Amid ongoing litigation in the Supreme Court over usage of Exide trademark in India, battery major Exide Industries Ltd on Monday said it has entered into a settlement agreement with US-based Exide Technologies to resolve the long standing dispute. India Exide Industries has been selling in the local market under the trademark for decades. The dispute arose after the US Company enter the Indian market post liberalization. As soon as it started selling car batteries, with the tagline produces by Exide Technologies Inc, the Indian company moved the Delhi High Court citing infringement of trademark.
Land mark development for two reasons:
- It is a decision that has put an end to a dispute, which has gone on for almost two decades.
- The term of the settlement indicate that Exide US has effectively waived any right/claim to ownership of the ‘Exide trademark in India.
Dispute start from!
The beginning of the dispute goes all the way back to 2012 when Exide took Exide US to court over infringement of their Exide trademark. Through the Justice Valmiki Mehta, the US was banned from using Exide Mark in India. This order came 15 years after the first time it was filed in 1997. The court confirmed both passes and Exide TM violated Exide US violation. Apart from many things, since the original part of this decision J. Valmiki has been recognized as a former India user of Exide India, it will associate customer product in India and mark only with Exide India and its predecessors.
Battle in Delhi High court
After a long court battle, Exide Industries won an order from the Delhi High Court, which in September 2012 restrained Exide technologies from using the ‘Exide’ trademark in India. But a division bench set the order aside, prompting Exide Industries to move the top court
The case came up on Friday before a bench comprising Justices Dipak Mishra and C Nagappan. The bench, after hearing preliminary arguments, refused to allow the US Company to use the word in the interim. The bench issued notices to Exide Technologies on the Indian rival’s appeal against the HC division bench order, and stayed that order. That implies that the single judge’s order asking Exide US not to use the word at all will continue till the court takes a call on the issue. Senior advocate CA Sundaram, assisted by Pratibha Singh, urged the court to at least allow the US company to sell its product Prestolite and permit to use the word Exide on its website. “It is unfair,” the lawyer said. “We can’t even use our own name on our website.” Justice Misra refused to accept the argument. Exide India’s lawyer Harish N Salve said his client has been using the name for more than 60 years in the local market. Exide Industries is the registered owner of the trademark in India. But Exide Technologies says it is the parent company and has consistently used the brand name for over a century. It has the trademark registered in more than 130 countries.
The company was in discussion with the Exide Technologies US for an out-of-court settlement to amicably resolve the long-standing dispute. Based on the discussions, the company has entered into a settlement agreement with Exide Technologies on May 19 whereby the US company, subject to fulfilment of conditions therein, shall forever waive any right or claim to the ownership and use of Exide mark in India,” Exide Industries said in a disclosure to the exchanges.
While Rajan Raheja group-owned Exide has been making and selling batteries under the brand for years, making it the largest storage battery brand for automobiles in India, it had earlier failed to prove that Exide Technologies, which owns the brand in several other countries, was illegally trying to use it in India.
In front of court
“This court holds that the Exide US did not infringe the mark, or attempt to pass off a mark over which they had no right. Their use of the word Exide was, in the circumstances both bona fide and legitimately concurrent. Furthermore, they had, by reason of the transnational reputation pleaded and proved, right to use it in India,” a Delhi High Court ruling of 2016 on a case filed by Exide Technologies said.
The reason behind Exide Technologies trying to claim the right to the brand was to do with its other brand Prestolite, which was once being sold and marketed by its Indian subsidiary Tudor India.
“Exide US proposed the use of the mark Prestolite to market its products in India. The injunction sought by Exide India was to prevent them from using anything describing the origin, or their link with Exide US’s corporate name and the fact that Prestolite has links with Exide. The documentary evidence overwhelmingly points to Exide US’s predecessors using the mark, in an unbroken manner in India for nearly half a decade,” the same ruling said.
Exide Industries, however, claimed that the earliest registration of the mark Exide happened in 1942 and by an agreement of 1978 made between Chloride Group and Exide India, Chloride Group plc had agreed to assign and transfer the trademark Exide to the Indian company. That said, there is now little chance of the Indian company facing any kind of competition from Prestolite.”Prestolite’s plant at Sabarkantha in Gujarat has remained closed for several years and with the poor financial health of the US parent, there is little a chance of it reopening,” sources said.
Exide Industries also said in the disclosure that the litigation is still pending before the Supreme Court. However, with both the parties entering into a settlement on undisclosed terms the case is likely to get withdrawn.