Calcutta High Court
Exide Industries Limited vs Amara Raja Energy And Mobility Limited on 25 July, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
IN THE HIGH COURT AT CALCUTTA
INTELLECTUAL PROPERTY RIGHTS DIVISION
ORIGINAL SIDE
BEFORE:
The Hon'ble Justice Ravi Krishan Kapur
IA NO. GA-COM/1/2025
IP-COM/18/2025
EXIDE INDUSTRIES LIMITED
Vs
AMARA RAJA ENERGY AND MOBILITY LIMITED
For the petitioner : Mr. S.N. Mookherjee, Senior Advocate
Mr. Ranjan Bachawat, Senior Advocate
Mr. Ratnanko Banerji, Senior Advocate
Mr. Sayantan Bose, Senior Advocate
Mr. Rudraman Bhattacharyya, Senior Advocate
Mr. Debnath Ghosh, Senior Advocate
Mr. Sayan Roychowdhury, Advocate
Mr. Dhruv Chadha, Advocate
Mr. Sagnik Bose, Advocate
Mr. Paritosh Sinha, Advocate
Mr. K. K. Pandey, Advocate
Ms. Suhrita Majumdar, Advocate
Mr. Kironjit B. Majumder, Advocate
Ms. Pooja Sett, Advocate
Mr. Dipro Dawn, Advocate
Ms. Sayani De, Advocate
Ms. Mallika Bothra, Advocate
For the respondent : Mr. Jayanta Kumar Mitra, Senior Advocate
Mr. Sudipto Sarkar, Senior Advocate
Mr. Tilak Bose, Senior Advocate
Mr. Subhasis Sengupta, Advocate
Mr. Adarsh Ramanujun, Advocate
Mr. Rohit Banerjee, Advocate
Mr. Subhojit Sengupta, Advocate
Mr. Ankit Virmani, Advocate
Mr. Sarosij Dasgupta, Advocate
Mr. Satyaki Mukherjee, Advocate
Mr. Amrita Panja Moulick, Advocate
Mr. Ruchika Agarwala, Advocate
2
Mr. Suryaneel Das, Advocate
Mr. Akash Munshi, Advocate
Mr. Aditya Mondal, Advocate
Ms. Siddhartha Banerjee, Advocate
Mr. D. Kar, Advocate
Mr. Anish Gupta, Advocate
Mr. Chiranjit Pal, Advocate
Reserved on : 14.07.2025
Judgment on : 24.07.2025
Ravi Krishan Kapur, J.:
1. This is a suit for infringement and passing off.
2. The petitioner was originally incorporated as Associated Battery Makers
(Eastern) Coal Ltd. (presently Exide Industries Limited) and has been
traditionally engaged in the manufacture and marketing of lead acid
batteries for use in vehicles. The petitioner is a pioneer in such business
and has been selling batteries both in India and abroad under the
trademark “EXIDE” since the year 1920.
3. With the passage of time, the petitioner has become one of the largest
Power Storage Solutions Company in South-East Asia. The petitioner has
manufacturing locations all over India alongwith numerous dealers and
distributors. The petitioner has also diversified from its traditional
domain of automotive lead acid batteries and ventured into
manufacturing of power storage solutions such as industrial batteries,
inverter batteries, generator batteries, integrated power backup systems
and other such allied products.
3
4. The petitioner’s house mark and the trademark “EXIDE” has also become
its flagship brand and forms part of its corporate name. The petitioner
has always used a distinctive colour theme which is in predominantly
Red and has become linked with its trade dress. The petitioner also uses
a distinctive Red and White colour for its products and incidentally uses
other colours. The use of the colour Red and the combination of the Red
and White by the petitioner is palpable from its products, packaging,
advertisements, shop hoardings, social media post pages, annual
reports, sponsorship etc. all in a predominantly Red colour. The use of
the colour Red on the petitioner’s battery trade dress, get up and labels
is also evident from several registrations of the various marks which the
petitioner has obtained. As a consequence, the colour Red has become
intrinsically linked to the business of the petitioner and the petitioner
claims proprietary rights due to the long use of the same for more than a
century.
5. In addition, the petitioner also enjoys registrations for the trademark
“EL” and a “shattered O device” . The trademark EL was adopted by
the petitioner as far back as 1987 and the same has been put to use in a
wide range of products of the petitioner including storage batteries. Such
mark has been openly, extensively and continuously used by the
petitioner and was fancifully adopted by the petitioner to distinguish its
goods from others.
4
6. The petitioner has also obtained registrations of various label trademarks
comprising the words “EL”. A list of such registrations being enjoyed by
the petitioner are set out below:
Trademark Date of Registration Class Status
Application no.
