substances principally containing vitamins. Thus, the judgment was rendered on concession.

20.4 J R Kapoor, he submits, was a case where the prefix MICRO was found to be descriptive of the products of the plaintiff and defendant, both of which were manufactured using micro-technology. Thus, J R Kapoor applied only where the common prefix was directly descriptive of the products and not in a case, such as the present, where the common prefix ART cannot be regarded as descriptive either of the plaintiff’s or the defendant’s products. He points out, from paras 13, 19 and 20 of the judgment of the Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd35 , that the Supreme Court had protected the mark GLUCOVITA from infringement by the mark GLUVITA.

20.5 Mr. Wadhwa further submits, relying on the defendant’s catalogue, that there is nothing artistic about the defendant’s taps which are plain and simple taps, with the most basic of designs. As against this, he refers to the photographs of his clients, to submit that the taps made by his client are artistic. The defendant cannot, therefore, be heard to contend that it uses ART as a prefix for its mark ARTISTRY to reflect the artistic nature of the sanitary fittings on which the mark is used.

20.6 Referring to McCarthy, Mr. Wadhwa submits that the prefix ART could not be regarded as publici juris but is, at the highest, suggestive.

20.7 Mr. Wadhwa also disputes Mr. Lall’s submission that “artize” is a well-known English word and, referring to the new Oxford dictionary, contends that, in fact the word “artize” finds no place therein.

20.8 Regarding Mr. Lall’s submission that there are several other user of marks starting with “ART” for bathroom and sanitary fittings, Mr. Wadhwa submits, relying on Pankaj Goel v. Dabur India Ltd36 and the judgment of this Bench in Under Armour that, third party use is relevant only where it is so substantial as to eclipse the plaintiff’s use of the asserted trade mark. Else, he submits that it is well-settled that a plaintiff is not expected to sue every infringer.

21 Likelihood of confusion

21.1 Mr. Wadhwa submits that infringement is required to be assessed on the basis of initial interest confusion. If the average consumer is placed in a state of confusion or wonderment at an initial glance at the defendant’s mark, a prima facie case of infringement is made out.

21.2 To emphasise the aspect of deceptive similarity or likelihood of confusion, Mr. Wadhwa has placed reliance on paras 19 and 31 of the judgment of the Division Bench of this Court in Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt Ltd37.

22. Re. TIARA

22.1 With respect to the use, by the defendant, of the impugned TIARA mark, Mr. Wadhwa submits that Section 29(1)38 of the Trade Marks Act covers the plaintiff. He submits, referring to the words “to render the use of the mark likely to be taken as being used as a trade mark” employed in the said sub-section, that mere impression of use of the impugned mark as a trade mark is sufficient to invoke Section 29(1).

22.2 Relying on invoices issued by the defendant for “Tiara Pillar Tap – Gold”, Mr. Wadhwa submits that the defendant is clearly using the mark TIARA as a product identifier and, therefore, as a trade mark.

23. Action for infringement lies against registered trade mark

Mr. Wadhwa further submits, relying on the judgment of the Division Bench of this Court in Corza International – which, in turn, relies on the earlier decision, also of a Division Bench, in Raj Kumar Prasad v. Abbott Healthcare (P) Ltd39 – that an injunction can also be sought against a registered trade mark, so long as the invalidity of the defendant’s registration is pleaded by the plaintiff. Inasmuch as the plaintiff had, even before instituting present suit, filed rectification proceedings under Section 57 of the Trade Marks Act, pleading invalidity of the impugned marks, he submits that the plaintiff is entitled to sue the defendant for infringement even by use of its registered trade mark. He further draws attention to para 61 of the plaint in which there is a specific contention that the registration of the defendant’s marks is invalid:
“61. That the Defendant cannot take the benefit of Section 28(3) and 30 of the Trade Marks Act, 1999 as the registration of the Impugned Mark is prima facie invalid as inter alia, the Impugned Mark is of such a nature as to deceive the public and cause confusion. That the Impugned Mark ought not to have been registered due to its similarity to the Plaintiffs prior adopted, used and registered trademarks and the identity of the goods. It is submitted that the Plaintiff has accordingly instituted rectification proceedings for the removal of the Defendant’s TM Application No. 5272892 for the Impugned Mark from the Trade Marks Register.”

