[Cites 5, Cited by 0]
Calcutta High Court
Amara Raja Energy And Mobility Limited vs Exide Industries Limited on 2 April, 2026
Author: Debangsu Basak
Bench: Debangsu Basak
1
IN THE HIGH COURT AT CALCUTTA
INTELLECTUAL PROPERTY RIGHTS APPELLATE DIVISION
ORIGINAL SIDE
Present:
The Hon'ble Justice Debangsu Basak
And
The Hon'ble Justice Md. Shabbar Rashidi
TEMPAPO-IPD/7/2025
IA NO. GA-COM/1/2025, GA-COM/2/2025
Amara Raja Energy and Mobility Limited
Vs.
Exide Industries Limited
For the Appellant :Mr. Jayanta Kumar Mitra, Sr. Adv.
Mr. Abhrajit Mitra, Sr. Adv.
Mr. Siddharth Luthra, Sr. Adv.
Mr. Ankit Virmani, Adv.
Mr. Sarosij Dasgupta, Adv.
Ms. Nandini Khaitan, Adv.
Ms. Shreya Singh, Adv.
Mr. Pratik Shanu, Adv.
Ms. Vasundhara Bakhru, Adv.
Ms. Ruchika Agarwala, Adv.
Mr. Suryaneel Das, Adv.
Ms. Oindrila Ghoshal, Adv.
For the Respondent :Mr. S.N. Mookherjee, Sr. Adv.
Mr. Ranjan Bachawat, Sr. Adv.
Mr. Ratnanko Banerjee, Sr. Adv.
Mr. Sayantan Bose, Sr. Adv.
Mr. Debnath Ghosh, Sr. Adv.
Mr. Rudraman Bhattacharyya, Sr. Adv.
Mr. Sayan Roy Choudhary, Adv.
Mr. Dhruv Chaddha, Adv.
Mr. Sagnik Bose, Adv.
Mr. Paritosh Sinha, Adv.
Mr. K. K. Pandey, Adv.
Ms. Suhrita Majumdar, Adv.
Mr. Kironjit B. Majumder, Adv.
Ms. Sonia Nandy, Adv.
Mr. Dipro Dawn, Adv.
Ms. Sayani De, Adv.
Ms. Mallika Bothra, Adv.
Hearing Concluded on : February 10, 2026
Judgement on : April 02, 2026
DEBANGSU BASAK, J.:-
1. Appellant has assailed the judgement and order dated
July 25, 2025 passed in IA GA (COM) No. 1 of 2025 in I.P.
(COM) No. 18 of 2025.
2. By the impugned judgement and order learned Single
Judge has granted injunctions in terms of prayers (a) and (b)
of the Notice of Motion.
3. Learned Senior Advocate appearing for the appellant
submitted that, prayers (a) and (b) of the paint and the
injunction petition are defective. He has referred to such
prayers. He has relied upon 2008 Volume 17 Supreme Court
Cases 491 (Bachhaj Nahar vs. Nilima Mandal and Anr.) to
contend that, in a civil suit relief can only be granted with
reference to the prayers made in the pleadings.
4. Learned Senior Advocate appearing for the appellant
has contended that, grant of injunction as done by the learned
Single Judge, allows the respondent a monopoly over the
entire red colour in all its shades to be used as a trade dress.
He has contended that, learned Single Judge has granted
prayer (a) contrary to the findings in the impugned judgement
and order.
5. Learned Senior Advocate appearing for the appellant
has referred to various portions of the impugned judgement
and order. He has submitted that, although the learned Single
Judge has held that, respondent does not have monopoly over
the colour red, respondent did not claim monopoly over the
colour red during hearing and that, cumulative effect of the
use of the colour red, "EL" and shattered O all forming a
prominent, integral and distinctive part of the trade dress of
the respondent taken historically both contribute to a case for
grant of protective orders. He has contended that, some of the
findings are contrary to the materials available on record.
6. Learned Senior Advocate appearing for the appellant
has referred to prayer (b) of the Notice of Motion. He has
contended that, the prayer is defective. In any event,
respondent neither employs the use of the EL mark nor the
shattered O device. He has contended that, at best, the case of
the plaintiff was limited to passing off.
