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2016 Supreme(Del) 2728
IN THE HIGH COURT OF DELHI AT NEW DELHI
S. RAVINDRA BHAT & NAJMI WAZIRI, JJ.
EXIDE TECHNOLOGIES - Appellant
Versus
EXIDE INDUSTRIES LTD. AND ORS. - Respondents
RFA (OS) 113 of 2012, CM APPL.1673, 6324 of 2013 & 9066 of 2014
Decided On : 02-08-2016
For the Appellant :Ms. Pratibha M. Singh with Ms. Bitika Sharma and Ms. Anusuya Nigam, Advocates.
For the Respondents:Ms. Rajiv Nayar, Sr. Advocate, Mr. Chetan Sharma, Sr. Advocate with Mr. Rishi Agrawala, Ms. Misha Rohatgi Mohta and Ms. Aayushi Sharma, Advocates.
Headnote:
The plaintiff, Exide India, filed a suit against the defendants, Exide US and its subsidiary, for permanent injunction against the use of the trademark "EXIDE" in any manner whatsoever. The defendants counterclaimed, alleging that they were the prior users of the mark and that Exide India had infringed their trademark. The impugned judgment held in favor of Exide India and decreed the suit. The defendants appealed.
Fact of the Case:
Exide India claimed to be the registered proprietor of the trademark "EXIDE" and the prior user of the mark in India. Exide US claimed to be the prior user of the mark both globally and in India, and that Exide India had no proprietary rights in the trademark.
Finding of the Court:
The court held that Exide India was the registered proprietor of the trademark "EXIDE" and that Exide US had not used the mark in India since 1950. The court also held that Exide US did not abandon the use of the mark in India and that it had special circumstances that justified its non-use of the mark. The court further held that Exide India had not suppressed any material facts and that it was entitled to the relief of permanent injunction.
Issues: 1. Whether Exide India is the lawful registered proprietor of the trademark ‘EXIDE’ in India? 2. Whether the first defendant/Exide US is prior user of the mark ‘EXIDE’ in India? 3. Whether use of the mark ‘EXIDE’ by Exide US- in India, amounts to infringement/passing off? 4. Whether Exide India’s use of ‘EXIDE’ amounts to passing off? 5. Whether Exide India suppressed any material/relevant facts and, if so, whether the suit deserves to be dismissed on such ground?
Ratio Decidendi: The court held that Exide India was the registered proprietor of the trademark "EXIDE" and that Exide US had not used the mark in India since 1950. The court also held that Exide US did not abandon the use of the mark in India and that it had special circumstances that justified its non-use of the mark. The court further held that Exide India had not suppressed any material facts and that it was entitled to the relief of permanent injunction.
Final Decision: The appeal and cross objections were dismissed.
S. RAVINDRA BHAT, J.
1. This is an appeal against the judgment dated 05.09.2012 of a Learned Single Judge of this Court, whereby CS(OS) No. 812/1997 (hereafter “the suit”) filed by Exide India/ the first plaintiff (hereafter called “the plaintiff” or “Exide India”) against the Appellants, - (hereafter referred to as “the defendant” or “Exide US”), was decreed and Exide US’s counterclaim was dismissed. The impugned judgment held:
(a) Exide India is the registered proprietor of the trademark "EXIDE”;
(b) Exide India is also the prior user of the trademark in India and, therefore, owner of the trademark “EXIDE’ in India inasmuch as Exide US failed to plead and prove existence of special circumstances.
(c) Exide US- the first two defendants were injuncted from selling their goods using their trade name with the trademark “EXIDE” of Exide India or any other name/mark deceptively similar thereto.
2. The brief facts of the case are that the first defendant, Exide Technologies (earlier known as Exide Corporation USA), claims to be one of the largest manufacturers of automotive batteries in the world and the global owner of the mark EXIDE in at least 130 countries. The second defendant is incorporated under Indian laws and the subsidiary of the said first defendant/Exide US. The plaintiff, Exide India is an Indian company and claims to be the owner of the mark “EXIDE” in India on the bases that it is the registered owner of the trademark and that it is the prior user of the mark in India. Accordingly, when Exide US sought to use the mark/name “EXIDE” with respect to its products, the plaintiff, Exide India instituted the suit for permanent injunction against the defendants from using the mark “EXIDE” in any manner whatsoever. This culminated in the impugned judgment. Plaintiff Nos. 2 to 9 are pro-forma parties in the present appeal and no relief has been sought against them.
Rival Averments in the proceedings:
Plaint
3. The plaintiff/Exide India claimed that it is engaged in the business of manufacturing and selling high quality automotive batteries under the brand name “EXIDE” and its variants in India. It avers that its predecessors had been carrying on that business under this brand since 1920, when Chloride Eastern Storage Co. (UK) (hereafter referred to as “CESCO”) – its predecessor-in-interest - set up trading operations in India. Exide India/plaintiff claims to be well known all over the country as the source of technically higher and superior quality batteries bearing the trade- mark “EXIDE”.
4. Exide India/plaintiff avers that the first Chloride factory was set up at Shyamnagar, West Bengal in 1946 by CESCO. In 1947, the British operations of CESCO were sold to Chloride Group plc and two Indian companies were formed: Associated Battery Markers (Eastern) Ltd. (hereafter referred to as “ABMEL”) and Chloride and Exide Batteries (Eastern) Ltd. (hereafter referred to as “CEBEL”). In 1972, ABMEL’s name was changed to Chloride India Ltd. In 1988, Chloride India Ltd. was renamed as Chloride Industries Ltd. It is further stated in the plaint that Chloride Industries Ltd. was part of the Chloride Group Plc (UK) till 1987 when Chloride Eastern Industries Ltd (“CEIL”) was formed in Singapore, incorporating business of Chloride Group plc in Singapore, Malaysia, Sri Lanka and India. The subsidiaries of Chloride Group plc in these countries then allegedly came under CEIL (Singapore).
5. Exide India/plaintiff claims that by a ‘Deed of Assignment for Sale and Purchase of Shares’ dated 03.01.1991, Chloride Group plc (UK) sold its shares in Chloride Eastern Industries Ltd. to Tech Trade (Singapore) plc. A Technical and Marketing Agreement dated 26.01.1988 transferred the exclusive ownership of trademarks including ‘CHLORIDE’ and ‘EXIDE’ to Chloride Industries Ltd. Exide India/plaintiff states that it acquired the exclusive right to use the mark ‘EXIDE’ in India by the said Agreement. Chloride Industries Ltd. was renamed to Exide Industries Ltd.
