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IN THE HIGH COURT OF DELHI AT NEW DELHI

RESERVED ON: 30.11.2015

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PRONOUNCED ON:02.08.2016

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RFA (OS) 113/2012, CM APPL.1673, 6324/2013 & 9066/2014

EXIDE TECHNOLOGIES

..... Appellants

Through: Ms. Pratibha M. Singh with Ms. Bitika

Sharma and Ms. Anusuya Nigam, Advocates.

Versus

EXIDE INDUSTRIES LTD. AND ORS.

..... Respondents

Through: Ms. Rajiv Nayar, Sr. Advocate, Mr.

Chetan Sharma, Sr. Advocate with Mr. Rishi

Agrawala, Ms. Misha Rohatgi Mohta and Ms.

Aayushi Sharma, Advocates.

CORAM:

HON'BLE MR. JUSTICE S. RAVINDRA BHAT

HON'BLE MR. JUSTICE NAJMI WAZIRI

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‟;

2016:DHC:5438-DB

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:

3.

The plaintiff/Exide India claimed that it is engaged in the business of

manufacturing and selling high quality automotive batteries under the brand

2016:DHC:5438-DB

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 busi