EL (word) 21/1/2021 4828708 9 Registered
EXIDE EL 29/10/2003 1246910 9 Registered
TUBULAR
05/05/2004 1282374 9 Registered
01/04/2010 1944665 9 Registered
01/04/2010 1944666 9 Registered
7. In respect of a shattered O device , the same was adopted by the
petitioner in the year 1973 and has also been in open, continuous and
extensive use by the petitioner. The said shattered O device was
conceptualized and created by the petitioner and is a unique artistic
work which is inherently capable of distinguishing the goods and services
of the petitioner from those of others. The petitioner has also obtained
copyright registrations of such artistic work which is per se exclusive and
liable to protection. In this background, the petitioner claims goodwill,
reputation and brand value in respect of all of the above and submits
that each of them acts as a source identifier of the petitioner and its
products. In support of the above contentions, the petitioner relies on
5
Jones vs Hallworth Reports of Patent, Design and Trademark, Vol XIV,
No.8, Cadbury- Schweppes Pty. Ltd. vs The Pub Squash Co Ltd (1981)
26RPC 429, Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.,
(2001) 5 SCC 73, Colgate Palmolive Company & Another vs Anchor Health
and Beauty Care Pvt Ltd 2003 SCC Online Del 1005, Satyam Infoway
Ltd. vs Siffynet Solution(P) Ltd (2004) 6 SCC 145, Euro Solo Energy
Systems Limited Vs Eveready Industries Limited, 2009 SCC Onlined Cal
1991, Sapat International Private Limited vs Sanwal Chand Babulal and
Another, 2016 SCC Online Bom 7712, Societe des Produits Nestle SA vs
Cadbury UK Ltd (2017)EWCA Civ 358, Sanjay Soya Private Limited vs
Narayani Trading Company, 2021 SCCOnline Bom 407, Qualitex Co vs
Jacobson Prods Co, 514 U.S. 159, and Emami Limited vs Hindustan
Unilever Limited, 2024 SCCOnline Cal 3579.
8. The respondent is a trade rival and primary competitor of the petitioner
also enjoying a significant market share in the storage battery, lead acid
battery and automated battery industry both internationally and in the
domestic market. The respondent sells its products under the mark
“AMARON”. The respondent has since inception, always sold its products
in a predominantly green colour. Such predominant green colour has
become associated with the respondent and its products. In the three
decades of doing business, the respondent has essentially associated
itself with the colour green and this would be evident from the colour of
their batteries, annual reports, publicity materials, colour of shops,
advertisement campaigns etc. In addition, the respondent has in its
6
advertising campaigns always portrayed itself as a seller of green
batteries and has at different points of time targeted the colour Red
through advertising. In fact, the respondent has not only denigrated the
colour Red but has through innuendo in their advertisements also
deprecated the colour Red. In this context, some of the relevant
advertisements of the respondent are set out hereinbelow:
9. It is contended that the petitioner has failed to satisfy the test of
reputation, deceptive similarity and damage or likelihood thereof which
7
are the pre-conditions for establishing passing off. There is no
distinctiveness in the colour Red or the word “EL” or the so-called
shattered O device symbol in connection with automated batteries. As a
proposition of law, there can be no monopoly over a single colour. In any
event, a colour is incapable of any protection unless it has attained a
secondary meaning. In such circumstances, there is no case in respect of
the colour Red having attained a secondary meaning or becoming a
source identifier of the petitioner. In fact, the colour red is commonly
used in the battery industry and a number of rival products i.e.
LIVGUARD, XENON, TARZO, MICRO ENERGY, VIGO and VOLTAFUEL
all use the colour Red. In addition, the petitioner also uses colours other
than Red in selling their products. In any event, no decision to purchase
a battery is based purely on colour.
10. In this background, keeping the nature of the goods, nature of
customers, degree of care likely to be taken by a customer purchasing
automotive batteries, there is no case of confusion or deception which
has been made out or exists in favour of orders being passed as prayed
for by the petitioner. In view of the above, this application is liable to be
dismissed. In support of such contentions, the respondent relies on the
following decisions: Kellogg Company vs. Pravin Kumar, ILR (1996) II Delhi
11, Dr. Martens Australia Pty Ltd. vs. Figgins Holdings Pty Ltd. (1999) FCA
461, Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. (2001) 5
SCC 73, Colgate Palmolive Company Limited & Anr. Vs. Patel & Anr.
(2005) SCC OnLine Del 1439, Wal-Mart Stores vs. Samara Bros, Cipla Ltd.
8
vs MK Pharmaceuticals (2007) SCC OnLine Del 2012, Star Bazaar Pvt. Ltd.
vs. Trent Ltd. (2010) SCC OnLie Del 4764, Specsavers International
Healthcare Ltd. & Ors. vs. Asda Stores Ltd. (2012) EWCA Civ 24, Britannia
Industries Ltd. vs. ITC Ltd. (2017) SCC OnLine Del 7391, Godfrey Phillips
India Ltd. vs. P.T.I Pvt Ltd. (2017) SCC OnLine 12509, Khadi and Village
Industries Commission vs. Girdhar Industries and Another (2023) SCC
OnLine Del 8446 and Brihan Karan Sugar Syndicate Pvt. Ltd. vs.
Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana (2024) 2 SCC
577.
11. For convenience, a comparison of the rival products is produced below:
Example of Plaintiff's Product Impugned Product
(Battery-front face) (Battery-front face)
Example of Plaintiff's Product Impugned Product (outer box-front
(outer box-front face) face)
9
12. Historically, all trade mark laws have focused on two issues i.e. one is
the social practice and understandings relating to the activity of applying
marks to goods, the other is a positivist approach of trade mark law. In
earlier times, traders applied marks to their goods to indicate ownership.
