The dispute in this case revolves around the use of the mark “PEBBLE” by both V Guard and Crompton. V Guard adopted the mark “PEBBLE” in 2013 for electric water heaters and water geysers falling under class 11. Meanwhile, Crompton applied for the trademark “CROMPTON PEBBLE” in 2020, specifically for electric irons in class 8.
V Guard initiated a suit before the Delhi High Court against Crompton for trademark infringement, resulting in an injunction dated 12/05/2022, restraining Crompton from using the mark “PEBBLE.” Crompton, aggrieved by the order, filed the present appeal, arguing that the injunction under Section 29(4) of the Trade Marks Act, 1999 was erroneous as the parameters of infringement and passing off were not satisfied.
Crompton contended that V Guard, as the proprietor of the label mark containing the word “PEBBLE,” cannot monopolize the common English term. They also argued that the mark “PEBBLE” lacks well-known status and that since the products are dissimilar, confusion among consumers is unlikely. Moreover, Crompton highlighted their application for the mark “CROMPTON PEBBLE,” incorporating the well-known mark “CROMPTON” as a source identifier.
Relying on the case of United Biotech Pvt. Ltd. v. Orchid Chemicals and Pharmaceuticals Ltd., the Court, emphasized the protectability of a word forming part of a device mark. It noted that the prominent element in Crompton’s mark is the word “PEBBLE,” visually, phonetically, and structurally identical to V Guard’s dominant part of the device mark. Regarding Section 29(4), the Court clarified that the trademark owner only has to demonstrate reputation in India and not that it is a well-known mark which is proven by V Guard through sales figures for the relevant product. Use of the mark “PEBBLE” was found to be distinct and arbitrary for electrical goods and Crompton provided no adequate justification for its adoption. The Court concluded that Crompton’s adoption was without due cause and to take unfair advantage of V Guard’s reputation and goodwill.
Regarding passing off, the Court held that since the goods are dissimilar and the mark “CROMPTON” is prefixed to the mark, the claim is unsustainable. Therefore, the appeal was dismissed.
Citation: Crompton Greaves Consumer Electricals Limited vs V Guard Industries Limited, High Court of Delhi, 06th March, 2024; (2024) SCC OnLine Del (1838).
Authored by Benita Alphonsa Basil, Trademark Team, BananaIP Counsels.
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