7. Learned Senior Advocate appearing for the appellant
has contended that there was no pleading with regard to the
goodwill or reputation enjoyed by any specific mark. He has
pointed out that, not all the 64 trademarks in annexure S
contains the colour red. Only 2 of the 64 trademarks have
either the shattered O mark and EL as elements. Only one of
the trademarks find mention in the impugned judgement and
order. However, learned Single Judge has not found any
goodwill or reputation attached to such trademark.
8. Learned Senior Advocate appearing for the appellant
has contended that, no person can have a monopoly over a
single colour in the industry specially when there is no
secondary meaning to the colour as it is used by rival brands.
He has referred to documents of such user. Appellant had
used other colours apart from red. Therefore, according to him
none of the parties can have monopoly on one colour.
9. Learned Senior Advocate appearing for the appellant
has referred to the findings of the learned Single Judge with
regard to the use of the colour red by the respondent. He has
submitted that, such findings are incorrect. He has contended
that, the claim of consistent use of red colour trade dress
since 1920 is belied by the documents produced by the
respondent itself.
10. Learned Senior Advocate appearing for the appellant
has contended that, initially batteries were produced in black
colour. The early 2000 automotive batteries were produced in
white colour casing so as to enable determination of the
amount of distilled water in the cells of the battery. He has
referred to various annexures and contended that, batteries of
various trade dresses are not predominantly red. He has
referred to the annual report of the respondent for the year
March 31, 2020 and contended that, the respondent
themselves show that many automotive batteries produced are
in white, contrary to the claim of predominant red trade dress.
He has pointed out that, the respondent is also making white
batteries.
11. Learned Senior Advocate appearing for the appellant
has contended that, the learned Single Judge erred in not
applying the ratio of 835F.3d 1238 (Forney Indus Versus
Daco of Mo). According to him, the same principles would
apply as the respondent has been inconsistent in the trade
dress.
12. Learned Senior Advocate appearing for the appellant
has contended that, no sales figures from user of red trade
dress was put forth by the respondent before the learned
Single Judge. He has referred to various documents relied on
by the respondent in this regard. He has referred to Forney
Indus (supra) in this regard.
13. Learned Senior Advocate appearing for the appellant
has relied upon 2024 Volume 2 Supreme Court Cases 577
(Brihan Karan Sugar Syndicate Private Limited Versus
Yashwantrao Mohite Krushna Sahakari Sakhar
Karkhana) and 2024 OJ No. 4699 (Biosteel Inc. Versus
Cizzle Brands) and contended that, materials placed on
record do not show that, the respondent had acquired any
reputation in the red trade dress.
14. Learned Senior Advocate appearing for the appellant
has contended that, learned Single Judge did not find that the
colour red in batteries has acquired secondary meaning so as
to mean that the respondent could exclusively use it without
any relation to their trade mark Exide. He has contended that,
respondent employs the use of multiple trade dresses.
15. Learned Senior Advocate appearing for the appellant
has relied upon Kerly's Law of Trade Marks and Trade
Names 17th Edition and contended that, the respondent did
not prove its reputation on the red trade dress. According to
him, the respondent cannot claim that, the goodwill of the
respondent rests with the tradename Exide and separately
with the red colour and separately with EL and again
separately with the shattered O device mark.
16. Learned Senior Advocate appearing for the appellant
has contended that, there is no reasoning as to why EL and
shattered O device mark have significant goodwill in the
automotive battery segment. He has contended that, there is
no finding of goodwill in relation to the registered marks
placed on record by the respondent. He has pointed out that,
all marks of EL applied to non-products of storage batteries
and not automotive batteries. Respondent has styled EL
differently.
17. Learned Senior Advocate appearing for the appellant
has contended that there is no finding by the learned Single
Judge with regard to goodwill qua the registered mark. He has
contended that the mark of EL apply to non products of
storage batteries and not to automotive batteries. In every
battery utilizing EL as shown by the respondent itself, the
respondent has used EL on batteries with different style and
therefore, the same does not have the ability to generate a
goodwill. He has also pointed out that all invoices do not bear
the shattered O device mark. In this regard, he has referred to
paragraph 14 of Brihan Karan Sugar Syndicate Private
Limited (supra). He has contended that, no material has been
placed on record to show considerable sales by the
respondent.
