V Guard Industries Limited (‘V Guard’) deals in pumps and motors, water heaters, and the like. It started using the trademark ‘PEBBLE’ (a device mark comprising the word ‘Pebble’ and an image) (bearing Registration No. 2541387 in Class 11) for heating installations and electric products in 2013 and also obtained registration for the said mark in the same year. Butterfly Gandhimathi Appliances Ltd. (“Butterfly”) also deals in electronic products under its brand 'BUTTERFLY’. In February 2021, V Guard was made aware that Butterfly is selling their product - a mixer grinder - under the mark 'PEBBLE' on Butterfly’s website: www.butterflyindia.com. V Guard claimed that Butterfly is infringing V Guard’s trademark rights by selling similar goods under their registered mark ‘PEBBLE’, and filed a trademark infringement suit at the Delhi High Court: V Guard Industries Limited v. Butterfly Gandhimathi Appliances Ltd. CS(COMM) 225/2021. V Guard sought an ex-parte interim injunction to restrain Butterfly from using the mark ‘PEBBLE’ or any other identical or deceptively similar mark for dealing in electronic/ electrical goods including kitchen appliances. In its Order dated May 13, 2021, the Court, granted an ex-parte interim injunction against Butterfly stating that V Guard had made out a prima facie case in its favour. The Court observed that a perusal of Butterfly’s website shows that it is selling a mixer grinder under the mark 'BUTTERFLY/PEBBLE PLUS'. And though Butterfly had registered the mark ‘BUTTERFLY’ (bearing Registration No. 765414 in Class 11) it had not filed any trademark application for the mark 'PEBBLE'. It is not uncommon amongst proprietors to register the parent brand name only, and use sub-brands or product names without checking their availability for use. However, cases such as this one, show that use of a competitor’s trademark as a part of one’s product/model name can make the user liable for trademark infringement even when it is used along with one’s own registered trademark. The suit will now proceed to trial.


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