Seeing Red: The Exide v. Amara Raja Trademark Battle

Introduction

The High Court at Calcutta recently delivered a notable judgment in the case of Exide Industries Limited v. Amara Raja Energy and Mobility Limited^[1]. The case addresses the complex legal principles of trademark infringement and passing off, specifically focusing on the protection of a single color when used as a distinctive brand element. The parties involved are two of India's leading automotive battery manufacturers, Exide (the Petitioner) and Amara Raja (the Respondent). The central issue revolved around Amara Raja's launch of a new product, the 'ELITO' battery, which used a trade dress with a prominent red color scheme, a color long associated with Exide. The Court's decision provides important guidance on protecting trade dress and color combinations in a competitive market.

Factual Background

Exide Industries, a pioneer in the battery business since 1920, has consistently used a trade dress featuring a predominantly red and white color scheme. The company argued that this color combination, along with other marks like the word "EL" and a registered "shattered O device", has been used for over a century and has become a source identifier for its products. In contrast, Amara Raja, Exide’s main competitor, has historically sold its "AMARON" batteries in a distinctive green color.

The dispute began when Amara Raja launched its new product, "ELITO". While initially sold in a blue trade dress in other markets, Amara Raja later introduced the product in India with a predominantly red trade dress. Exide alleged that this change, combined with the use of the word "ELITO" and a similar "shattered O device", was an act of passing off designed to mislead consumers. Amara Raja countered that no company can claim a monopoly over a single color, and that Exide had not proven that the color red had acquired a secondary meaning exclusively associated with its brand. Amara Raja's explanation for the color change was that a distributor had given feedback that the blue color "was not making it stand out."

Issues Before the Court

The primary issues the Court considered were:

• Whether a single color, specifically red, had acquired a secondary meaning and goodwill that made it an exclusive brand identifier for Exide's products.

• Whether Exide had successfully met the three-part test for passing off: reputation, misrepresentation, and a likelihood of damage.

• The role of the defendant's intent in a passing-off action, and whether Amara Raja's explanation for changing its product color was credible.

• Whether the overall visual appearance of Amara Raja's 'ELITO' product was deceptively similar to Exide's trade dress and marks.

  
  

Decision

The Calcutta High Court's judgment granted an interim injunction in favor of Exide, making several key points:

• Distinctiveness of Color: The Court held that while a company cannot monopolize a single color in general, Exide's extensive and continuous use of red for over a century had, on a preliminary basis, created a strong association with its products. The court clarified that it was not granting a monopoly over the color red itself, but rather protecting the distinctive combination of colors and other marks that constituted Exide's trade dress.

• Misrepresentation and Intent: The Court found Amara Raja’s explanation for the color change to be unconvincing. The court noted Amara Raja's history of using green and even disparaging red in its advertising. The lack of a credible reason for the sudden change, along with the striking similarities in the new trade dress, led the court to conclude that Amara Raja's actions were likely an attempt to unfairly benefit from Exide's established reputation. The court emphasized that a defendant's intent to deceive is a critical factor in passing-off cases.

• Deceptive Similarity: The Court's visual comparison of the products concluded that the overall appearance of Amara Raja's 'ELITO' battery, including the red and white color scheme, the word mark ("ELITO"), and the similar "shattered O device," was likely to cause confusion among consumers.

  
  

Conclusion

The High Court's decision provides important clarity on the principle that while a company cannot claim exclusive rights to a single color, a unique and long-established trade dress can be protected if it has become a source identifier. The judgment reinforces the importance of a brand’s visual identity, especially when it has been cultivated over a long period. By carefully examining Amara Raja's intent and the lack of a credible reason for adopting a similar trade dress, the Court demonstrated that such factors can be crucial in a passing-off action. This ruling offers a balanced approach, protecting brand owners from unfair competition while providing clear guidelines for all businesses in the market.

Kanika Bansal

Associate

kanika.bansal@iprattorneys.com