This was referred to as “propriety” or “possessory” rights acknowledging
that signs operated as an indication of source. In such circumstances,
the Courts held that, if another trader was allowed to use the same sign
this would encourage fraud to be committed on the public. The
underlying logic being that if a trader was already using a sign or mark,
the same if allowed to be used by another trader would tantamount to a
form of deceit.
13. Ever since the early 19th century, the Chancery Courts have used the
action of passing off to protect a trader who had developed reputation or
goodwill to use a particular sign or symbol. The object of the law of
passing off being to protect some form of property. This included
innocent misrepresentation. Thus, passing off is primarily a question of
fact. Each of the ingredients of the claim requires the necessary facts
alongwith the evidence to be established. To this extent, the applicability
of previous decisions also requires caution. Since the facts are always
distinguishable, reference to other cases may not always of any real
assistance except analogically. Moreover, with the passage of time, the
age of a cited decision should be borne in mind. As the attributes of the
public change so too might the outcome of a particular decision. [Kerly’s
10
Law on Trade Marks and Trade Names 16th Edition Chapter 20]. There is
an additional caveat when relying on English decisions inasmuch as one
has to keep in mind the Indian customer who may vary from the urban,
literate to the illiterate and rustic. [Cadila Health Care Ltd. (Supra) @ para
33 Euro Solo Energy Systems Limited (Supra)].
14. Passing off has always required a trader to establish misrepresentation.
In order to succeed in a suit for passing off, the classic trinity test
remains that of reputation, misrepresentation and damage (Consorzio del
Prosciutto di Parma vs. Marks & Spencer PLC [1991] RPC 351 at 368-369).
Notwithstanding, an expansion in the scope of the tort, the heart of the
tort remains anchored in misrepresentation. Misrepresentation of the
source of goods is equivalent to lying or deception and is simply wrong.
This is meant to protect confusion as to the source. In Reckitt & Colman
Products Ltd. vs. Borden [1990] 1 W.L.R 491, Lord Oliver held that “The
law of passing off can be summarised in one short general proposition –
no man may pass of his goods as those of another.” He went on to say:
“More specifically, it may be expressed in terms of the elements
which the plaintiff in such an action has to prove in order to
succeed. These are three in number. First, he must establish a
goodwill or reputation attached to the goods or services which he
supplies in the mind of the purchasing public by association with
the identifying get-up (whether it consists simply of a brand name
or a trade description, or the individual features of labelling or
packaging) under which his particular goods or services are offered
to the public, such that the “get-up’ is recognized by the public as
distinctive specifically of the plaintiff’s goods and none other.
Secondly, he must demonstrate a misrepresentation by the
defendant to the public (whether or not intentional) leading or likely
to lead the public to believe that goods or services offered by him
11are the goods or services of the claimant… Thirdly, he must
demonstrate that he suffers or, in a qua timet action, that he is
likely to suffer, damage by reason of the erroneous belief
engendered by the defendant’s misrepresentation that the source of
the defendant’s goods or services is the same as those offered by
the plaintiff.”
15. In India, passing off has been statutorily recognized in section 27 of the
Trade Marks Act 1999 which is as follows:
27. No action for infringement of unregistered trade mark.–
(1) No person shall be entitled to institute any proceeding to prevent,
or to recover damages for, the infringement of an unregistered trade
mark. (2) Nothing in this Act shall be deemed to affect rights of
action against any person for passing off goods or services as the
goods of another person or as services provided by another person,
or the remedies in respect thereof.
16. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals
Laboratories, AIR 1965 SC 980; while distinguishing between
infringement of trade mark and passing off, the Supreme Court held as
follows:
“While an action for passing off is a Common Law remedy being in
substance an action for deceit, that is, a passing off by a person of
his own goods as those of another, that is not the gist of an action
for infringement. The action for infringement is a statutory remedy
conferred on the registered proprietor of a registered trade mark for
the vindication of the exclusive right to the use of the trade mark in
relation to those goods” (Vide Section 21 of the Act). The use by the
defendant of the trade mark of the plaintiff is not essential in an
action for passing off, but is the sine qua non in the case of an
action for infringement. No doubt, where the evidence in respect of
passing off consists merely of the colourable use of a registered
trade mark, the essential features of both the actions might coincide
in the sense that what would be a colourable imitation of a trade
mark in a passing off action would also be such in an action for
infringement of the same trade mark. But there the correspondence
between the two causes. In an action for infringement, the plaintiff
must, no doubt, make out that the use of the defendant’s mark is
12likely to deceive, but where the similarity between the plaintiff’s
and the defendant’s mark is so close either visually, phonetically or
otherwise and the court reaches the conclusion that there is an
imitation, no further evidence is required to establish that the
plaintiff’s rights are violated. Expressed in another way, if the
essential features of the trade mark of the plaintiff have been
adopted by the defendant, the fact that the get-up, packing and
other writing or marks on the goods or on the packets in which he
offers his goods for sale show marked differences, or indicate
clearly a trade origin different from that of the registered proprietor
of the mark would be immaterial; whereas in the case of passing
off, the defendant may escape liability if he can show that the
added matter is sufficient to distinguish his goods from those of the
plaintiff”.
