Crompton Greaves Consumer Electricals Limited’s (Crompton) appeal has been dismissed, upholding the order that restrains Crompton from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in electric irons under the impugned “PEBBLE” trademark, due to V Guard Industries Limited’s (V Guard) application.
The dispute centres on the use of the mark “PEBBLE” for electrical products. V Guard had been selling water heaters under the label “PEBBLE” since 2013. V Guard claimed exclusive rights to the said mark, which was registered in Class 11 since March 26, 2013, for water heaters, heating coils, and electric water geysers. V Guard also filed an application for registration of the word mark “PEBBLE” in Class 7 for electric irons and other goods, which was granted during the pendency of Crompton’s appeal. Crompton began selling electric irons under the mark “CROMPTON PEBBLE” since October 2020. V Guard claimed this infringed their rights to the mark “PEBBLE” and sought an injunction.
The Single Judge allowed V Guard’s application under Order XXXIX Rules 1 and 2 of the CPC and granted an injunction restraining Crompton from manufacturing, selling, and advertising products under the “PEBBLE” mark. Crompton appealed this decision to the Division Bench (DB).
The issues presented in the Appeal before the DB were mainly: –
- Whether marks “CROMPTON PEBBLE” and “PEBBLE” are similar or identical.
- Whether the goods in question (electric irons and water heaters) are similar for the purpose of infringement under Section 29(2) of the Trademarks Act.
- Whether V Guard established a prima facie case for trademark infringement under Section 29(4) of the Trademarks Act, which pertains to dissimilar goods.
- Whether V Guard established a prima facie case for passing off.
The DB first examined whether the marks were similar and confirmed that trademark owners can protect dominant parts of their labels. “PEBBLE” was found to be a dominant feature in both V Guard’s and Crompton’s marks and “PEBBLE” and “CROMPTON PEBBLE” were deemed visually, phonetically, and structurally identical. Regarding the goods, however, the DB concurred with the Single Judge’s finding that water heaters and electric irons are not similar products, which ruled out infringement under Section 29(2).
The DB then analysed whether the requirements for Section 29(4) were met. To grant injunction under Section 29(4) of the Act, the first and foremost condition to be satisfied is the similarity of the two marks. The DB held that the marks were similar as it is settled law that the owner of the trademark is entitled for protection of the dominant part of the label, if the same is used by any other person, subject to other tests of Section 29 being satisfied. The DB further held that while the marks were similar, they were being used for non-similar goods.
Further, in terms of Section 29(4), to establish the reputation of the mark in India, the DB distinguished between “reputation” required under Section 29(4) and the higher standard of “well-known mark” under Section 2(1)(zg). As per Court, V Guard had been selling water heaters under “PEBBLE” since 2013, with robust sales figures, establishing prima facie reputation required for Section 29(4). The Court further noted that “PEBBLE” is distinctive and arbitrary for geysers, and Crompton provided no explanation for adopting “PEBBLE” for its products. The appeal was therefore dismissed.
The injunction granted by the Single Judge in terms of Section 29(4) of the Trademarks Act, restraining Crompton from manufacturing, selling, and advertising products under the “PEBBLE” mark was upheld. The court confirmed that proprietors of label marks can protect dominant parts of their labels, even when the competing mark includes other elements.
The present order further reinforced the Supreme Court’s interpretation in the Renaissance case that all conditions in Section 29(4) must be cumulatively satisfied for an injunction related to dissimilar goods. The court clarified that “reputation” under Section 29(4) requires a lower threshold than a “well-known mark” under Section 2(1)(zg). At the interim stage, prima facie showing of reputation is sufficient. The court further emphasised that arbitrary words used as trademarks for unrelated products (like “PEBBLE” for electrical goods) are entitled to a high degree of protection. The court found the defendant’s inability to explain why it had adopted an identical mark as evidence of its intent to take unfair advantage of the plaintiff’s reputation.