The Division Bench of the Delhi High Court recently refused to interfere with the order of the single judge, which had granted a temporary injunction restraining Crompton Greaves Consumer Electricals Ltd. (“Appellant”) from using V-Guard Industries Ltd.’s (“Respondent”) registered mark, PEBBLE, on and in relation to electric irons.
The Respondent had alleged that the Appellant’s use of the CROMPTON PEBBLE mark infringes its rights in the PEBBLE mark, which was obtained for marketing water heaters. Based on the arguments of the parties, the single judge had determined that the rival marks are phonetically and visually identical, and the addition of the word CROMPTON, cannot act as a source identifier and assist in differentiating the marks. While the single judge observed that the competing goods, i.e., water heater v. electric irons, are not similar in nature, he, nonetheless, held that since the Respondent’s PEBBLE mark has a ‘reputation’ in India, the use of the CROMPTON PEBBLE by the Appellant is infringing.
The issue for consideration by the Division Bench was whether the rival marks are similar, and whether the Respondent has an exclusive right to the PEBBLE word. The court observed that while comparing the rival marks, it must be seen whether the dominant part of the defendant’s mark is similar to the plaintiff’s registered mark when viewed as a whole. The court applied the anti-dissection rule and the essential feature doctrine, and observed that since the word PEBBLE is the dominant feature of the Appellant’s mark, the rival marks are visually and phonetically identical.
The court also observed that while dealing with use of identical/similar marks for dissimilar goods, it is not required for the proprietor of the registered mark to show that the mark is ‘well-known’, but to prima facie satisfy that the mark has a reputation and distinctive character in India. The court noted that the since the Respondent had relied upon the extensive sales turnover since the adoption of the PEBBLE mark since the year 2013, it is sufficient to show the existence of reputation of the mark in India. It also noted that the adoption of the word PEBBLE for use on geysers is distinctive and arbitrary. Based on the above, the court upheld the single judge’s prima facie finding with respect to infringement of the Respondent’s PEBBLE mark by the Appellant, however, set aside the finding vis-à-vis passing off as the Appellant was using the mark with its house mark, CROMPTON.
Crompton Greaves Consumer Electricals Ltd. v. V-Guard Industries Limited [FAO(OS)(COMM) 153/2022], Judgment dated March 6, 2024