17. In Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., AIR 2004 SC 3540, it
was held as follows:
13. The next question is, would the principles of trade mark
law and in particular those relating to passing off apply? An action
for passing off, as the phrase “passing off” itself suggests, is to
restrain the defendant from passing off its goods or services to the
public as that of the plaintiff’s. It is an action not only to preserve
the reputation of the plaintiff but also to safeguard the public. The
defendant must have sold its goods or offered its services in a
manner which has deceived or would be likely to deceive the public
into thinking that the defendant’s goods or services are the
plaintiff’s. The action is normally available to the owner of a
distinctive trade mark and the person who, if the word or name is
an invented one, invents and uses it. If two trade rivals claim to
have individually invented the same mark, then the trader who is
able to establish prior user will succeed. The question is, as has
been aptly put, who gets these first? It is not essential for the
plaintiff to prove long user to establish reputation in a passing-off
action. It would depend upon the volume of sales and extent of
advertisement.
14. The second element that must be established by a
plaintiff in a passing-off action is misrepresentation by the
defendant to the public. The word misrepresentation does not mean
that the plaintiff has to prove any mala fide intention on the part of
the defendant. Of course, if the misrepresentation is intentional, it
might lead to an inference that the reputation of the plaintiff is such
that it is worth the defendant’s while to cash in on it. An innocent
13misrepresentation would be relevant only on the question of the
ultimate relief which would be granted to the plaintiff [Cadbury
Schweppes v. Pub Squash, 1981 RPC 429 : (1981) 1 All ER 213 :
(1981) 1 WLR 193 (PC); Erven Warnink v. Townend, 1980 RPC 31 :
(1979) 2 All ER 927 : 1979 AC 731 (HL)] . What has to be
established is the likelihood of confusion in the minds of the public
(the word “public” being understood to mean actual or potential
customers or users) that the goods or services offered by the
defendant are the goods or the services of the plaintiff. In assessing
the likelihood of such confusion the courts must allow for the
“imperfect recollection of a person of ordinary memory”
[Aristoc v. Rysta, 1945 AC 68 : (1945) 1 All ER 34 (HL)] .
32. Another facet of passing off is the likelihood of confusion
with possible injury to the public and consequential loss to the
appellant. The similarity in the name may lead an unwary user of
the internet of average intelligence and imperfect recollection to
assume a business connection between the two. Such user may,
while trying to access the information or services provided by the
appellant, put in that extra ‘f’ and be disappointed with the result.
Documents have been filed by the respondent directed at
establishing that the appellant’s name Sify was similar to other
domain names such as Scifinet, Scifi.com, etc. The exercise has
been undertaken by the respondent presumably to show that the
word “Sify” is not an original word and that several marks which
were phonetically similar to the appellant’s trade name are already
registered. We are not prepared to deny the appellant’s claim
merely on the aforesaid basis. For one, none of the alleged previous
registrants are before us. For another, the word “sci-fi” is an
abbreviation of “science fiction” and is phonetically dissimilar to the
word Sify. (See Collins Dictionary of the English Language.)
Other decisions which have reiterated the above principles are
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (Supra);
Laxmikant V. Patel v. Chetanbhai Shah, 2002 (24) PTC 1 (SC); Ramdev
Food Products (P) Ltd. v. Arvindbhai Rambhai Patel, (2006) 8 SCC 726;
and Brihan Karan Sugar Syndicate (P) Ltd. v. Yashwantrao Mohite
Krushna Sahakari Sakhar Karkhana, (Supra).
14
18. The crux of the disputes between the parties pertains to the launch of a
product “ELITO” by the respondent, in predominantly Red trade dress
and also bearing a red and white combination, alongwith a shattered “O”
device. It is alleged that the impugned product of the respondent
comprises of deceptive similarities in the trade dress and the get up
which are exclusively associated with the petitioner. Admittedly, both
products are in the same category of goods i.e. automated batteries. Both
parties rely on impressive sale figures and advertisement expenses. Both
parties also have a tremendous market share in India as well as abroad.
Initially, the product “ELITO” was launched with a blue trade dress
around two years ago. Thereafter, the respondent began to sell “Elito” in
a Red trade dress comprising of the mark “Elito”. . In this
context, the trade mark application filed by the respondent indicates that
the respondent had initially adopted the mark “LIT” with the two device
elements including the Greek Alphabet Xi i.e. which was represented
as in relation to its foreign business and the same was for a
blue coloured battery. Significantly, all such applications had been filed
before the Trade Marks Registry in the colour grey. It is contended, there
has been a significant change in the impugned trade dress without any
credible explanation as originally conceptualized by the respondent. The
present trade dress is not only in predominantly Red colour as that being
used by the petitioner but also comprises of other deceptive similarities
15
i.e. the words EL and the shattered O device which are strikingly similar
to that of the petitioner.
19. Reputation is the level of awareness of a mark or get up on the concerned
public. A person may acquire goodwill through particular packaging or
get up for their products. The length of time during which the petitioner
or its predecessors have been using the mark, get up or any other indicia
is a relevant factor which must be taken into account. Time has its own
role to play in such matters and this fact cannot be discounted. Goodwill
is difficult to define. It is composed of a variety of elements. It is the value
of attraction to customers which the name or reputation possesses. It
has been defined as the “attractive force which brings in custom”[IRC vs.
Muller & Co’s Margarine (1901) AC 217 at 223]. To this extent, both
goodwill and reputation are inter-linked. There is no goodwill in a sign or
indicium or a prominent feature unless it is known to the public and
they distinguish the goods in relation to which it is used.