24. Balance of convenience

24.1 On the aspect of balance of convenience, Mr. Wadhwa draws attention to para 13 of the reply filed by the defendant to the present application:
“13. The Plaintiff has claimed that it came across the Defendant’s use of the mark ARTISTRY for the first time in January 2023 through a promotional advertisement published in Casa Vogue India, November 2022 edition. Given that the Plaintiff’s own advertisement for the brand ARTIZE was also published in the same November 2022 Edition of Casa Vogue, India, it is inconceivable that the Plaintiff came to know about the Defendant’s advertisement two months later. The Plaintiff is deemed to have been aware of the existence of the Defendant’s products under the mark ARTISTRY at least since November 2022. Additionally, the Plaintiff, after having received the Defendant’s reply dated February 02, 2023 to its legal notice dated January 12, 2023 did not take any steps to convey to the Defendant that it had any objections to the Defendant’s use of the mark ARTISTRY. Be that as it may, apprehending that the Plaintiff may surreptitiously file a suit for infringement against the Defendant before this Hon’ble Court, the Defendant had filed two caveat petitions before this Hon’ble Court on February 10, 2023 and May 01, 2023. However, the Plaintiff, despite being aware of the Defendant’s substantial use of the mark ARTISTRY did not convey any objections to the Defendant regarding its use, let alone file a suit to restrain the Defendant from using its mark ARTISTRY. In fact, the Plaintiff did not even oppose the Defendant’s application for the mark dated January 05, 2022 under number 5272892 which was published in the Trade Mark’s Journal on February 07, 2022. The Plaintiff’s aforesaid conduct led the Defendant to believe that the Plaintiff’s concerns were duly addressed. Consequently, the Defendant did not file fresh renew or file fresh caveat petitions and continued to – (a) expand its business under the mark ARTISTRY, the sales whereof are around INR 130 Crores from inception which is equivalent to the Plaintiff’s sales of products under the mark ARTIZE in FY 2022-23; and (b) incur substantial expenses to the tune of around 30 crores since inception to promote and market its products under the mark ARTISTRY. It was only in September 2023, after almost one year from its knowledge of the Defendant’s use of the mark ARTISTRY that the Plaintiff filed the rectification/cancellation petition against the registration of the Defendant’s mark as well as the present suit. It is trite that if the Plaintiff has laid by and inspite of its rights, by its conduct, encouraged the Defendant to alter its condition by acting upon the faith of encouragement so held out, the Plaintiff loses its claim against the Defendant. In view of the foregoing, it is submitted that the Plaintiff, having given its affirmative consent to the Defendant to expand its business under the mark ARTISTRY, which is writ large from its conduct, cannot now, belatedly cry foul and initiate an action against the Defendant.”

24.2 As such, the adoption, by the defendant, of the impugned mark “ARTISTRY”, is of recent vintage. Prior thereto, the defendant was using the mark “Ashirvad by Aliaxis”. No irreparable loss would, therefore, ensue to the defendant if interim injunction as sought by the plaintiff is granted. On other hand, the continued use, by the defendant, of the impugned mark is resulting in dilution of the plaintiff’s brand especially as the products of the plaintiff and the defendant are sold from the same outlet whether physically or virtually.

25. Mr. Wadhwa, therefore, reiterates his prayer for grant of interim injunction restraining the defendant from using the impugned ARTISTRY and TIARA marks, pending disposal of the present suit.

