Trade Dress Infringement in the Indian Battery Industry
Introduction: The case of Exide Industries Limited versus Amara Raja Energy and Mobility Limited represents a significant adjudication in the realm of intellectual property law, specifically concerning trademark infringement and passing off. Heard in the Intellectual Property Rights Division of the High Court at Calcutta, this dispute encapsulates the tension between established brand identity and alleged imitation by a trade rival. Exide, a long-standing leader in the lead-acid battery industry, accused Amara Raja, a key competitor, of adopting a deceptively similar trade dress and trademark elements, threatening its century-long goodwill. This case study delves into the factual matrix, procedural journey, core issues, judicial reasoning, and the legal principles solidified through the judgment, offering insights into the evolving jurisprudence of passing off in India.
Factual Background: Exide Industries Limited, originally incorporated as Associated Battery Makers (Eastern) Coal Ltd., has been a pioneer in manufacturing and marketing lead-acid batteries since 1920 under the trademark "EXIDE." Over time, Exide has grown into one of South-East Asia’s largest power storage solutions companies, operating manufacturing units across India and maintaining an extensive network of dealers and distributors. The company’s flagship brand, "EXIDE," is closely associated with a distinctive red and white trade dress, prominently featuring the color red across its products, packaging, advertisements, and promotional materials. Exide also holds registered trademarks for "EL" (adopted in 1987) and a "shattered O device," used extensively in its product line, including automotive and industrial batteries. The consistent and prolonged use of these elements has established a strong connection between the red color scheme and Exide’s brand identity in the public mind.
Amara Raja Energy and Mobility Limited, a major competitor, markets its batteries under the "AMARON" brand, traditionally associated with a green trade dress. For three decades, Amara Raja has built its reputation around this green color, evident in its products, advertising campaigns, and publicity materials. However, the dispute arose when Amara Raja launched a new product, "ELITO," initially in a blue trade dress for international markets in 2020. Subsequently, in India, Amara Raja shifted to a red trade dress for "ELITO," incorporating a red and white color combination and a shattered "O" device, which Exide alleged mirrored its own branding. Exide claimed that this shift was a deliberate attempt to capitalize on its goodwill, citing the visual and structural similarities between the products, including the use of the letters "EL" and the shattered "O" device.
Procedural Background:The matter was brought before the High Court at Calcutta, Intellectual Property Rights Division, Original Side, as a suit for infringement and passing off, registered as IP-COM/18/2025, with an interlocutory application (IA NO. GA-COM/1/2025) seeking an injunction to restrain Amara Raja from using the disputed trade dress and mark. Exide sought to protect its trademark and trade dress rights, arguing that Amara Raja’s actions constituted passing off by creating confusion among consumers. Amara Raja countered that the color red was not distinctive to Exide, was commonly used in the industry, and that no confusion arose from their product.
Core Dispute:The central issue in this case was whether Amara Raja’s adoption of a red trade dress for its "ELITO" product, along with the use of the letters "EL" and a shattered "O" device, constituted passing off by misrepresenting its goods as those of Exide. Exide argued that its long-standing use of the red and white trade dress, combined with its registered trademarks "EL" and the shattered "O" device, had created a strong association with its brand, making Amara Raja’s similar trade dress deceptively similar and likely to confuse consumers. Amara Raja contended that the color red lacked distinctiveness in the battery industry, citing its use by other brands, and argued that no monopoly could be claimed over a single color. Additionally, they claimed that their product’s branding was sufficiently distinct and that consumer purchasing decisions were not solely based on color, negating any likelihood of confusion.
Discussion on Judgments:Both parties relied on a range of judicial precedents to support their arguments, reflecting the complex interplay of trademark and passing off principles. Exide cited several cases to establish the protectability of its trade dress and goodwill. In Jones vs Hallworth, Reports of Patent, Design and Trademark, Vol XIV, No.8, Exide highlighted the recognition of cumulative deceptive elements leading to passing off. Cadbury-Schweppes Pty. Ltd. vs The Pub Squash Co Ltd, [1981] RPC 429, was referenced to underscore the importance of reputation and misrepresentation, though the court distinguished it due to the absence of significant deception in that case. Cadilla Health Care Ltd. vs Cadilla Pharmaceuticals Ltd., [2001] 5 SCC 73, was cited to emphasize the relevance of Indian consumer perspectives, including those of less literate buyers, in assessing confusion. Colgate Palmolive Company & Another vs Anchor Health and Beauty Care Pvt Ltd, 2003 SCC Online Del 1005, supported Exide’s claim that a distinctive color combination could acquire secondary meaning. Satyam Infoway Ltd. vs Siffynet Solutions Pvt Ltd, [2004] 6 SCC 145, was used to argue that reputation and misrepresentation do not require long usage if significant goodwill is established. Euro Solo Energy Systems Limited vs Everready Industries Limited, 2009 SCC Online Cal 1991, reinforced the applicability of passing off principles in Indian contexts. Squet International Private Limited vs Sanwal Chand Babulal and Another, 2016 SCC Online Bom 7712, was cited to highlight deceptive similarity in trade dress. Societe des Produits Nestle SA vs Cadbury UK Ltd, [2017] EWCA Civ 358, and Sanjay Soya Private Limited vs Narayani Trading Company, 2021 SCC Online Bom 407, supported the protectability of distinctive trade dress elements. Qualitex Co vs Jacobson Prods Co, 514 U.S. 159, was referenced to argue that colors could acquire secondary meaning under certain conditions. Finally, Emami Limited vs Hindustan Unilever Limited, 2024 SCC Online Cal 3579, was cited to underscore the impermissibility of adopting a competitor’s prominent trade dress elements.