18. On the allegations of deception leveled by the
respondent before the learned Single Judge, learned Senior
Advocate appearing for the appellant has contended that,
customers involved do not buy batteries by colours unlike
Fast Moving Consumer Goods (FMCG) products. He has
contended that the decision to buy battery is based on what is
already pre-fixed in the vehicle or what is appropriately
available for the vehicle model in question along with the
consideration of the price, if any.
19. Learned Senior Advocate appearing for the appellant
has contended that the contention of the respondent that
automotive battery is purchased casually by driver or
mechanic who are not educated and may not pay attention to
verbal brands and would buy the batteries of red colour is
unfounded. The two products, do not have any similarity as to
the packaging with the trade origin being mentioned.
20. Learned Senior Advocate appearing for the appellant
has relied upon 2004 Volume 6 SCC 145 (Satyam Infoway
Ltd. Versus Siffynet Solutions Private Limited) and
contended that, learned Single Judge has failed to give any
reason as to why the dissimilarities and the similarities in the
packaging and getup of the rival trade dress would cause
consumer confusion. He has contended that, the findings of
the learned Single Judge that, the shade of colour red used by
the appellant is the exact same shade of red used by the
respondent is not correct. He has contended that, the two
boxes show that there is no common factor other than the
employment of the colour red. According to him, learned
Single Judge has failed to take note of the explicit origin
identifiers used by both the parities in the packaging.
21. Learned Senior Advocate appearing for the appellant
has contended that despite the learned Single Judge noting
the relevant law on added matters and deception in passing
off, learned Single Judge has not returned any finding with
regard thereto. He has contended that, apart from the parties
using the colour red, learned Single Judge has not noted any
similarity between trade dress employed by both the parties.
He has contended that, added matters test has not been
applied. According to him, when, the matters are added, the
same would be enough to distinguish the origin of the product
and that, adding a matter would escape liability of passing off.
22. Learned Senior Advocate appearing for the appellant
has contended that, the size of the products are different. He
has referred to the distinguishing features between the two
products.
23. With regard to the nature of customers, learned Senior
Advocate appearing for the appellant has contended that,
considering the act of passing off, the learned Single Judge
had lost sight of the fact that an average customer purchasing
a battery is contrary to actual market practice. Learned Judge
had lost sight of the pleadings of the respondent itself. He has
referred to various materials on record. He has contended
that, the respondent itself claimed that it supplies to global
giants and that, vehicles come with pre-fitted batteries. He
has contended that, batteries are not bought off the self but
with the assistance of a dedicated shop where assistance is
rendered by the shopkeepers. The choice of the battery
purchased is dependent upon various factors and is not
bought solely on the basis of colour. Illiterate population who
buy batteries are not misled by the colour. He has contended
that, the respondent has claimed goodwill in the market on
the basis of the trade mark Exide. Consequently, the two
claims of the goodwill of the respondent have to be read as
opposing each other.
24. Learned Senior Advocate appearing for the appellant
has contended that, the findings of the learned Single Judge
that the appellant was dishonest is incorrect. He has
contended that, the reason for adoption of the colour red by
the appellant is irrelevant. Secondly, the so called
insufficiency of the answer in the affidavit of the marketing
officer is also irrelevant. Learned Single Judge, according to
the appellant has misunderstood the contention of the
appellant. He has contended that the statements of
irrelevance of colour red was made in the light of the inability
of the respondent to establish goodwill in colour red and also
in the addition of distinguishing feature by the appellant on
the packaging and trade dress.
25. Learned Senior Advocate appearing for the appellant
has contended that, in any event the reason for adoption of
the colour red was clear in the affidavit of the marketing
officer. Appellant has changed from blue to red since, red was
more bright and vibrant colour after receiving feedback that
the blue colour was not making the battery stand out.
26. Relying upon 2005 SCC Online Del 1439 (Colgate
Palmolive Company Limited & Another Versus Patel &
Another) learned Senior Advocate appearing for the appellant
has contended that, colour of packaging plays several roles.