20. The significance of trade dress and colour combination cannot be
undermined in such cases. Get up matters in the commercial world.
Marks or indicia in general which over a period a time have acquired
reputation and goodwill tend to act as a silent salesperson and are
entitled to protection. It is not always the colour per se but the overall get
up alongwith other indicia which gives rise to the proprietary right of
exclusivity. The substance of the tests in a passing off action appears to
be the Court’s perception of the degree of resemblance between the
marks. The eye continues to remain the primary test (Sanjay Soya
16
Private Limited vs. Narayani Trading Company, 2021 SCC OnLine Bom
407 @ paras 62, 63 and Three-N-Products Private Limited vs. Emami
Limited 2008 SCC OnLine Cal 589).
21. This is by no stretch of imagination meant to create a monopoly over the
colour Red in favour of the petitioner, an argument which the petitioner
assiduously steered away from advancing (Cipla Ltd vs M.K.
Pharmaceuticals, 2007 SCC Online Del 2012 @ Paras 7 to 9). Ordinarily,
colour marks per se present formidable hurdles in acquiring a secondary
meaning because the law frowns upon monopolies (Wal-Mart Stores Inc
vs Samara Bros 120 S. Ct. 1339). This is because both in theory and
practice monopolies are detrimental and interfere with market
competition. Nevertheless, the long prior, open, continuous and
uninterrupted use of the colour Red for a substantial period of time has
prima facie created more than a connection or an association of sorts
with the petitioner and its products insofar as the automotive battery
industry is concerned, without creating a monopoly and this cannot be
ignored. To this extent, the decision in Britannia Industries Ltd. vs. ITC
Ltd. 2017 (Supra) cited by the respondent is distinguishable inasmuch as
the concerned product had only been launched in July, 2016 i.e. five
months prior to the filing of the suit. Thus, the short period of use of five
months alongwith other considerations were found to be insufficient to
create any link or goodwill vis-a-vis use of the colour blue. Similarly, in
M.L. Brothers LLP vs. Uma Impact Pvt. Ltd. & Anr. (Supra), the colour
scheme of the plaintiff was not found to be distinctive since the plaintiff
17
had not used any trade dress continuously nor was the plaintiff able to
establish the date of first use of the product. On the contrary, prima
facie, the colour Red appears to be a prominent, integral and distinctive
feature of the petitioner and the public and members of the trade mark
perceive Red to be the petitioner’s colour and green to be the respondent
and at least that is how they have been marketed and also treated by the
respondent. In principle, it is always possible to acquire goodwill in the
shape, colour product and its packaging such that use of a similar shape
or colour or packaging leads to a misrepresentation of trade origin [Glaxo
Wellcome UK Ltd. and Anr. vs. Sandoz Ltd. and Ors. (2019) EWHC 2545].
Prima facie, the manner and mode of use of the distinctive Red colour for
a considerable period of time in the particular industry, registration
rights of the trade mark EL and the statutorily recognized copyright
protection in the shattered O device mark, all contribute in acting as
source identifiers and creating goodwill vis-a-vis the petitioner and their
products.
22. In response to a query from Court, as to why the colour Red, the
respondent had retorted that there is no obligation for them to explain
why Red. The reply smacked off arrogance not because of any
inarticulate premise but because the law demanded an answer. “It is a
question which falls to be asked and answered”. [Sodastream Ltd. vs.
Thorn Cascade Co. Ltd. [1982] RPC 459 at 466 per Kerr LJ]. “The doubtful
explanation given by the respondent for the choice of the word ‘Sify’
coupled with the reputation of the appellant can rationally lead us to the
18
conclusion that the respondent was seeking to cash in on the appellant’s
reputation”. [Satyam Infoway Ltd. vs Siffynet Solution (P) Ltd (2004) 6 SCC
145 @ Para 35]. “There is no explanation as to why they suddenly adopted
the blue colour and the adoption appears to be dishonest with an
intention.”…..”Use of the colour blue as the background in the wrapper is
the last straw on the camel”. [ITC Ltd. vs. Britannia Industries Ltd. 2023
SCC OnLine Mad 6972 (DB) @ Paras 13 and 33]. “There is no conceivable
reason for the defendants to have adopted such a label and trade dress,
one so visually and structurally, similar to the plaintiffs” [Sapat
International Private Limited vs. Sanwal Chand Babulal & Anr. 2016 SCC
OnLine Bom 7712]. “Finally, intent of a defendant in adopting his trade
dress is a critical factor since if the trade dress were adopted with the
intent of deriving benefit from the reputation of the plaintiff that fact alone
may be sufficient to justify the inference, confusing similarity”[First Brands
Corp. vs. Fred Meyer, Inc., 809 F.2d 1378].
23. Fortunately or unfortunately the affidavit filed by the respondent
proffered or at least attempted to explain as to why the change of colour.
For convenience, the relevant paragraphs of the Affidavit in Opposition
filed by the respondent are reproduced hereinbelow:
18. I state that the defendant launched the brand ELITO first
in international markets only as it did not want to disrupt the
market of their already established brands AMARON ad
POWERZONE in India. However, when the COVID-19 restrictions
were getting lifted, there was a rise in demand for automotive
batteries and the Defendant decided to tap this opportunity and
launch its brand ELITO in India as well.
