Justice Ravi Krishan Kapur, Calcutta High Court
'Lakshmanrekha' Has Been Crossed; Unexpected Similarity Can’t Be Overlooked: Calcutta High Court Allows Plea Of Exide Industries In Trade Dress Infringement Case
|The Calcutta High Court said that 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.
The Calcutta High Court has decided a case in favour of Exide Industries Limited, alleging trade dress infringement by Amara Raja Energy and Mobility Limited.
The Court was dealing with a Suit filed by Exide, seeking for infringement and passing off against the aforesaid company.
A Single Bench of Justice Ravi Krishan Kapur remarked, “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, 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.”
The Bench said that 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.
Senior Advocates S.N. Mookherjee, Ranjan Bachawat, Ratnanko Banerji, Sayantan Bose, Rudraman Bhattacharyya, and Debnath Ghosh represented the Petitioner while Senior Advocates Jayanta Kumar Mitra, Sudipto Sarkar, Tilak Bose, and Suryaneel Das represented the Respondent.
Case Background
The Petitioner-Exide has been traditionally engaged in the manufacture and marketing of lead acid batteries for use in vehicles. It is a pioneer in such business and has been selling batteries both in India and abroad under the trademark ‘EXIDE’ since the year 1920. With the passage of time, it became one of the largest Power Storage Solutions Company in South-East Asia. It 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. It has always used a distinctive colour theme which is in predominantly Red and White colour for its products and incidentally uses other colours.
The Respondent was a trade rival and primary competitor of Exide, enjoying a significant market share in the storage battery, lead acid battery and automated battery industry both internationally and in the domestic market. It sells its products under the mark ‘AMARON’ and since inception, always sold its products in a predominantly green colour. The crux of the disputes between the parties pertained to the launch of a product ‘ELITO’ by the Respondent, in predominantly Red trade dress and also bearing a red and white combination, along with a shattered ‘O’ device. It was alleged that the impugned product comprises of deceptive similarities in the trade dress and the get up which are exclusively associated with the Petitioner.
Court’s Observations
The High Court in the above regard, observed, “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.”
The Court added that 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”. … 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 finally 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”, it noted.
The Court was of the view that 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 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. … 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”, it further enunciated.
The Court said that 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 confusion and deception or the likelihood thereof in the minds of consumers”, it also observed.
Conclusion
Furthermore, the Court noted that there exists unexpected and unexplained similarity in the two products which cannot be overlooked and there is a deliberate attempt to steer close towards approximation of the Petitioner’s get up and trade dress.
“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”, it said.
The Court remarked that 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.
“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. … 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”, it concluded.
Accordingly, the High Court granted time to the Respondent to take necessary steps to comply with the Order.
Cause Title- Exide Industries Limited v. Amara Raja Energy and Mobility Limited (Case Number: IA NO. GA-COM/1/2025; IP-COM/18/2025)
Appearance:
Petitioner: Senior Advocates S.N. Mookherjee, Ranjan Bachawat, Ratnanko Banerji, Sayantan Bose, Rudraman Bhattacharyya, Debnath Ghosh, Advocates Sayan Roychowdhury, Dhruv Chadha, Sagnik Bose, Paritosh Sinha, K. K. Pandey, Suhrita Majumdar, Kironjit B. Majumder, Pooja Sett, Dipro Dawn, Sayani De, and Mallika Bothra.
Respondent: Senior Advocates Jayanta Kumar Mitra, Sudipto Sarkar, Tilak Bose, Suryaneel Das, Subhasis Sengupta, Adarsh Ramanujun, Rohit Banerjee, Subhojit Sengupta, Ankit Virmani, Sarosij Dasgupta, Satyaki Mukherjee, Amrita Panja Moulick, Ruchika Agarwala, Akash Munshi, Aditya Mondal, Siddhartha Banerjee, D. Kar, Anish Gupta, and Chiranjit Pal.