Colour makes the product look visually appealing and convey
specific emotions. The use of vibrant and bright colour by the
appellant does not by itself imply that the appellant believes
that a customer would decide to buy an automotive battery
based solely or even primarily by looking at the colour of the
packaging.
27. Learned Senior Advocate appearing for the appellant
has contended that, the learned Single Judge did not give any
reason as to why the affidavit of the senior officer of the
appellant was considered as self-serving. He has contended
that, use of the blue colour abroad and the subsequent use of
the colour red has been sufficiently corroborated by significant
evidence. He has contended that the appellant was not
manufacturing in the colour red and therefore, it became the
obvious choice.
28. Learned Senior Advocate appearing for the appellant
has contended that, finding of the learned Single Judge that
the appellant has imitated the product of the respondent is
erroneous. Learned Single Judge came to such a conclusion
without comparing the two products visually or phonetically.
In this regard, he has relied upon 2001 Volume 5 Supreme
Court Cases 73 (Cadila Healthcare Limited Versus Cadila
Pharmaceuticals Limited).
29. Learned Senior Advocate appearing for the respondent
has contended that, the respondent filed the suit for
infringement and passing off. He has contended that, the
appellant has infringed the word mark EL, the registered trade
mark shattered O of the respondent. Appellant has passed of
Exide's prior adopted, prior used and registered trade mark
EL and shattered O and brand name of Exide. Appellant has
also infringed the copyright of the respondent in the artistic
work of, shattered O and Exide. He has contended that, the
distinguishing features of the appellant in the registered trade
mark have been adopted by the appellant in similar shape and
sized batteries and battery packaging in pre-dominantly red
colour trade dress, as used by the respondent. He has
contended that Elito is a five letter word similar to Exide and
is depicted in a white colour font on a red battery identical to
Exide. Elito has further adopted the shattered O devise and
the trade mark EL belonging to Exide.
30. Learned Senior Advocate appearing for the respondent
has contended that, respondent was using red colour for its
battery since 1920. In this regard, he has referred to various
documents on record. He has contended that, manner and
mode of extensive use by Exide of the colour red in the
industry related to storage batteries and more specifically of
red batteries/automotive batteries. According to the
respondent, this had led to the colour red functioning as the
source identifier for the product of the respondent.
31. Learned Senior Advocate appearing for the respondent
has contended that the colour red and white combination has
become distinguishing feature of the brand Exide. He has
relied upon 2003 27 ETC 478 (Colgate Palmolive Company
and Another Versus Anchor Health and Beauty Care
Private Limited) and 2009 SCC Online Calcutta 1991
(Euro-Solo Energy Systems Limited Versus Eveready
Industries India Limited) is support of his contentions.
32. Learned Senior Advocate appearing for the respondent
has contended that, the appellant identified itself with the
colour green, while the respondent identified itself with the
colour red. Infact, appellant had always distinguished itself
from the colour red and never used any product in the colour
red prior to the launch of Elito. He has referred to the
advertisements made by the appellant to demean and
denigrate the colour red on May 13, 2020, May 15, 2020, May
20, 2020, and February 14, 2025. He has referred to the
general comments made by the public in this regard. He has
contended that appellant has referred to colour green as its
signature colour in its annual report.
33. Learned Senior Advocate appearing for the respondent
has contended that, appellant is a shareholder of the
respondent and was privy to material information of the
respondent. He has contended that, appellant adopted the
impugned mark "Elito" in order to deceive. Appellant
had initially adopted LIT with two decisive elements including
greek alphabet Xi (i.e., "Ξ") as "Elito" . Appellant had
applied for registration of such mark in India on June 27,
2022 as proposed to be used. Appellant had filed the affidavit
that Xi (i.e., "Ξ") is difficult to read and that it received feedback
in some meetings in December 2021 and September 2022,
that blue did not stand out in the clutter. According to him,
appellant has admitted that colour was important in the sale
of batteries.