19
19. I state that the defendant had received some feedback
from its Master Distributor regarding the performance of the blue
coloured ELITO products in the international market which inter alia,
included that: (a) the E in ELITO without the vertical line is difficult
for the customers to understand and they are unable to pronounce
the brand name, (b) the blue colour of batteries was not making
it stand out in the clutter and it was suggested that the brand
colour be changed to any other bright and vibrant colour. In this
regard, a copy of an Affidavit dated 24.03.2025 executed by Mr.
Jindal, Chief Marketing Officer of the defendant company is
annexed herewith as Annexure “N”. (Emphasis added)
24. In this connection, the relevant portion of the above affidavit of the
Marketing Officer is set out below:
“3. I state that after the launch of brand-ELITO in the year 2020 in the
international market, except India, there were various meetings held on the
product performance of the brand-ELITO between the Distributor and the
Company at the Corporate Office of the Company at Hyderabad, India
between December 2021 and September 2022. In these meetings, the
Distributor was represented by its Authorised Representative Mr. Ganesh
Swaminathan and the Company was represented by me.
4. During the above said meetings, various discussions on product
performance were held between the Distributor and the Company in which
the Distributor shared the feedbacks received from various dealers and
customers in the international market. The feedbacks included:
(i) The word “E” in Elito without the vertical line is difficult for the
customers to understand and they are unable to pronounce the brand
name.
(ii) The blue colour of the batteries was not making it stand out in the
clutter and it was suggested to me that the brand colour be changed to
any other bright and vibrant colour.
(iii) The Covid-19 pandemic had impacted the sale of automotive batteries
in the international market and the estimated targets for the brand ELITO
were not being met.
(iv) The brand ELITO had to be launched in more countries for global
expansion
(v) The product quality and after sales performance in the international
market was also discussed.”
25. In brief, the respondent at the interim stage, (keeping in mind that this is
a commercial suit), relied on a self-serving affidavit of its own Marketing
20
Officer to contend that though it had launched “ELITO” in blue colour in
2020, later insofar as feedback received from an overseas dealer,
ASEANAFRIC that, “blue did not stand out in the clutter” a more “bright”
and “vibrant” colour was desirable. Despite there being no affidavit nor
letter of ASEANAFRIC in support of the above suggestion, there is also an
inherent contradiction and irreconcilability in the case of the respondent
inasmuch as on the one hand it is alleges that colour has no role to play
in such matters and on the other hand the respondent has been
compelled to bring about a change only on the basis that “blue did not
stand out in the clutter” and a more bright and vibrant colour was
necessary. Resultantly, the change brought about by the respondent was
as follows:
21
26. Out of all the bright and vibrant colours in the canvas of life, the
respondent chooses Red in effecting such change. The very same Red
being used by the petitioner for more than a century. Not a shade deeper.
Nor a shade lighter. One can be excused for lack of imagination or
originality, but can a deliberate, conscious and calculated decision by a
trade rival to use such a prominent and distinctive feature of a
competitor alongwith other indicia to imitate and thereby live so
dangerously close to the product of the petitioner be countenanced.
[United Biscuits vs. Asda (1997) RPC 513]. In causing such changes, the
respondent has obviously tried to sail closer to the get up petitioner and
there is no justifiable explanation forthcoming by the respondent. There
is also no justification as to why the respondent contemporaneously
continued with blue batteries insofar as the overseas market is
concerned and only adopted Red in India. In determining whether
misrepresentation is deceptive or not, a Court can always take into
consideration, the intention of the respondent. The decision to change is
not merely coincidental but a deliberate attempt with the obvious intent
to create confusion and deceive or the likelihood thereof. In this context,
the decision in Forney Indus vs. Daco of Mo., Inc., 835 F.3d 1238, cited by
the respondent is distinguishable inasmuch as it was held that Forney’s
packaging has changed significantly over the 20 years. Thus, it was not
possible for a consumer to have any kind of association with the
particular packaging since there was no consistent shape, pattern and
design which could be ascertained from a description of the product.
22
Prima facie, there is bad faith implicit in the conduct of the respondent.
The affidavit filed by the respondent is irreconcilable, self-contradictory
and filing of the same was akin to committing hara-kiri. The desperate
attempt to resile from the above affidavit, by describing the same as
“irrelevant” in the Note of Submissions filed by the respondent, was too
little, too late. That ship had sailed.