Amara Raja, in defense, cited Kellogg Company vs Pravin Kumar, ILR (1996) II Delhi 11, to argue that Exide’s trade dress lacked distinctiveness due to common industry usage. Dr. Martens Australia Pty Ltd. vs Figgins Holdings Pty Ltd., [1999] FCA 461, supported their contention that a single color could not be monopolized. Cadila Health Care Ltd. vs Cadila Pharmaceuticals Ltd., [2001] 5 SCC 73, was referenced to emphasize the need for clear evidence of confusion. Colgate Palmolive Company Limited & Anr. vs Patel & Anr., [2005] SCC Online Del 1439, was cited to argue that Exide’s claim over red was untenable without secondary meaning. Wal-Mart Stores vs Samara Bros, 529 U.S. 205, supported the argument that trade dress must be inherently distinctive or have acquired secondary meaning. Cipla Ltd. vs MK Pharmaceuticals, [2007] SCC Online Del 2012, was used to challenge the protectability of colors in trade dress. Star Bazaar Pvt. Ltd. vs Trent Ltd., [2010] SCC Online Del 4764, highlighted honest concurrent use as a defense. Specsavers International Healthcare Ltd. & Ors. vs Asda Stores Ltd., [2012] EWCA Civ 24, was cited to argue that Exide’s trade dress was not exclusively associated with its brand. Britannia Industries Ltd. vs ITC Ltd., [2017] SCC Online Del 7919, supported the argument that short-term use of a color does not establish goodwill. Godfrey Phillips India Ltd. vs P.T.I Pvt Ltd., [2017] SCC Online 12509, and Khadi and Village Industries Commission vs Girdhar Industries and Another, [2023] SCC Online Del 8446, were referenced to emphasize the need for distinctiveness and evidence of confusion. Brihan Karan Sugar Syndicate Pvt. Ltd. vs Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, [2024] 2 SCC 577, was cited to argue that passing off requires clear misrepresentation. Additional cases, such as Reckitt & Colman Products Ltd. vs Borden, [1990] 1 WLR 491, and R. Johnston & Co. vs Archibald Orr Ewing & Co., [1882] 7 App. Cas. 219, were referenced by the court to elucidate the principles of passing off, focusing on reputation, misrepresentation, and damage.
Reasoning and Analysis of the Judge: The court recognized Exide’s century-long use of the red and white trade dress, which had become a prominent and integral feature of its brand identity in the automotive battery industry. The judge noted that Exide’s goodwill was not merely tied to the color red but to the overall trade dress, including the registered "EL" mark and the shattered "O" device, which collectively acted as source identifiers. The court found Amara Raja’s shift from a blue to a red trade dress for "ELITO" in India, without a credible explanation, to be a deliberate attempt to approximate Exide’s branding. The respondent’s affidavit, claiming feedback from an overseas distributor about the blue color’s lack of vibrancy, was deemed self-serving and contradictory, especially given Amara Raja’s continued use of blue batteries internationally. The court emphasized that Amara Raja’s choice of red, identical to Exide’s shade, alongside the use of "EL" and a similar shattered "O" device, indicated bad faith and intent to deceive.
The judge rejected Amara Raja’s argument that the color red was common in the industry, distinguishing cases like Britannia Industries Ltd. vs ITC Ltd., where the plaintiff’s use of the color was brief and lacked distinctiveness. The court highlighted that Exide’s consistent and prolonged use had created a strong association with its brand, distinguishable from smaller competitors’ use of red. The judge also considered the Indian market’s diverse consumer base, including less literate buyers, who might be confused by the visual similarities. Citing Satyam Infoway Ltd. vs Siffynet Solutions Pvt Ltd., the court inferred that Amara Raja’s actions were calculated to capitalize on Exide’s reputation, supported by actions such as removing incriminating online evidence during the hearing. The court clarified that while no monopoly over a single color was claimed, the cumulative effect of the trade dress similarities warranted protection to prevent consumer confusion and dilution of Exide’s brand equity.
Final Decision: The court granted an injunction in favor of Exide Industries Limited, restraining Amara Raja Energy and Mobility Limited from using the red trade dress, the "EL" mark, and the shattered "O" device for its "ELITO" product. The decision was based on the prima facie findings of deceptive similarity, bad faith, and likelihood of confusion. Amara Raja was initially given one month to comply with the order, but upon request, the court extended this period to two months. The interlocutory application was disposed of, with directions for an early hearing of the main suit to resolve the matter comprehensively.
Law Settled in This Case: This case reinforces the principles of passing off under Indian trademark law, particularly the application of the classic trinity test of reputation, misrepresentation, and damage. It clarifies that while a single color cannot be monopolized, a distinctive trade dress comprising a color scheme, specific marks, and design elements can acquire secondary meaning through long and consistent use, meriting protection. The judgment underscores the importance of intent in passing off cases, where a competitor’s deliberate adoption of a rival’s branding elements can tilt the scales in favor of finding deception. The decision aligns with Section 27 of the Trade Marks Act, 1999, affirming the common law remedy of passing off for unregistered marks and trade dress, emphasizing fairness in competition and the prevention of parasitic practices.
Case Title: Exide Industries Limited vs Amara Raja Energy and Mobility Limited
Date of Order: 24 July 2025
Case Number: IP-COM/18/2025
Name of Court: High Court at Calcutta
Name of Judge: Hon'ble Justice Ravi Krishan Kapur
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