34. Learned Senior Advocate appearing for the respondent
has submitted that on December 20, 2022 appellant had filed
another application for registration of the mark "Elito"
. He has pointed out that, although the feedback was
purportedly for foreign market in 2022 the appellant did not
make any change in the foreign market. Appellant had
continued to sell blue batteries in the foreign market till May
2024. Appellant has claimed to have launched the colour red
in India in 2023. He has referred to the multiple similarities
used by the appellant namely alteration of Xi (i.e., "Ξ") to E to
become EL, use of shattered O at the end of "Elito" ,
pre-dominantly red colour packaging trade dress, red and
white colour combination, adoption of brand new white on a
red background and use of five letters in Elito in order to
match that of Exide.
35. Relying upon 1889 RPC 531-538 (Slazenger & Sons
vs. Feltham & Co.), [1882] 7 App. Cas. 219 (R. Johnston &
Co. vs. Archibald Orr Ewing & Co.), [1981] 26 RPC 429-
497 (Cadbury Schweppes Pty Ltd and Others vs. Pub
Squash Co Pty Ltd.) and 809 F.2d 1378 (First Brands
Corporation Versus Fred Meyer, Inc.) learned Senior
Advocate appearing for the respondent has contended that,
multiple similarities point to the calculated efforts in bad faith
to sail as close as possible to Exide and the same is unfair.
36. Relying upon 1897 RPC Volume XIV page 225-238
(Jones vs. Hallworth), learned Senior Advocate appearing for
the respondent has contended that, the use and adoption of
the colour red, which the appellant never did and that such
colour was used extensively by the respondent, is unfair and
amounts to passing off.
37. Learned Senior Advocate appearing for the respondent
has contended that, by reason of the pre-dominantly red
colour packaging used by the respondent, the same deserves
protection owing to its long use. The single distinctive colour
merits protection and such protection have been allowed in
various instances in India and abroad. In this regard, he has
relied upon 2016 SCC Online Bom 7712 (Sapat
International Private Limited Versus Sanwal Chand
Babulal and Another), 2021 (87) PTC 185 (Bom) (Sanjay
Soya Private Limited vs. Narayani Trading
Company),1995 SCC Online US SC 28 (Qualitex Co. vs.
Jacobson Production Co., Inc.), 774 E 2D 1116 (Owens-
Corning Fiberglas Corporation) 1987 SCC Online US CA
FC 1.
38. Relying upon R. Johnshon and Company (supra) and
2023 SCC Online Mad 6972 (ITC Limited vs, Britannia
Industries Ltd.) learned Senior Advocate appearing for the
respondent has contended that, while considering the change
getup of the appellant, the same needs to be considered as a
whole. If on an wholesome analysis the getup is found similar
then the injunction must be granted.
39. Learned Senior Advocate appearing for the respondent
has contended that, the battery is placed on a shelf on the
store, side by side. He has referred to the quality of the buyers
of the batteries. He has contended that, the trade dress of the
appellant is such that it will confuse the buyer. According to
him, a buyer of an automotive battery is not so well educated
in the remote corner of the country so as to distinguish
between the two brands given the present nature of the trade
dress of the appellant and the respondent.
40. Learned Senior Advocate appearing for the respondent
has contended that, appellant has not explained the use of the
colour red. According to him, as a competitor of the
respondent, the appellant was obliged to avoid copying the
trade dress and get up of Exide. In this regard, he has relied
upon R. Johnshon & Co. (supra). Appellant should not have
used the trade mark of the respondent nor should it have
done anything which might allow a buyer to think that the
case of the appellant was that of the respondent. Appellant
should not have done anything so as to obtain the benefit of
the reputation of the respondent. Appellant was bound to be
careful of not adding anything to its product which would
have otherwise resembled the product with the respondent.
Having done so, it shows a deliberate decision by a competitor
in adopting the leading prominent and essential component of
trade rival, which should not be disregarded.
41. Learned Senior Advocate appearing for the respondent
has contended that, the appellant after knowing the character
and circumstances of the market, and with the direct objective
of competing and underselling the respondent with a lower
priced product has tried to approach the trade dress of the
respondent as nearly as possible. The same according to him,
is impermissible. He has referred to the affidavit affirmed by
the appellant and contended that, the stand of the appellant
that it was not required to offer any explanation demonstrate
the lack of bonafides. In this regard, he has relied upon 2004
Volume 6 Supreme Court Cases (Satyam Infoway Ltd. Vs.