Mr. Lall in surrejoinder

26. Mr. Lall was permitted to advance submissions in surrejoinder, at his request.

27. The judgments in F. Hoffmann-La Roche and J R Kapoor, submits Mr. Lall, would apply even if part of the plaintiff’s mark is suggestive. Referring to J R Kapoor, he submits that the prefix MICRO, in that case, was actually suggestive and not descriptive, as is ART in the present case. He has referred once again to para 6 of the said decision in this context. He submits, referring to the application filed by the plaintiff for registration of its device mark , that the prefix ART is clearly descriptive of the plaintiff’s product, as is manifest from the slogan “art that performs”.

28. Mr. Lall also cites, with respect to Mr. Wadhwa’s contention, that the prefix ART is, at best, suggestive and not descriptive in nature,
(i) paras 17, 18, 21 and 22 of the decision in Living Media India Ltd. v. Alpha Dealcom Pvt Ltd40 and
(ii) Soothe Healthcare Private Ltd v. Dabur India Ltd41.

29. He further cites the following passages from the judgment of the Second Circuit in Landscape Forms, Inc. v. Columbia Cascade Co.42:
“The Abercrombie (spectrum of distinctiveness] test, thus, permits courts to separate those cases in which similar marks are most likely to mislead consumers from those in which trademark protection would create a “linguistic monopoly” which would stifle competitors’ efforts to market similar goods to consumers.”

30. Mr. Lall further cites paras 3, 4, 13, 15 and 16 of Corn Products Refining Co. and para 23 of Shree Nath Heritage Liquor Pvt. Ltd. Applying the latter decision, Mr. Lall submits that the plaintiff’s mark ARTIZE and the defendant’s mark ARTISTRY are based on the common idea of the ART prefix. Otherwise, he submits, the facts in Shree Nath Heritage Liquor Pvt. Ltd. are completely different from those in the present case.

31. Mr. Lall reiterates that, having contended, in its reply to the FER raised by the Trade Mark Registry which set up the pre-existing registered trade mark ARTIC as a confusingly similar mark to the proposed mark ARTIZE, that the marks ARTIZE and ARTIC were not similar, the plaintiff cannot be heard to submit that the marks ARTIZE and ARTISTRY are similar. This, he submits, would amount to approbate and reprobate, which is not permissible, for which purpose he relies on para 40 of the judgment of the Division Bench of this Court in Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani43.

32. Insofar Mr. Wadhwa’s contention that, as the plaintiff has, prior to institution of suit, filed an application under Section 57, challenging the registration of the ARTISTRY mark in favour of the defendant, Mr. Lall submits that the only basis cited in the said challenge is priority of user of the plaintiff’s mark. He further submits that, even if the rectification petitions were filed prior to institution of the suit, an application under Section 124 of the Trade Marks Act is nonetheless required to be filed by the plaintiff, and the Court, seized of the suit, is required to return a prima facie finding that the challenge to the validity of the defendant’s registered trade mark is tenable, before the plaintiff could plead infringement by use of the said registered trade mark of the defendant. He draws my attention to paras 25, 29 and 30 of Patel Field Marshal. By filing a rectification application prior to institution of the suit, the plaintiff has effectively inhibited this Court from adjudicating on the validity of the defendant’s registered trade mark. The plaintiff’s case has, therefore, necessarily to be restricted to the plea of passing off. He cites, in this context, para 24 of the judgment of the Division Bench of this Court in Rhizome Distilleries P. Ltd. v. Pernod Ricard S.A. France44.

33. The decision in Hamdard, cited by Mr. Wadhwa, has, according to Mr. Lall, no application as, unlike the prefix ART, the suffix AFZA, in that case, has no reference to the character or quality of the goods in question. He refers, in this context, to paras 26, 38, 40 and 59 of the decision in Hamdard.

Analysis

34. Infringement

34.1 Before proceeding to the defences advanced by Mr. Lall, it would be appropriate to examine, in the first place, whether a case of infringement or passing off is made out.

