The Calcutta High Court has found that Exide Industries (respondent) has been marketing and selling automotive batteries packaging the same in red colour dress, where the body of the battery as well as the packaging contains the red colour dress, and it has been marketing and selling automotive batteries in red colour dress prior to the appellant doing so is established. Accordingly, the Court upheld the interim injunction granted by the Single Judge in favour of Exide Industries.
The Division Bench comprising Justice Debangsu Basak and Justice Md. Shabbar Rashidi observed that the respondent had been using the colour red as a distinctive feature of its product and established prior user of the colour red in its trade dress much prior to the appellant. It noted that the parties had acknowledged that colour was an important source identifier, and the appellant had consciously worked to build a particular colour association with green to distinguish itself from the respondent’s red. By running a campaign claiming green was better than red, the appellant had excluded itself from the colour red as a source identifier, and the colour red stood associated exclusively with the respondent.
The Bench observed that the competing boxes and batteries predominantly use the colour red, and the packaging and trade dress are sufficiently similar so as to deceive a consumer being a part of the general public. The visual test laid down in Satyam Infoway Ltd. Versus Siffynet Solutions Private Limited [2004 Volume 6 SCC 145] stands satisfied in favour of the respondent, as the trade dress and get up presently obtaining is likely to confuse the actual or potential customer of an automotive battery. The Bench found no material to disagree with the Single Judge that the shade of red used by the appellant is the exact same shade of red used by the respondent.
Further, the Bench observed that the so-called added matters are not sufficient to distinguish between the two products; “Elito” and “Exide” are both 5-letter words, both have a shattered “O” at the end, and both are in white with a red background. It held that the appellant has consciously tried to copy and to come as close as possible to the pre-existing trade dress of the respondent. The Bench also noted that High Courts have protected the user of a colour when it has found that its user over a period of time led to such colour assuming distinction vis-a-vis the user and worked as a source identifier.
Briefly, the parties to the suit are the only major players in the field of manufacture and sale of automotive batteries in India and are direct competitors. The respondent (Exide Industries Limited) has been marketing and selling automotive batteries in a red colour dress prior to the appellant (Amara Raja Energy and Mobility Limited) doing so. The respondent holds a registered trademark “EL” with user claimed since 1987 and a registered trademark of a shattered “O” with user claimed since 1996.
The appellant had initially chosen the colour green as its source identifier and ran a social media campaign during the COVID period trying to demean and denigrate the colour red as against the colour green, wherein members of the public associated the respondent with the colour red and the appellant with the colour green. The appellant had initially adopted “LIT” with the Greek alphabet Xi as “Elito” in a blue trade dress for the foreign market, applying for registration in India on June 27, 2022.
Subsequently, claiming that the colour blue would not stand out, the appellant applied for registration of the mark “Elito” on December 20, 2022, and launched automotive batteries in the colour red in India in 2023. The respondent filed a suit for infringement of registered trademark and passing off, wherein the Single Judge granted an interim injunction in favour of the respondent.
Appearances:
Senior Advocates Jayanta Kumar Mitra, Abhrajit Mitra, and Siddharth Luthra, along with Advocates Ankit Virmani, Sarosij Dasgupta, Nandini Khaitan, Shreya Singh, Pratik Shanu, Vasundhara Bakhru, Ruchika Agarwala, Suryaneel Das, and Oindrila Ghoshal, for the Appellant
Senior Advocates S.N. Mookherjee, Ranjan Bachawat, Ratnanko Banerjee, Sayantan Bose, Debnath Ghosh, and Rudraman Bhattacharyya, along with Advocates Sayan Roy Choudhary, Dhruv Chaddha, Sagnik Bose, Paritosh Sinha, K. K. Pandey, Suhrita Majumdar, Kironjit B. Majumder, Sonia Nandy, Dipro Dawn, Sayani De, and Mallika Bothra, for the Respondent