Siffynet Solutions (P) Ltd.), 2023 SCC OnLine Mad 6972
(ITC Britannia Industries Ltd. Vs. Britannia Industries
Ltd.) and Cadbury Schweppes Pty Ltd (supra) and First
Brands Corporation (supra) learned Senior Advocate
appearing for the respondent has contended that, the
appellant had launched Elito in blue colour in overseas
market in 2020. Later, on the basis of feedback from the
overseas dealers made in December 2021 and September
2022 that the blue colour did not stand out in the clutter, it
had decided to change. He has contended that, there is no
affidavit or the letter from the overseas dealer in support of
the claim that, E in "Elito" was confusing.
42. Learned Senior Advocate appearing for the respondent
has submitted that the contention of the appellant that colour
blue did not stand out in the clutter and hence red was
adopted is contradicted by the argument that colour is not
relevant when it comes to batteries. The claim of the appellant
for the change of colour is unbelievable and is not of from any
credible documents. He has contended that there is no
affidavit or letter from the dealer in support of such claim. No
explanation has been given as to why the blue did not stand
out. He has claimed that there are several examples of blue
batteries being successful globally. Appellant has not
explained why it continued with blue battery in the overseas
market while it claimed to have adopted the colour red in
India.
43. Learned Senior Advocate appearing for the respondent
has contended that, appellant itself acknowledged that
colour/colour scheme is important to identify the source of
the product. He has contended that the adoption of so many
features of the same product cannot be co-incidence nor is the
same being done by purported effort using the colour red. He
has contended that, trade dress used by the appellant is
calculated to deceive.
44. Learned Senior Advocate appearing for the respondent
has contended that, appellant has acted in bad faith.
Appellant has introduced its product and packaging with the
essential features of the trade dress and getup of the
respondent and the same cannot be mere co-incidence as, too
many features have been copied. Appellant is direct
competitor of the respondent. Rival batteries are sold in the
same store side by side. Appellant had disparaged the
respondent product in the earlier.
45. Learned Senior Advocate appearing for the respondent
has contended that, the claim of the appellant that it started
using colour red from April 2023 in India is false. He has
referred to the documents in support of such contention. He
has also contended that, the claim of the appellant with
regard to the entity named Unifieder is also false. He has
pointed out that, appellant sought to remove the disparaging
materials made as against the colour red.
46. Learned Senior Advocate appearing for the respondent
has contended that, the order impugned being discretionary in
nature and since it has not been established to perverse no
interference be called for.
47. The respondent as the plaintiff had filed a suit for relief
regarding alleged infringement of registered trademark and
passing off against the appellant. In such suit, plaintiff had
applied for urgent interim relief. Such interim relief
application has been disposed of by the impugned judgement
and order.
48. The parties to the suit are involved in the manufacture
and sale of automotive batteries, amongst others. Subject
matter of the suit primarily relates to and revolves around
allegations of infringement of registered trade mark and
passing off in respect of trade dress automotive batteries.
49. It has been admitted at the Bar that, the parties before
Court are the only major players in the field of manufacture
and sale of automotive batteries in India. The parties are
therefore competing with each other in such field.
50. The respondent has been marketing and selling
automotive batteries packaging the same in red colour dress.
The body of the battery as well as the packaging contains the
red colour dress. That the respondent has been marketing and
selling automotive batteries in red colour dress prior to the
appellant doing so is established.
51. The respondent has a registered trademark EL with
user claimed since 1987. The respondent has a registered
trademark of shattered O with user claimed since 1996.
52. The respondent has used the word Exide in the colour
red. The respondent has disclosed advertisements of batteries
manufactured by it in predominantly in red colour. It has
used the colour red as part of various marks. It has used the
colour red in shop hoardings and stores. It has sponsored
cricket teams in the Indian Premier League. These materials
that the respondent has placed on record allows a prima facie
finding that the respondent had been using the colour red as
a distinctive feature of its product. Respondent has been able
to establish, at least on a prima facie level, of user of the
colour red in its trade dress much prior to user of such colour
as a part of trade dress by the appellant. In fact, the campaign
led by the appellant in the colour red and green also
establishes prior user by the respondent.
