Summary: Adopting a secondary mark alongside a house mark is not always straightforward. Indian Courts weigh in on the likelihood of confusion in such cases, providing insights into trademark strategy and brand identity.
As businesses expand product lines into adjacent markets, they often rely on brand extension strategies. This involves pairing well-known house marks with new sub-brands, model names, also known as ‘secondary marks’. However, this tactic may not always work, as merely because secondary marks are used alongside house marks, consumer confusion is not always abated.
In this context, two Delhi High Court decisions — Crompton Greaves Consumer Electricals Ltd. v. V-Guard Industries Ltd. 2024 SCC OnLine Del 1838 and Gensol Electric Vehicles v. Mahindra Last Mile Mobility 2025 SCC OnLine Del 68 — offer interesting, if divergent, perspectives. In Crompton, the Division Bench affirmed that the house mark “Crompton” along with “Pebble” constituted infringement of V-Guard’s prior “PEBBLE” mark, despite dissimilarity in goods. Conversely, in Gensol, the Court held that “MAHINDRA ZEO” was sufficiently distinguishable from “EZIO”, with the house mark effectively negating potential consumer confusion.
These decisions prompt a critical inquiry for companies navigating trademark strategies around sub-brands: When does including a house mark successfully eliminate consumer confusion with identical/similar existing trademarks, and when does it fall short?
From these two decisions, multiple factors emerge for consideration:
1. Nature of the Secondary Mark
In cases like the ones described above, courts generally consider whether the secondary mark is distinctive (arbitrary or coined) or descriptive (generic or suggestive). This helps assess whether adding a house mark meaningfully reduces the risk of consumer confusion.
- Secondary mark is distinctive:
In Crompton, V-Guard (the Respondent) had used the mark “PEBBLE” for water heaters since 2013. The Court also found “PEBBLE” to be an arbitrary and inherently distinctive term in the context of electrical appliances. Crompton’s use of “Crompton Pebble”, therefore, did not insulate it from liability. Even if an entity adds its own well-known house mark, the unique nature of the secondary mark makes confusion more likely. Thus, the house mark does not automatically erase the consumer’s association with the established secondary mark.
- Secondary mark is descriptive:
In contrast, when a mark is descriptive, a different standard would apply. For instance, in Capitol Food Pvt. Ltd. v. Radiant Indus Chem Pvt. Ltd. 2023 SCC OnLine Del 118, the contentious term was “Schezuan Chutney”, descriptive of a food product. The competing house marks were “Ching’s Secret” and “Mrs. Foodrite”. Here, the Court held that no exclusivity over the descriptive phrase was available, and that the house marks sufficiently distinguished the products in the minds of consumers.
Similarly, in Peshawar Soap and Chemicals Ltd v. M/S. Godrej Soaps Limited 2000 SCC OnLine Del 959, “Nikhar” was deemed a word commonly used in relation to cosmetic products, and thus, a competitor using its house mark with the term was enough to discourage consumer confusion.
The import here is that when a secondary mark is descriptive or a term common to a trade, incorporating it with a house mark would be strategically more astute, as it would attribute goodwill and repute (already acquired from the house mark) to the secondary mark, akin to a seal of quality.
- Secondary mark is descriptive with acquired secondary meaning:
But there may be exceptions. Where a descriptive mark has acquired strong secondary meaning through extensive use and market recognition, the mere addition of a distinct house mark by a competitor may not be sufficient to avoid liability for infringement or passing off.
In such cases, the descriptive term may function as a source identifier in its own right, and courts may still find consumer confusion likely. This position was taken in Pidilite Industries Limited v. Jubilant Agri & Consumer Products 2014 SCC OnLine Bom 50, where “Marine”, although descriptive for adhesives used in wet or humid conditions, was considered solely associated with the Plaintiff’s products due to its popularity and acclaim, notwithstanding that the defendants had affixed their house mark.
2. Class of Consumers and Purchase Context
The degree of sophistication of the relevant consumer base and the nature of the purchasing context are also important determinants. Courts have repeatedly acknowledged that consumers do not interact with all products in the same way; attention, engagement and other factors vary widely.
In Gensol, the Delhi High Court underscored that automobile purchases are high-involvement decisions:
“In the automobile industry, models are typically identified by both manufacturer name and model name… Vehicles are high-value products purchased after deliberation… Consumers typically visit showrooms, inspect vehicles, and conduct research before buying.”
This reflects a key judicial insight: if products are expensive and infrequently purchased, such as cars, consumers tend to exercise high diligence. Here, the presence of a prominent house mark, like “MAHINDRA”, can meaningfully differentiate a product even if the secondary mark (like “ZEO”) bears phonetic or structural similarity to another party’s mark (e.g., “EZIO”).
But in another segment, say, for fast-moving consumer goods (FMCG), consumers may rely more on general impressions rather than detailed examination. Here, including a well-known house mark may not sufficiently prevent confusion.
This also reflects industry-specific norms around branding. For example, in automotives or technology, products are marketed with a two-tier identity: a house mark and a model or series name. But in FMCG or personal care, the product name itself is often the principal source identifier. In this context, the Court, in Pidilite, considered an interesting scenario – when a customer goes to buy biscuits, they may simply ask for the biscuits by their mark/brand or sub-brand e.g., “Marie” or “Monaco” or “Krackjack” etc; the name of the manufacturer / house mark, i.e., “Parle” or “Britannia”, is rarely prefaced.
Thus, when assessing the effectiveness of a house mark in warding off confusion, courts evaluate not just the marks themselves, but also the broader consumer context, including:
- Price point and purchase frequency,
- Level of consumer attention reasonably expected, and
- Branding conventions in the industry
3. Bona Fide Adoption and Due Diligence
Courts also emphasise the intent and process behind the adoption of the secondary mark, particularly when the strength of a house mark is relied upon as a defence. A well-documented rationale and evidence of prior trademark searches can lend credibility and tilt judicial perception in favour of the adopting party. Without such due diligence, especially when the secondary mark is distinctive, courts may not be persuaded by the mere presence of a well-known house mark.
In Gensol, Mahindra explained that the mark “ZEO” was derived as an acronym for “Zero Emission Option,” directly linked to the nature of its electric vehicle business. This explanation, along with proof of pre-adoption trademark searches, demonstrated a bona fide intention and helped shape a favourable judicial view.
In stark contrast, in V-Guard, Crompton offered no legitimate explanation for its use of “Pebble.” The Court also noted that “Pebble” was neither generic nor descriptive in the context of electrical appliances. This absence of justification, combined with the distinctiveness of the prior V-Guard mark, led to Crompton losing its case, despite having an established reputation and a well-known house mark.
Hence, relying on the strength of a house mark is not a substitute for careful trademark strategy. Adopting a new mark, especially alongside an existing, distinctive mark, should be backed by a clear, documented rationale and thorough clearance searches. This not only signals good faith but also helps mitigate risk.
Conclusion
The contrasting outcomes in V-Guard and Gensol illustrate that the use of house marks transcends mechanical application of fixed principles. Rather, courts engage in a nuanced, contextual examination and consider multiple variables.
The commercial strength and reputation of a house mark undoubtedly carries weight in trademark disputes, but it is not implicitly decisive. Mark distinctiveness, consumer perception, and the manner of adoption, are all relevant factors that also play a role.
In sum, the strength of a house mark may aid in differentiation in certain contexts, but it cannot cure all risks that arise from adopting a rival’s distinctive mark. Thus, attaching a house mark to brand names or secondary marks ought not to be a mechanical choice, but a considered strategy.
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