Delhi High Court: C. Hari Shankar, J.*, restrained defendant, Ashirvad Pipes (P) Ltd., and all others acting on its behalf, pending disposal of the present suit, from using, in any manner whatsoever, the impugned 
, 
, and 
marks, the word mark ARTISTRY, and the mark TIARA, and also any other similar device or word mark or logo which was confusingly or deceptively similar to plaintiff’s, Jaquar and Co. (P) Ltd.’s registered trade marks, of the goods, in respect of which the marks were used by plaintiff or for any other allied or cognate goods or services.
Background
In the present case, both plaintiff and defendant manufactured and sold bathroom and sanitary fittings such as taps, washers and faucets. Plaintiff thus claimed that the use, by defendant, of the mark ‘ARTISTRY’, both as a word mark and in the form of the devices 
, 
, and 
, infringed plaintiff’s registered trade marks 
, 
, 
, 
, 
and ‘ARTIZE — BORN FROM ART’, and that defendant’s mark ‘TIARA’ infringed plaintiff’s registered trade marks ‘TIAARA’ and 
. The use of the impugned marks by defendant, resulted in defendant passing off its products as those of plaintiff. Plaintiff, therefore, seeks an injunction against defendant using the impugned marks, apart from delivery up, rendition of accounts, costs, and damages.
Analysis, Law, and Decision
The Court opined that where the competing marks were device marks but the prominent feature of the device marks in each case was a word, and the words themselves were phonetically, confusingly and deceptively similar to each other, the Court would return a finding of deceptive similarity even if the two device marks, viewed as complete marks, were totally dissimilar. The Court also opined that as the word ARTISTRY in one case and the word ARTIZE in the other constituted the main feature of both the marks, the comparison had to be between ARTISTRY as a word and ARTIZE as a word even if they were used as device marks.
The Court observed that ‘Artize’ not being a word of common English, might be pronounced either as “ar-ti-ze” or “ar-ti-z”, in the latter case without specifically intoning the final “-e” vowel sound. If pronounced “ar-ti-ze”, the phonetic difference between “artize” and “artistry” would be reduced to the “tr” consonant sound alone, which could hardly be regarded as sufficient to mitigate the possibility of phonetic confusion between the words, especially where the average consumer would probably never have heard, earlier, the word “artize”, before coming across it on plaintiff’s products. Thus, the Court opined that it appeared, prima facie, that the phonetic similarity between ARTIZE and ARTISTRY was sufficient to cause a consumer, who chances upon defendant’s ARTISTRY mark used on defendant’s package, after having seen plaintiff’s ARTIZE mark on plaintiff’s package some time earlier, to at least momentarily wonder whether he had not seen it earlier, or whether the two marks were not associated.
The Court on the other hand, opined that the marks TIAARA and TIARA were phonetically identical and there was no dissimilarity whatsoever between TIAARA and TIARA and both would be pronounced “Ti-aa-ra”. Thus, in the case of TIARA and TIAARA, there was phonetic identity also and not just phonetic similarity, between them.
The Court opined that all ingredients of Section 29(1) of the Trade Marks Act, 1999 (‘the Act’) were satisfied as plaintiff’s trade marks ARTIZE and TIAARA were registered; defendant was using the impugned ARTISTRY and TIARA in the course of trade; the mark ARTISTRY was deceptively similar to the mark ARTIZE; the mark TIARA was nearly identical to the mark TIAARA; and defendant was using the impugned ARTISTRY and TIARA marks as trade marks. The Court also opined that Section 29(2)(b) of the Act was also prima facie satisfied as, (a) the marks ARTISTRY and TIARA were similar to the ARTIZE and TIAARA marks of plaintiff, (b) both marks were used for and in connection with identical goods and (c) by reason of these circumstances, there was clear likelihood of confusion on the part of the public or of the public presuming an association between the marks.
The Court observed that the adoption of the mark ARTISTRY, in the foreknowledge of the existence of plaintiff’s ARTIZE range for similar goods, lends prima facie credence that there was a conscious attempt, on defendant’s part, to adopt marks which would be confusingly similar to the marks of plaintiff. The Court noted that defendant earlier was using the mark “Ashirvad by Aliaxis” and adopted “ARTISTRY” after plaintiff’s ARTIZE mark had gained repute, and thus opined that this act also indicated, prima facie, that there was a conscious attempt to ride on plaintiff’s reputation.
The Court agreed with plaintiff’s counsel that the rival marks were deceptively similar to each other, they were used in respect of similar goods which were available and advertised through similar outlets and cater to the same consumer segment. The Court opined that these three factors were conjointly referred to as the triple identity test and the co-existence of all the three in a particular case prima facie indicated the existence of infringement. Thus, the Court held that a prima facie case of infringement, within the meaning of Sections 29(2)(b) and 29(1) of the Act, existed.
The Court thus restrained defendant, and all others acting on its behalf, pending disposal of the present suit, from using, in any manner whatsoever, the impugned 
, 
, and 
marks, the word mark ARTISTRY, and the mark TIARA, and also any other similar device or word mark or logo which was confusingly or deceptively similar to plaintiff’s registered trade marks, in respect of the goods, in respect of which the marks were used by plaintiff or for any other allied or cognate goods or services.
The Court directed defendant to ensure that the impugned marks were removed from all physical and virtual locations within defendant’s control, and from all websites, e-commerce platforms and social media pages. Defendant should also communicate with e-commerce platforms or websites over or through which the goods bearing the impugned marks were sold, to remove the goods from said platforms and websites.
[Jaguar and Co. (P) Ltd. v. Ashirvad Pipers (P) Ltd., 2024 SCC OnLine Del 2281, decided on 1-4-2024]
*Judgment authored by: Justice C. Hari Shankar
Advocates who appeared in this case :
For the Plaintiff: Kapil Wadhwa, Surya Rajappan, Tejasvini Puri, Vasanthi Hariharan, Advocates
For the Defendant: CM Lall, Senior Advocate; Prashant Gupta, Karan Singh, Udit Tewari, Yashi Agarwal, Abhinav Bhalla, Advocates
