V-Guard and Crompton battle out over ‘Pebble’
An engaging tussle between two well-known entities operating in the electrical consumer goods industry over the word ‘Pebble’ being used as a sub-brand has reached the Delhi High Court. V-Guard Industries Ltd (V-Guard) filed the suit alleging trademark infringement, passing off, etc., against Crompton Greaves Consumer Electricals Limited (Crompton), seeking an injunction from using the mark ‘Pebble’ in relation to electric irons. The Court is considering V-Guard’s injunction application.
V-Guard in the suit states:
- They started selling electric stabilizers in the year 1977 and expanded into a variety of other consumer electrical and electronic apparatus and instruments, pumps, fans, batteries, UPS, inverters, solar water heaters, industrial motors, etc. under its house and well-known trademark ‘V-GUARD’ as well as its other well-known brands like PEBBLE, VICTO, INSIGNIA, etc.
- They are the registered proprietor of the trademark/label in Class 11 since March 2013, for goods being water heaters, electric water heaters, heating coils, electric water geysers, and the word ‘Pebble’ is the essential and prominent part of their trademark/label. Their application for the word mark ‘Pebble’ in class 7 is pending before the Trademark Registry.
- The trademark ‘Pebble’ has acquired goodwill and reputation and is exclusively associated with V-Guard on account of the extensive use, quality, and efficacy of its products.
- They have exclusive right to use the trademark, and it ought to be protected against imitation, deception, and unfair competition by competitors in the trade.
- In January, 2021, they came across Crompton’s ‘electric iron’, sold on its website. The product was also available on online shopping websites, Amazon, Flipkart, etc.
- Crompton’s mark is visually, structurally, and phonetically identical to V-Guard’s prior adopted, extensively used and registered mark Pebble. Thus, the use of the Pebble mark amounts to infringement and passing off.
- In response to the cease-and-desist letter, Crompton contended that the products are different as V-Guard was dealing in water heaters, whereas, Crompton was using the mark in relation to electric irons. Further, the use of the house mark Crompton will avoid any confusion with regard to the origin of goods.
Crompton counters the injunction application on the following:
- is registered in relation to electric irons since July 2021, claiming use since October, 2020.
- V-Guard cannot assert statutory rights over the word ‘Pebble’ on the basis of its rights in the label mark and allege infringement for the use of the mark ‘Crompton Pebble’ in relation to ‘electric irons’.
- They have prefixed the word ‘Crompton’ with the word ‘Pebble’, and it acts as a source identifier of its products. Crompton is the prominent part of the mark, and the rival goods are dissimilar, i.e., water heaters and electric irons.
- The registration relied on by Crompton for ‘electric irons’ has been suspended and under opposition by V-Guard. Thus, at this stage, Crompton does not have a registration for the ‘Pebble’ mark.
- The argument that V-Guard’s mark ‘Pebble’ is not similar to Crompton’s ‘Pebble’ ought to fail. It has been held that the test for infringement of a label/word mark is a test of prominent word of the mark, and thus, adoption of a prominent word in the label/device mark in a given case amounts to infringement. In the instant case, the word ‘Pebble’ is an essential and the dominant part of V-Guard’s registered label mark. Thus, Crompton cannot be permitted to argue that V-Guard cannot assert a right to exclusive use of the word ‘Pebble’ based on its registration in the label/device.
- The contention that the word Crompton is a source identifier of its product and thus, use of the impugned mark ‘Pebble’ will not create any confusion in the minds of the consumers cannot be accepted. It is a settled law that a trademark, in order to be a source indicator, must either be distinctive or where the word mark is descriptive; it should have acquired a secondary meaning. In the instant case, there are no pleadings showing extensive use for electric irons sold under the mark ‘Crompton Pebble’, and it has to be noted that the user is claimed only from the year 2020.
- Crompton is using the mark ‘Pebble’, which is phonetically, visually and structurally identical to the word ‘Pebble’, which is an essential and dominant part of V-Guard’s registered mark/label. The legislative intent is to afford protection to a mark with a reputation without the registered proprietor having to demonstrate the likelihood of confusion from using the similar mark in relation to dissimilar goods and services. In the instant case, documents on record show that V-Guard has been selling water heaters under the trademark since the year 2013 and built a strong reputation.
- Considering the facts of the present case, Crompton has used the mark ‘Pebble’ without ‘due cause’ and has no tenable explanation for its adoption. Pebble is not descriptive of electric irons and is an arbitrary word used by V-Guard for water heaters, entitling it to enhanced protection.
- The law on passing off does not envision that the goods in question should be similar. A customer may not know about all the products manufactured and sold by V-Guard, and the use of the word ‘Pebble’ would be sufficient to cause confusion resulting in the goods of Crompton being passed off as that of the former.
In view of the above findings, Court held that V-Guard has made out a prima facie case of infringement and passing off. The balance of convenience is also in their favor. Thus, the Court restrained Crompton from using the impugned mark `in relation to electric irons or any other mark deceptively similar to V-Guard’s mark ‘Pebble’ till disposal of the suit.