34.2 Of the two, infringement is a statutory tort, whereas passing off is a common law tort.

34.3 Infringement is said to take place where the facts of the case attract one or more of the sub-sections of Section 29 of the Trade Marks Act. The sub-sections of Section 29 fall into distinct categories. Sections 29(1) to 29(4)45 apply where the infringer is not a registered proprietor of the infringing mark or a permitted user thereof. Section 29(5)46 applies in the case of use of a registered trade mark by another as part of the name his business concern dealing in goods or services in respect of which the mark is registered. Section 29(7)47 applies in the case of a use of a registered trade mark without authorisation for labelling or packing purpose, as a business paper or for advertising. Section 29(8)48 explains the principle of infringement by advertising of a registered trade mark. Sections 29(6)49 and 29(9)50 are more explanatory of the other sub-sections of Section 29. Section 29(6) explains the concept of use of a registered trade mark for the purposes of Section 29. Section 29(9) clarifies that where the registered trade mark is a word, or includes words, infringement could take place either by speaking of the words or by visual representation thereof.

34.4 Adverting to these individual sub-sections, the applicability of some of them may be ruled out. Sections 29(2)(a), 29(2)(c) and 29(3) apply where the rival marks are identical. Inasmuch as the rival marks in the present case are not identical, none of these provisions apply. Section 29(4) applies where defendant’s mark is used in relation to goods or services which are dissimilar from the goods or services in respect of which the plaintiff’s mark is used. Inasmuch as, in the present case, the rival marks are used for similar goods, Section 29(4) is also not applicable. Sections 29(5), 29(7), 29(8) and 29(9) are, on their plain terms, inapplicable.

34.5 Relevance of validity of plaintiff’s trade mark registration – Section 29 vis-à-vis Section 28(1)

34.5.1 Before proceeding to examine the applicability of the remaining provisions of Section 29, it is important to note that the validity of the registration of the allegedly infringed trade mark of the plaintiff is not a relevant consideration for the purposes of Section 29. Section 29 does not refer, anywhere, to the infringed mark having to be validly registered. It is only required to be registered. Whether the registration is valid or invalid, if the circumstances envisaged by the sub-sections of Section 29 are satisfied, infringement ipso facto has taken place. The court, while examining the aspect of infringement in the backdrop of Section 29 is not, therefore, concerned with the validity of the registration of the plaintiff’s trade mark.

34.5.2 Validity of the registration of the plaintiff’s trade mark is, however, a relevant consideration when it comes to obtaining relief against infringement, under Section 28(1). If infringement is found to have taken place, within the meaning of Section 29, then, unless the registration of the plaintiff’s trade mark is valid, the plaintiff is not entitled to obtain any relief against infringement. The entitlement to relief against infringement is, statutorily under Section 28(1), dependent on the registration being valid.

34.5.3 The reliefs which can be granted, where infringement is found to exist, are contained in Section 135(1) and (2)51 of the Trade Marks Act, and include injunction.

34.6 Adverting to the applicable provisions of Section 29, sub-section (1) envisages infringement as taking place where a mark which is identical with, or deceptively similar to, a registered trade mark, is used, in the course of trade, by a person who is neither the registered proprietor nor the permissive user of such registered trade mark, in relation to the goods or services in respect of which the trade mark is registered and in such a manner as to render the use of the mark likely to be taking as being used as a trade mark. The sub-section may, therefore, be broken up into the following ingredients:
(i) The plaintiff’s trade mark must be registered.
(ii) The defendant is neither the registered proprietor of the mark nor the permissive user thereof.
(iii) The mark used by the defendant is either identical to the plaintiff’s trade mark or is deceptively similar thereto.
(iv) The defendant uses the impugned mark in the course of trade.
(v) The impugned mark is used in relation to goods or services in respect of which the trade mark is registered in favour of the plaintiff.
(vi) The manner in which the defendant uses the impugned mark is such as to render the use likely to be taken as “use as a trade mark”.

34.7 The expression “use as a trade mark” is neither defined nor explained in the Trade Marks Act. The ambit of the expression has, therefore, to be understood from the definition of “trade mark” as contained in Section 2(1)(zb)(ii)52 of the Trade Marks Act.

34.8