27. Copying is in someways described as the lifeline of competition and is not
unlawful. Copying the get up or colour scheme of a label has been used
as a method adopted by persons to represent their goods as the goods of
another. It is true that there is no tort of copying in law. Nevertheless,
within the available remedies, “anything worth copying should also be
worth protecting”. At the end, it is a question of degree, extent and
intent. (IP and Other Things – Bloomsbury “Part-V” Robin Jacob). The fact
that an existing competitor in comparison to a new entrant in the market
has deliberately, intentionally and in a calculated manner attempted to
reap from the cultivated soil of a trade rival is impermissible. In such
circumstances, a Court should be astute to say that the respondent
cannot succeed in doing “what he is straining every nerve to do”
[Slazenger & Sons vs. Telltham & Co. (1899) 6 RPC 531 at 538 per
Lindley, J.] Such changes are neither accidental nor spontaneous. On the
contrary, any decision to change is well deliberated and has to muster
approval at different levels of any corporation spanning from marketing,
design, sales, advertising and ultimately legal approval before the same is
23finally implemented. The change to a red and white trade dress. The
similar size and shape of the two batteries. The five letter combination of
the two batteries. The use of the words “EL” which are registered in the
name of the petitioner. The use of the shattered O device are all multiple
instances of copying which prima facie indicates sufficient nearness
notwithstanding any difference to suggest bad faith and a deliberate and
calculated strategy to move closer to the product of the petitioner. In
contrast, the fact that there may be other smaller companies having an
insignificant market share also manufacturing and selling Red batteries
in the industry is irrelevant. In Kellogg Company vs. Pravin Kumar
Bhadabhai & Anr. (Supra), relied on by the respondent, the particular
trade dress was not similar and there were strikingly distinguishing
features which were found between the two products. Similarly, in Star
Bazaar Pvt. Ltd. vs. Trent Ltd. and Anr., (2010) SCC OnLine Del 4764, also
cited by the respondent, both the parties were found to be bonafide,
coincidental and concurrent users. On the other hand in Colgate
Palmolive Company Limited & Anr. Vs. Patel & Anr. (2005) SCC OnLine Del
1439 the claim for passing off in respect of a chromatic monopoly over
the colour Red and White was found tenable.
28. In such circumstances, there ought to be a special obligation on the
respondent, as an existing and biggest trade rival (minded to use a
similar get up or any indicium) to avoid confusion and deception or the
likelihood thereof. (Reckitt & Colman Products Ltd. vs. Borden [1990] 1
24
W.L.R 491 at 515 7-g as per Lord Jauncey). Moreso, when the respondent
is also a shareholder in the petitioner company. It is true that there is a
natural and inherent right in using any colour but the combination of
deceptive resemblances in bringing about a change by a trade rival to an
existing product to such an extent is what is impermissible. This cannot
remotely be even described as a case of honest concurrent use or an
endeavour to adopt a sign which is a “safe distance away” [Specsavers
International Healthcare Ltd. & Ors. vs. Asda Stores Ltd. (Supra)]. In this
background, the decision in Glaxo Wellcome UK Ltd. and Anr. vs. Sandoz
Ltd. and Ors. (2019) EWHC 2545, cited by the respondent, is inapposite
since this was a case of pharmaceutical drugs where the plaintiff’s own
witness did not associate the colour purple with the plaintiff. As such,
there was no exclusivity attached with purple insofar as the product of
the plaintiff was concerned.
29. Ordinarily, all confusion is damaging as it dilutes the mark. If the
respondent is found to be taking a free ride or is trying to enjoy the
goodwill and reputation of a particular mark or even an essential and
prominent indicia thereof, the same is liable to be protected. Taking
unfair advantage or parasitism which may lead to the confusion or
deception or the likelihood thereof is simply unacceptable. Such conduct,
notwithstanding the branding, especially when done by a competitor,
cannot be innocent but rather a deliberate misappropriation of brand
equity and calculated commercial strategy squarely designed to create
25
confusion and deception or the likelihood thereof in the minds of
consumers. “By an inductive process, one may conclude that every one of
those perfectly innocent things when combined in a series has produced
something which is the reverse of innocent”. [Jones vs. Hallworth (Supra) @
Pg 234]
30. It is true that it is not a pre-requisite to liability that the plaintiff must be
able to show that the defendant intended to pass off their goods as that
of the plaintiff. It is equally true as argued by the respondent that motive
cannot per se afford a cause of action. However, ill motive or bad faith
can always tilt the scale in such matters in establishing the probability of
deception. A conscious decision to live so dangerously close to the
petitioner is impermissible. In cases where there is intent to deceive, a
Court would more readily infer that the object has been achieved i.e. the
intent to deceive ripens into actual deceit. This is not the sort of conduct
which even at the interlocutory stage is to be disregarded. What was the
respondent thinking in effecting such changes? In someways, the entire
exercise undertaken by the respondent can best be described as ill-
advised, unimaginative and presumptuous. One would not be mistaken
to conclude that the respondent had only the petitioner and its product
in mind and was solely inspired by the petitioner in causing such
changes. To add, the false claim of user from April 2023, false
representation made regarding the entity named Unifieder, removal of
incriminating evidence during the hearing i.e. posts on facebook,
26
website- www.elitobatteries.com showing blue batteries taken down, the
Linkedin unifieder which though placed at the time of the opening
submissions had been taken down during the course of hearing and the
self-contradictory statements in the affidavit all suggest bad faith with
the ultimate aim to create confusing similarity. Taken as a whole, the
respondent as a trade rival has in changing its trade dress miscalculated
the degree of resemblances. Keeping the above principles in mind and in
balancing the competing interests, the Rubicon or Lakshmanrekha has
been crossed.
31. There exists unexpected and unexplained similarity in the two products
which cannot be overlooked. Obviously, there is a deliberate attempt to
steer close towards approximation of the petitioner’s get up and trade
dress. In this context, the decision in Cadbury Schweppes v. Pub Squash,
1981 26 RPC 429, cited by the respondent is distinguishable. The
disputes between the parties pertained to advertisement campaigns. The
appellant admitted that there was no significant deception or confusion
and was unable to on evidence substantiate the fact that the public
associated yellow cans with its product Solo.
