Safiya Malik

The High Court of Calcutta Single Bench of Justice Ravi Krishan Kapur has granted interim relief in a commercial intellectual property dispute involving claims of passing off. The Court directed that the respondent shall take steps to comply with protective orders within a period of two months. It held that the petitioner has made out a strong prima facie case on merits warranting protection against use of its distinctive trade dress and mark elements allegedly imitated by a competitor.

Specifically, the Court found that there exists "unexpected and unexplained similarity" between the rival products which could not be disregarded at the interlocutory stage. It further noted that the "cumulative and wholesome effect of the detailed resemblances" in trade dress including the colour Red, the use of the term "EL," and a shattered O device, all contribute to a strong case for passing off. The Bench held that the respondent had launched its product at its own risk and "ought to have been fully aware of all consequences."

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Accordingly, the Court disposed of the application with directions granting interim relief to the petitioner, with extended time to the respondent for compliance.

The matter arises from a suit for infringement and passing off initiated by the petitioner, a century-old company engaged in the manufacture and marketing of lead-acid batteries under the trademark "EXIDE". Incorporated originally as Associated Battery Makers (Eastern) Coal Ltd., the petitioner operates extensively in the Indian and international markets and claims to have developed considerable reputation and goodwill in relation to its marks and trade dress.

According to the petition, the petitioner has historically used the trademark "EXIDE," and more recently, additional marks such as "EL" and a distinctive "shattered O" device. The use of the colour Red, particularly in combination with White, is claimed to be a distinctive part of the petitioner’s trade dress and brand identity. The petitioner asserted proprietary rights over this colour scheme by virtue of long-standing use for over a century.

The petitioner also submitted registrations for the word mark "EL," as well as composite label marks such as "EXIDE EL TUBULAR." The adoption of the EL mark was traced back to 1987, and the shattered O device to 1973. These trademarks have been allegedly used extensively in packaging, advertising, hoardings, social media, and other promotional materials, thereby acting as source identifiers.

The dispute in question arose following the launch of the respondent's product "ELITO" in a predominantly Red trade dress, bearing the term "EL" and a similar shattered O device. Initially, the respondent had introduced the ELITO product in blue packaging. However, subsequent iterations of the product were launched in Red, leading to the present legal challenge.

The petitioner claimed that these changes were not coincidental but rather calculated efforts to imitate the petitioner’s trade dress and misappropriate its goodwill. It was alleged that the respondent, a direct competitor operating under the "AMARON" mark, had historically used Green colour for its battery products and marketing. The petitioner contended that the shift to Red packaging by the respondent constituted an act of passing off.

In response, the respondent argued that no proprietary rights could exist in a single colour, asserting that Red was commonly used in the industry and by several other battery brands such as LIVGUARD, XENON, TARZO, and VOLTAFUEL. The respondent further contended that the petitioner itself used multiple colours in its products, and that no consumer decision to purchase a battery would be based solely on colour.

Regarding the change in colour scheme, the respondent submitted an affidavit by its Chief Marketing Officer asserting that feedback from overseas dealers indicated that the earlier blue version did not stand out. As a result, a more "bright and vibrant" colour was chosen, with Red ultimately selected. The affidavit also cited difficulties customers had in pronouncing the brand name "ELITO" due to the stylisation of the "E".

The petitioner challenged the credibility of this explanation, pointing out that the affidavit was self-serving and unsupported by any documentation from the overseas distributor. Moreover, it alleged contradictions in the respondent’s arguments: while asserting that colour had no role in battery sales, the respondent had simultaneously changed colours allegedly to stand out in the market.

Images comparing the rival products were submitted in court, stating the similarities in the battery face, outer box, and visual elements. The petitioner argued that these features cumulatively created a deceptive resemblance.

Both parties cited extensive case law, with the petitioner relying on authorities including Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001), Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd. (2004), and Emami Limited vs. Hindustan Unilever Limited (2024). The respondent cited decisions such as Kellogg Company vs. Pravin Kumar and Wal-Mart Stores vs. Samara Bros to support its case.

The court considered all submissions and reserved judgment on 14 July 2025. The final order was pronounced on 24 July 2025.

The Court recorded that "passing off is primarily a question of fact" and noted that "each of the ingredients of the claim requires the necessary facts along with the evidence to be established." Quoting the classical trinity test of passing off, the Court observed that the plaintiff must prove "reputation, misrepresentation and damage."

On the element of reputation, the Court stated: "Reputation is the level of awareness of a mark or get up on the concerned public... Time has its own role to play in such matters and this fact cannot be discounted." It held that "both goodwill and reputation are inter-linked" and recognised the petitioner’s century-long use of the colour Red in the battery industry.

Addressing the colour aspect, the Court stated: "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." It clarified: "This is by no stretch of imagination meant to create a monopoly over the colour Red in favour of the petitioner." However, it found that "prima facie, the colour Red appears to be a prominent, integral and distinctive feature of the petitioner".

The Court noted that while colour marks face hurdles in establishing secondary meaning, *"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."

With respect to the respondent’s explanation for changing the colour from Blue to Red, the Court remarked: "Out of all the bright and vibrant colours in the canvas of life, the respondent chooses Red... Not a shade deeper. Nor a shade lighter." It added: "There is 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."

Further, the Court characterised the affidavit filed by the respondent as "irreconcilable, self-contradictory" and found that it amounted to "committing hara-kiri." It noted the lack of corroborative evidence from the distributor and recorded that the attempt to withdraw or downplay the affidavit in later submissions was "too little, too late."

The Court concluded: "Prima facie, there is bad faith implicit in the conduct of the respondent... The desperate attempt to resile... suggests bad faith with the ultimate aim to create confusing similarity."

Addressing trade dress similarity, the Court stated: "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."

In conclusion, the Court remarked: "Keeping the above principles in mind and in balancing the competing interests, the Rubicon or Lakshmanrekha has been crossed."

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The Court issued the following direction: "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."

Subsequently, the Court extended the time for compliance. It recorded: "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... The prayer is considered." The Court then directed: "Accordingly, the time to implement this order is extended by a period of two months from date."

It also observed: "The respondent has launched its product at its own risk and ought to have been fully aware of all consequences." The Court concluded the matter with: "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."

Advocates Representing the Parties:

For the Petitioners: 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 Respondents: 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, 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

Case Title: Exide Industries Limited vs. Amara Raja Energy and Mobility Limited

Case Number: IA NO. GA-COM/1/2025 in IP-COM/18/2025

Bench: Justice Ravi Krishan Kapur