Calcutta High Court Upholds Injunction In ITC's 'Gold Flake' Dispute, Says Word 'Gold' Has Acquired Secondary Meaning
The Calcutta High Court has held that an action for passing off and trade mark infringement remains maintainable even against a registered permitted user of a deceptively similar mark when the validity of that registration is disputed by the plaintiff.
Addressing the primary point of dispute concerning ITC Limited's flagship cigarette brand "Gold Flake", a Division Bench comprising Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya observed that ITC has established a strong prima facie case showing that the word "Gold" in "Gold Flake" has acquired a distinct secondary meaning through continuous, open, and extensive commercial use dating back to 1905.
The ruling came while dismissing an intra-court appeal filed by Pravin Kumar against an interlocutory injunction order granted in favour of ITC Limited.
The dispute originated when ITC Limited instituted a civil suit against Pravin Kumar and others alleging trade mark infringement, copyright infringement, and passing off.
ITC contended that the appellant was manufacturing and distributing cigarettes under the trade name "IJM Gold Stag" using a trade dress, color scheme, and layout deceptively similar to its iconic "Gold Flake" packaging.
A Single Judge of the High Court had earlier granted temporary injunctive relief in favour of ITC, which the appellant subsequently challenged before the Division Bench. Meanwhile, ITC preferred cross-objections regarding the non-grant of express interim relief specifically under the head of trade mark infringement.
Senior Counsel appearing for the appellant argued that the entire allegation of similarity hinged on the generic and laudatory word "Gold", pointing out that ITC had explicitly disclaimed exclusive rights over the word "Gold" before the Trade Mark Registry during registration.
Relying on the doctrine of Prosecution History Estoppel, the appellant contended that ITC could not claim a monopoly over "Gold", further urging that once "Gold" was removed from comparison, ITC's mark read "Flake" while the appellant's read "IJM" and "Stag", leaving no room for confusion.
Additionally, the appellant cited Sections 28 to 30 of the Trade Marks Act, 1999, asserting that one registered proprietor or permitted user cannot maintain an infringement action against another registered user, given that "IJM Gold Stag" held a subsisting registration.
The appellant also highlighted that under the Cigarettes and Other Tobacco Products Act (COTPA), 2003, mandatory statutory graphic health warnings occupy 85% of cigarette packaging, meaning the Court should restrict its visual comparison strictly to the remaining 15% non-statutory space.
In response, Senior Counsel for ITC submitted that "Gold" forms a dominant component of its mark and has acquired a secondary meaning exclusively identifying ITC's products.
ITC countered the maintainability objection by invoking Section 124 of the Trade Marks Act, arguing that an infringement action against a registered user is maintainable if the plaintiff specifically challenges the validity of the defendant's registration.
On the COTPA issue, ITC responded that because brand presentation is constrained within a tiny 15% window, any copying of prominent features or color schemes creates an even higher likelihood of consumer deception.
The Court rejected the appellant's argument that ITC was estopped from asserting rights over the word "Gold".
Reaffirming established legal principles, the Court noted that even generic or laudatory words can be monopolised if they acquire a secondary meaning through long and continuous usage, noting that ITC's uninterrupted user of "Gold" in relation to cigarettes since 1905 established a strong prima facie case of secondary meaning.
The Bench also held that a disclaimer attached to one specific registration entry cannot bind or prejudice rights flowing from other valid registrations held by the same proprietor over the mark.
The Bench firmly rejected the appellant's plea to dissect the packaging and compare only the 15% non-statutory portion, emphasizing that when a purchaser buys a cigarette packet, it is the total picture that they see in its entirety. The Court observed:
"When a purchaser buys a cigarette packet, it is the total picture (including the statutory image) which he sees in its entirety, and no normal person would separately scrutinize the actual mark. With a limited space of only 15% left for placement of the actual mark, the possibility of confusion and deception is all the more accentuated..."
The Bench added that cigarette consumers span all strata of society, and the visual arrangement adopted for "IJM Gold Stag" presented sufficient overall similarity to cause market confusion.
On statutory maintainability, the Court clarified that Sections 28 to 30 of the Trade Marks Act do not create an absolute bar against instituting suits, since passing off actions are common-law rights that remain universally maintainable.
Furthermore, where a plaintiff pleads the invalidity of the defendant's registration under Section 124, the suit remains maintainable and Section 124(5) explicitly empowers the Court to grant interlocutory injunctions during the pendency of the suit.
On jurisdiction, the Court affirmed that since ITC's principal registered head office is located in Kolkata, the suit was validly instituted under Section 134(2) of the Trade Marks Act and Section 62(2) of the Copyright Act, while adding that a show cause notice issued under Clause 14 of the Letters Patent had gone unanswered by the appellant, resulting in a waiver of territorial objections.
Finding no perversity or error of law in the Single Judge's order, the Division Bench dismissed the appeal (TEMPAPO-IPD No. 6 of 2025) and affirmed the temporary injunction order against Pravin Kumar.
The Court also dismissed ITC's cross-objection (OCOT No. 7 of 2025), clarifying that the existing injunction granted by the Single Judge already provided complete interlocutory protection covering both passing off and infringement of ITC's registered trade marks and trade dress.
Case Title: Pravin Kumar v. ITC Limited and Ors.
Citation: TEMPAPO-IPD No. 6 of 2025 with OCOT No. 7 of 2025