53. Materials on record suggest that the appellant had
chosen the colour green as its source identifier. The appellant
had during the covid period run a campaign in the social
Media trying to demean and denigrate the colour red as
against the colour green. The appellant had in such campaign
identified itself with the colour green and sought to convey a
message to the public in general that, the colour green was
better than the colour red.
54. Reactions of the members of the public in the social
media platforms are that, members of the public associated
the respondent with the colour red while the appellant with
the colour green.
55. Appellant had consciously adopted the colour green
and wanted it to be developed as a brand and source identifier
for itself. It has in its annual reports placed before its
shareholders stated that the colour green was its signature
colour. Appellant has demarcated and distinguished itself
from the rest of the competition on the basis of its colour
green.
56. Materials on record therefore allow a plausible prima
facie view that, the parties had acknowledged that colour was
an important source identifier and worked to build a
particular colour association-green in case of appellant and
red in case of the respondent to identify themselves. At the
very least, the appellant had run a campaign in the media
inviting the members of the public to distinguish it from the
respondent on the basis of colour. Members of the public in
such campaign had associated the appellant with the colour
green and the respondent with the colour red.
57. The appellant had initially adopted "LIT" with two
divisive elements including the Greek alphabet Xi (i.e., "Ξ") as
"Elito" and applied for registration of such mark in
India on June 27, 2022 as proposed to be used. The appellant
had adopted such mark for the foreign market in a blue trade
dress. Appellant has claimed to launch automotive batteries in
the colour red in India sometime in 2023. Appellant had
applied for registration of the mark "Elito" on
December 20, 2022, in India.
58. Appellant had taken the stand that, on receipt of
feedback that, the colour blue would not stand out, changed
the colour in its automotive batteries and its packaging.
59. In the affidavit used before the learned Single Judge,
the appellant has taken the stand that, adoption of the colour
red is irrelevant. It has not explained why the appellant has
used the colour red when, the colour red was being used by
the respondent. This adoption of the colour red by the
appellant, subsequent to the appellant running a campaign of
distinction between the colour red and the colour green,
assume significance in the context of allegation of passing off.
60. On the strength of the materials available on record, it
is reasonably possible to infer that, the respondent was using
the colour red, appellant associated the respondent with the
colour red while associating itself with the colour green and
therefore, acknowledging that colour is a source identifier. In
other words, in the facts and circumstances of the present
case, between the two parties before Court, a particular colour
is taken to be a source identifier. Parties have acknowledged
that, appellant is associated with the colour green while the
respondent with the colour red on the strength of the
campaign run by the appellant.
61. Kerly's Law Trade Marks And Trade Names has
observed that, in a case of passing off, the claimant relying
upon data must prove his reputation, that is to say that, the
get up concerned indicates his goods and no one else's. In the
facts and circumstances of the present case,
contemporaneously, the appellant had acknowledged that,
colour red was associated with the respondent exclusively
while, seeking to claim exclusive use of the colour green. In
fact, appellant had run a campaign in the social media
platform claiming that, green was better than red with the
general public reacting and identifying the colour red with the
respondent while the colour green with the appellant.
Therefore, the colour red, between the two parties before us,
stood associated exclusively with the respondent and at least
to the exclusion of the appellant. It is the appellant by
running such campaign had excluded itself from the colour
red as the source identifier.
62. Brihan Karan Sugar Syndicate (P) Ltd (supra) has
held that, in a case of passing off which is premised on the
rights of the prime user generating goodwill, such reputation
or goodwill has to be established. On the failure of such
reputation and goodwill being established, other issue need
no further examination. In the facts and circumstances of the
present case, appellant itself has acknowledged that the
colour red was associated with the respondent. Having done
so, it would not lie in the mouth of the appellant now to
contend that, there is no significance in the user of the colour
red.
63. The competing boxes as also batteries have been
produced in Court. We have seen that, both the boxes in the
batteries predominantly uses the colour red. The packaging
and the trade dress of the competing products are sufficiently
similar so as to deceive a consumer being a part of the
general public.
