IN THE MATER OF:
M/s Butterfly Gandhimati Appliances Limited
143, Pudupakkam Village, Kelambakkam,
Kancheepuram District, Tamil Nadu – 603103 … Complainant
The Jay Engineering Works Limited
Surya Kiran Building,
New Delhi – 110001 …Respondent
Disputed Domain Name: Butterfly.in
Arbitrator: Mr Rajeev Singh Chauhan
Complaint in this matter is Butterfly Gandhimati National Appliances Limited, a public company listed with BSE and NSE exchanges, though they adopted the name with the suffix Butterfly since 2011 only. They are dealing in Stainless Steel Pressure Cookers, Stainless Steel LPG Stoves, Stainless Steel Vacuum Flasks and other Electric Kitchen Appliances.
They also own mark ‘BUTTERFLY’ since 1987, after entering into manufacturing since 1986 and claim that they enjoy tremendous reputation in respect of their line of products and have spent substantial amount in respect of Advertisement and sales promotion.
Complainant claims he is the registered proprietor of the mark ‘BUTTERFLY’ with several suffixes in respect of various kitchen and electrical appliances. The complainant adopted the mark ‘BUTTERFLY’ and the same forms a predominant feature in their promotional activities and also forms predominant feature of the Complainant’s trading style world over.
Whereas Respondent is a part of Siddharth Shriram Group, one of the most reputed group also dealing in electric and household appliances, having presence in over 60 countries. The Respondent and its affiliates own serveral Trademarks in connection with its business including but not limited to USHA, SHRIRAM, LEXUS, BUTTERFLY.
The Respondent has been using the mark since its first Registration in 1975 for the mark ‘BUTTERFLY’ as well and has been using the same across globe in various exhibitions and trade fairs. And also invested heavily in promotion of its mark ‘BUTTERFLY’ in relation to sewing machines since it’s inception.
Respondent also claimed that there are various other entities as well which are used their mark and name as ‘BUTTERFLY’ and the Complainant is not entitled to prelude any entity from using the mark/name BUTTERFLY in relation to its business and services.
Under further submissions, Complainant claimed as to use of the mark ‘BUTTERFLY’ by its sister concern since 1973 and also stated that the evidence as produced by Respondent only evidences its use since 2007.
The Tribunal lays down as findings that the arguments of Respondent are persuasive. It is pointed out that both the parties have proprietory and statutory rights in the Trade Mark/Name ‘BUTTERFLY’. Also none of the parties have denied proprietary rights of each other in the trade mark/name ‘BUTTERFLY’. The respondent has placed on record evidence showing that there are various other entities that have proprietary rights in the mark ‘BUTTERFLY’, thus the Tribunal finds that neither party has exclusive rights to the mark/name ‘BUTTERFLY’ for its business and goods.
It is also noteworthy that the Complainant all these years was aware of other entities including the Respondent using the mark/name ‘BUTTERFLY’ for their business and goods which can be evidenced by the response of the examination report filed by the Complainant with the Trademark Registry, which has been filed by the Respondent as Annexure. The same proves the knowledge on behalf of the Complainant as to other entities but against them, Complainant has never filed for any action of infringement. Further prior use by Complainant’s sister concern does not help them as well.
Analysis of the three conditions:
In view of the above, the tribunal finds that even though the Respondent’s domain name is identical or confusingly similar to the name, trade mark or service mark in which Complainant has rights but it cannot be denied that the Respondent also has valid proprietary and statutory rights in the mark/name ‘BUTTERFLY’ which is also being used by the Respondent in relation to its business and products. Therefore, the Respondent cannot be preludes from using butterfly for its domain name as it also hold valid rights in the mark/name ‘BUTTERFLY’.
Further, the Respondent has produced cogent information or documents on record to establish that it has Bonafide/legitimate interest in using the disputed domain name ‘BUTTERFLY.in’ for its business. Respondent is further one of the registered owner of the trade mark ‘BUTTERFLY’ per se or in conjunction with other elements and has been using the same over the period of time. Moreover the term ‘BUTTERFLY’ is not a coined term as claimed by Complainant’.
Lastly the Tribunal observed that the Complainant has failed to provide any cogent information or evidence on record evidencing that the Respondent has registered or used the disputed domain name in bad faith. Further, it has also been noted that the Domain was registered in 2005 itself while the present complaint has been filed 12 years after its Registration and after the expiry of such a long period it also cannot allege that its reputation is getting affected due to alleged bad faith registration of domain name by the Respondent.
In view of the facts and circumstances and finding of the Arbitrator, the Complainant has not succeeded in its complaint and the same is dismissed !!!