The Delhi High Court recently restrained Crompton Greaves Consumer Electricals Limited from infringing the trademark "PEBBLE" on a suit filed by V Guard Industries Ltd. (V Guard).
V Guard manufactures and sells consumer electronics, electronic apparatus and instruments, parts and fittings etc. since 1977 across India, Nepal, Sri Lanka and UAE. V Guard owns the trademark/label "PEBBLE" in Class 11 for electric water heaters, claiming a prior use since 2013. In 2021, V guard applied for the mark "PEBBLE" in Class 7 for electric irons and ironing machines, however the same was objected by the Trade Marks Registry.
Crompton Greaves Consumer Electricals Ltd. (Crompton) also manufactures and sells electronic appliances under the mark “CROMPTON GREAVES”. Crompton registered the mark “CROMPTON PEBBLE” in Class 8 in respect of electric irons; however the impugned registration is suspended for non-compliance of limitation period by the Trade Marks Registry.
V Guard was aggrieved when it discovered that Crompton was selling electric irons under the impugned mark “CROMPTON PEBBLE” infringed upon its mark with the intention to take advantage of its goodwill and repute. V Guard sent a legal notice to Crompton asking them to discontinue using the impugned mark. However, Crompton replied stating that there was no similarity of whatsoever kind between the two marks and hence there was no possibility of any confusion amongst customers.
Source – Judgement
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V Guard thereafter approached the Delhi High Court claiming trademark infringement and passing off. V Guard argued that Crompton’s mark was phonetically, visually, structurally as well as deceptively similar in respect of competing goods which were sold through similar trade channels. V Guard further contended that it had been using the mark since 2013, as opposed to Crompton which was using the impugned mark since 2020. V Guard submitted that not only Crompton was selling its products on their website,
www.crompton.co.in and e-commerce platforms such as Amazon, Flipkart but the products reflected only ‘PEBBLE’ instead of the impugned mark “CROMPTON PEBBLE”. In support of the foregoing, V Guard placed a few screenshots of the products being sold on the third party websites.
Against this Crompton countered stating that, it was using the impugned mark with the term "CROMPTON" as a source identifier in respect of dissimilar goods. Crompton further stated that the rival marks were completely different, while viewed in entirety, and V Guard, not being a registered proprietor of a mark “PEBBLE” with respect to specifically ‘electric irons’, could not sue for infringement nor claim any exclusive right thereto. After considering the submissions, averments made and evidence placed on record by both the parties, the Court held that the term "PEBBLE" was an essential and the dominant part of V Guard’s registered label mark and Crompton’s stand regarding V Guard not being able to assert exclusivity over the word "PEBBLE" on the basis of pending registration in the label/device, could not be permitted.
The Court rejected Crompton’s contention that "CROMPTON" was being used as a source indicator, owing to absence of any pleadings regarding its extensive use and sales turnover in respect of electric irons being sold, and the fact that there exists no concept of ‘sub-branding’ in trademark law. However, the Court also rejected that the products sold were competing and similar but noted that V Guard was the prior user of the mark "PEBBLE" since 2013, as against that of Crompton in 2020. As a result, a case of trademark infringement and passing off was made out and restrained Crompton from manufacturing, selling, advertising or dealing in electronic goods bearing the impugned mark.