64. The parties have different views on the quality of the
consumer buying the batteries and at least their ability to
discern between the two products. According to the appellant,
a buyer of automotive battery proceeds on the basis of the
automotive battery already placed in the automobile
concerned and that, such buyer proceeds on the basis of
brand name rather than the packaging. The contention of the
respondent is otherwise. According to the respondent, since,
the two batteries are placed on a shelf side-by-side in a shop,
given the similarities in the trade dress, the appellant would
be able to pass off its product as that of the respondent.
65. A consumer or a buyer of an automotive battery may
proceed to buy the automotive battery on the basis of what is
prefixed in the vehicle concerned or the basis of the brand
name. However all buyers may not proceed on those two
parameters only. Every possibility exists of a buyer seeking to
buy an automotive battery making a choice at the shop
concerned on the basis of whatever is available on the shelf of
such shop. In such an eventuality, if the two products as
obtaining today, of the parties before us, are placed on the
shelf side-by-side, then, the possibility of a buyer not going by
the brand name alone, being deceived by the trade dress and
the get up is distinct.
66. In such perspective, the visual test laid down in
Satyam Infoway Ltd. (supra) stands satisfied in favour of
the respondent. The trade dress and the get up presently
obtaining is likely to confuse the actual or potential customer
of an automotive battery.
67. On the basis of the principle of law acknowledged in
Sanjay Soya 16 Private Limited (supra) and Three-N-
Products Private Limited (supra) that, the eye continues to
remain the primary test, with regard to the degree of
resemblance between the marks, in an action for passing off,
the respondent as the plaintiff has been able to satisfy the
same.
68. Having examined the two boxes placed before us of the
two products, we have no material before us to disagree with
the view taken by the learned Single Judge that, the shade of
red used by the appellant is the exact same shade of red used
by the respondent.
69. The ratio laid down in Kaviraj Pandit Durga Dutt
Sharma (supra) that, matters added may sufficiently
distinguish the two products, is not attracted in the facts and
circumstances of the present case. The so-called added
matters are not sufficient to distinguish between the two
products. The added matters have similarities which are
deceptively close to the matter used by the respondent. Elito
and Exide are both 5 letter words. Both have shattered O
at the end. Both are in white with the red background.
There is hardly any material of any distinction in the trade
dress of the appellant to qualify as distinguishing the product
of the appellant from that of the respondent. Rather, the
efforts are such that, appellant has consciously tried to copy
and to come as close as possible to the pre-existing trade
dress of the respondent as compared to that of the appellant.
70. High Courts have protected user of a colour when it
has found that its user was over a period of time leading to
such colour assuming distinction vis a vis the user and
worked as a source identifier. In this regard reference can be
made to the authorities relied on by the respondent, namely,
Sapat International Private Limited (supra), and Sanjay
Soya 16 Private Limited (supra). Such is the position
abroad as in Qualitex Co. (supra) and Owens-Corning
Fiberglas Corporation.
71. Bachhaj Nahar (supra) has considered the issue of
grant of relief by a second appeal Court, in a suit. It has
observed that, in a civil suit, relief can be granted only with
reference to the prayers made in the pleadings. Moreover, in
civil suit, grant of relief is circumscribed by various factors
like court fees, limitation, parties to the suit, as also grant of
relief like res judicata, estoppel, acquiescence non-joinder of
cause of action of parties etc. which require pleadings and
proof. It has cautioned against grant of relief de hors the
pleadings and evidence in the suit.
72. In the facts the circumstances of the present case,
although, the prayers in the injunction petition are such that
just criticism of the same not being happily drafted is
available. Nonetheless, the prayers as it stand today do not
oust the jurisdiction of the Court to grant a relief with regard
to passing off or infringement.
73. Learned Single Judge has taken pains to evaluate the
entire materials placed on record while, exercising discretion
in granting the interim relief in the favour of the respondent.
The respondent as the plaintiff has made out prima facie case
to go to trial, the balance of convenience and inconvenience
lies in favour of the respondent in granting relief as prayed
for, and the respondent is likely to suffer injury by non-grant
of the interim relief as granted.
74. In view of the discussions above, we find no ground to
interfere with the impugned judgment and order.
75. TEMPAPO-IPD/7/2025 along with all connected
applications are disposed of without any order as to costs.
[DEBANGSU BASAK, J.]
76. I agree.
[MD. SHABBAR RASHIDI, J.]