32. Ultimately, it is the cumulative and wholesome effect of the detailed
resemblances i.e. colour Red, words EL and the shattered O device all of
which form to be a prominent, integral and distinctive part of the
petitioner’s trade dress and get up taken holistically which prima facie
contribute to a positive case for the grant of protective orders. [R.
27
Johnston & Co. vs. Archibald Orr Ewing & Co. (1882) 7 App. Cas. 219 @
232-233 and ITC Ltd. vs. Britannia Industries Ltd. 2023 SCC OnLine Mad
6972 (DB) @ Paras 27 – 33, Beiersdorf AG vs. R S H Global Private Limited
& Anr. (unreported decision of High Court at Delhi in C.S. COMM
48/2021 @ Para 9)]. In this connection, the decision in Schweppes vs.
Gibbens 1905 RPC Vol-XXII no.26 page 601, cited by the respondent, is
distinguishable. In this case the use of the product was for a limited
period of six years. The primary question was whether a barman would
be deceived by the label. There was no dispute as to the fact that the
soda bottles were strikingly identical. However, in view of the name
explicitly appearing in the rival bottle, as a matter of fact it was found
that there was no question of passing off. This decision may very well
require reconsideration in the light of the pronouncements in Cadila
Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. (Supra) and Euro Solo
Energy Systems Limited Vs Eveready Industries Limited (Supra)
pertaining to the relevance of English decisions in an Indian scenario.
33. In such cases, the real injury is in the gradual whittling away or
dispersion of the identity or indicia associated upon the public mind with
the petitioner and their products. In Emami Limited vs. Hindustan
Unilever Limited 2024 SCC OnLine Cal 3579, this Court had held as
follows:
“20. A conscious and deliberate decision by a competitor in adopting a
leading, prominent and essential component of a trade rival while
seeking to change the name of its existing brand is not something which
can be disregarded. In choosing the word “Glow and Handsome”, there
28is also an element of taking unfair advantage of a leading, prominent
and essential feature of the petitioner’s mark which deceives or is likely
to deceive. Nobody has any right to represent the goods of somebody
else. In doing so, the rival takes a “free ride”. There is no line between
permissible free riding and impermissible free riding. All “free riding” is
unfair. [L’Oréal v. Bellure (No. 2) [2010] EWCA Civ 535]. Any confusion
or deception is damaging. It results in diluting the mark. To some, this
may be fair competition or aggressive marketing. To others, trading must
not only be honest but must not even unintentionally be unfair.”
34. In carrying out the above exercise, the Court is also bound to consider
inter alia the nature of the market in which the goods in question are
sold [Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (Supra)].
Confusion and deception vary from product to product. [Colgate
Palmolive Company & Another vs. Anchor Health and Beauty Care Pvt.
Ltd. @ Para 57]. One must take customers as they are found including
the imprudent and not so educated. It is not only the diligent or literate
or conscious customers which matter. Notwithstanding, the fact that
batteries are purchased with care and caution, they are also purchased
by lorry drivers, truck drivers, taxi drivers, mechanics and other not so
educated persons living in remote corners of the country and they cannot
be disregarded.
35. Public interest is of course an underlying factor which ought to be
weighed in considering whether the consumers are going to be deceived
and the likelihood of the same. It is not in public interest to encourage
free-riding, parasitism or filching. At the end, there must also be an
29
element of fairness in the actions of any competitor. This principle has
been even more broadly stated:
“In the interests of fair trading and in the interest of all who may wish to
buy or sell goods the law recognises that certain limitations upon
freedom of action are necessary and desirable. In some situations the law
has had to resolve what might at first appear to be conflicts between
competing rights. In solving the problems which have arisen there has
been no need to resort to any abstruse principles but rather… To the
straightforward principle that trading must not only be honest but must
not even unintentionally be unfair.” [Parker-Knoll vs. Knoll
International (1962) R.P.C 265 at 278].
36. In view of the above, the petitioner has been able to make out a strong
case on merits. The balance of convenience is overwhelmingly in favour
of the orders being passed as prayed for. Prima facie, on an examination
of the rival contentions, there is more than an arguable case at this stage
which has been made out by the petitioner which deserves consideration.
The respondent has launched its product at its own risk and ought to
have been fully aware of all consequences. (Allergan Inc. vs. Milment
Oftho Industries, AIR 1998 Cal 261).
37. Accordingly, there shall be an order in terms of prayers (a) and (b) of the
Notice of Motion. Since the respondent is an existing player in the
market, the respondent is granted one month from date to take
necessary steps to comply with this order.
38. With the above directions, GA/1/2025 in IP-COM/18/2025 stands
disposed of. The parties are at liberty to take expeditious steps for early
hearing of the suit.
(Ravi Krishan Kapur, J.)
30
Later:-
After pronouncement of the judgment, Mr. Das, Advocate appearing on
behalf of the respondent prays that the time to carry out the order be extended
by a period of three months and not one month. This is opposed by the
petitioner.
The prayer is considered.
Accordingly, the time to implement this order is extended by a period of
two months from date.
(Ravi Krishan Kapur, J.)
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